Yves Saint Laurent Fashion B.V. and Luxury Goods International (LGI) S.A.v.Goldfinger Hawaii, Inc.

Trademark Trial and Appeal Board

May 15, 2007

No. 91118017 (T.T.A.B. May. 15, 2007)

Hearing: November 2, 2006 Mailed: May 15, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Yves Saint Laurent Fashion B.V. and Luxury
Goods International (LGI) S.A.1
v.
Goldfinger Hawaii, Inc.
_____

Opposition No. 91118017
_____

Jess M. Collen and Thomas P. Gulick of Collen IP for Yves Saint
Laurent Fashion B.V. and Luxury Goods International (LGI) S.A.

Michael A. Painter of Isaacman, Kaufman & Painter for Goldfinger
Hawaii, Inc.
______

Before Seeherman, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Goldfinger, Hawaii, Inc. (applicant) has filed an
application to register the mark shown below for "men's and
women's fine jewelry" in Class 14.2

1 Luxury Goods International (LGI) S.A. was joined as plaintiff in this
proceeding on July 6, 2005 in view of the assignment of opposer's
pleaded registrations.

2 Application Serial No. 75555847, filed September 21, 1998, based on
an allegation of first use and first use in commerce on September 12,
1994. The application includes a claim of ownership of Registration
No. 1423791 for the mark SL (in typed form) for "jewelry."
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91118017
2

Yves Saint Laurent Fashion B.V. (opposer or Yves Saint
Laurent) filed a notice of opposition on the ground of priority
and likelihood of confusion.3 Opposer alleges that applicant's
mark, when applied to applicant's goods, so resembles opposer's
previously used and registered "YSL" marks as to be likely to
cause confusion. Opposer identifies these registrations as
Registration No. 1712999 for the mark YSL, in typed form, for
"jewelry, clocks and watches" in Class 14; and Registration No.
1711127 for the mark shown below for "jewelry, clocks and
watches" in class 14.

3 To the extent that opposer intended to assert dilution as a separate
ground for opposition, the claim is neither clearly nor sufficiently
pleaded. Moreover, opposer has not argued dilution as a separate claim
in its brief but only mentions dilution in passing in its discussion of
likelihood of confusion. Accordingly, we treat the references to
dilution in the pleading and in the brief as part of opposer's
likelihood of confusion claim and we consider likelihood of confusion
as the sole ground for opposition.
Opposition No. 91118017
3
Applicant, in its answer, has admitted that opposer is the
owner of the above registrations. Applicant has also admitted
paragraph 6 of the notice of opposition which asserts that "there
is no issue as to priority" in view of the above registrations.
Applicant has denied the remaining salient allegations.
The record includes the pleadings; the file of the involved
applications; and opposer's notice of reliance on evidence
including applicant's responses to interrogatories along with
documents provided as part of those responses.4 Opposer also
introduced, by stipulation of the parties, testimony in the form
of declarations (with exhibits) of Adelio Lardi, opposer's member
and secretary of the board of directors; and Stefano Savoldi,
opposer's director.5
Applicant did not take any testimony or offer any other
evidence in its own behalf. Only opposer filed a brief and
attended the oral hearing.
Findings of Fact
The designation YSL is a fashion brand associated with the
French designer and fashion house, Yves Saint Laurent. The Yves
Saint Laurent fashion house was established in 1962. The YVES
SAINT LAURENT mark has been used in connection with fashion

4 Opposer included with its notice of reliance plain copies of a number
of registrations for “YSL” marks. Because, to make registrations of
record by notice of reliance, status and title copies must be
submitted, we have given no consideration to these plain copies. See
Trademark Rule 2.122(d)(2).

5 The two witnesses have given essentially the same testimony.
Opposition No. 91118017
4
products in the United States for more than 40 years, and Yves
Saint Laurent fashion designs are featured in the Metropolitan
Museum of Art in New York.
Opposer began selling apparel under the mark YSL in the
United States in 1964, and has continued to do so since that
date. Opposer has been selling jewelry and other fashion
accessories such as sunglasses, handbags and belts under the YSL
mark in the United States since 1968. Opposer's jewelry and
other fashion products are sold in retail stores throughout the
country, including Bergdorf Goodman, Saks Fifth Avenue and Neiman
Marcus; as well as in opposer's own Yves Saint Laurent Boutiques.
The YSL mark is displayed on the products and on packaging
for the products. The initials appear prominently on jewelry
items such as bracelets, necklaces and watches, in a variety of
styles and formats, including the stylized form shown in
opposer's registration. There is no specific testimony relating
to first use, or the extent of use, of the YSL mark in any
particular format.
Opposer has advertised and promoted its apparel and fashion
accessories under the YSL mark through catalogs and in a variety
of consumer fashion magazines such as W, Vogue, Women's Wear
Daily, GQ, and Mirabella. Opposer submitted sales and
advertising figures for "YSL" products for the years 2001 to

Opposition No. 91118017
5
2004. While the specific figures are confidential, we can say
that such figures are substantial.6
The YSL mark has received considerable media publicity. For
example, an article in Bazaar Magazine (September 1987) entitled
"The YSL Revolution" refers to YSL as a "key symbol of New York's
headiest time" and it describes the Yves Saint Laurent form of
evening dress as "so indelibly stamped with his initials." In
2002, alone, the YSL designation appeared on the covers of 128
magazines as the subject of featured articles in the magazines.
The notoriety of the YSL mark is also reflected in widely
circulated newspapers such as The New York Times, The Wall Street
Journal, The Washington Post, Chicago Tribune and The Miami
Herald, containing references to YSL as both the Yves Saint
Laurent fashion house and a brand name in fashion. For example,
an article in The Wall Street Journal (January 9, 2002) entitled
"All About Yves," in discussing Yves Saint Laurent's historical
contributions to fashion, notes that in 1966, mass-produced
licensed products "using the famous YSL initials began to appear
everywhere." An article in The New York Times (March 14, 2004)
under the headline "Pops Culture" states "Take Morty Seinfeld as
your fashion muse. ... Accessorize with YSL's jumbo, geriatric
sunglasses..."

6 Although both Mr. Lardi and Mr. Savoldi identified the relevant time
period as 1999-2004, it appears from the supporting documents that the
actual time period covered is 2001-2004. Whichever time period is
considered, however, the figures are substantial.

Opposition No. 91118017
6
The only information we have about applicant is from the
discovery responses made of record by opposer. Based on those
responses, applicant has used the mark in connection with jewelry
at least since 1994. Applicant's jewelry includes black pearls,
and 14K and 24K gold pendants, bracelets and necklaces.
Applicant adopted the mark SL to reflect the initials of
applicant's primary division and the president and owner of
applicant, Steven Lee. Applicant applies its mark to packaging
for the jewelry, and its jewelry is sold in retail jewelry stores
in at least 40 states. Applicant advertises its jewelry in
newspapers and on its website, www.stevenlee.net. Applicant
spends approximately $10,000 a year on advertising; and has an
annual volume of sales of approximately $1 million.
Standing and Priority
As previously noted, opposer attempted to introduce plain
copies of its two pleaded registrations (Nos. 1712999 and
1711127) by a notice of reliance. This type of document does not
constitute a proper status and title record as contemplated by
Trademark Rule 2.122(d). Opposer also submitted TARR printouts
of the registrations through the testimony of Mr. Lardi and Mr.
Savoldi. However, although opposer's witnesses testified that
opposer is the owner of the registrations, they did not testify
as to the validity of the registrations. Thus, the testimony was
insufficient to show that opposer is the owner of currently
existing registrations. Nevertheless, applicant admitted in its
Opposition No. 91118017
7
answer that opposer is the owner of and has priority based on
these registrations, and therefore we have given these
registrations full effect.7 Registration No. 1712999 is for the
mark YSL in typed form;8 and Registration No. 1711127 is for the
mark shown below:9

Both registrations identify the following goods:
Keyholders and metal pillboxes (in Class 6).
Sunglasses, optical frames and cases for glasses (in Class
9).

Jewelry, clocks and watches (in Class 14).
Stationery, pens, pencils and playing cards (in Class 16).
Handbags, luggage, tote bags, briefcases, wallets,
billfolds, change purses, and key fobs (in Class 18).

Handkerchiefs (in Class 24).
Women's and girls' apparel; namely, dresses, gowns, skirts,
slacks, pants, suits, blouses, shirts, sweaters, jeans,
neckwear, scarves, belts, sleepwear, underwear, lingerie,

7 Opposer has also attempted to introduce, in the same improper manner,
several registrations which were not pleaded in the notice of
opposition. Opposer did not amend the pleading to assert these
registrations, and there are no admissions in the answer as to these
registrations. Accordingly, these unpleaded registrations have been
given no consideration.

8 Issued September 8, 1992 under Section 44(e) of the Trademark Act
based on a Benelux registration; renewed as to the above classes; not
renewed as to Classes 8, 20, 21 and 28.

9 Issued September 1, 1992 under Section 44(e) of the Trademark Act
based on a Benelux registration; renewed as to the above classes; not
renewed as to Classes 8, 20, 21 and 28.

Opposition No. 91118017
8
robes, camisoles, slips, brassieres, robes, swimwear, beach
cover-ups, shoes, slippers, sandals, boots, gloves, hosiery,
tights, coats, raincoats, jackets, capes, shawls, fur muffs
and headwear; men's and boys apparel; namely, outercoats,
raincoats, blazers, sportcoats, vests, suits, pants,
jackets, tuxedos, shirts, jeans, sweaters, neckwear, pocket
squares, pajamas, night shirts, robes, bath wraps, shoes,
sandals, slippers, hosiery, socks, gloves, scarves, hats,
swimwear, belts and suspenders (in Class 25).

Cigarette cases not of precious metal, cigar cutters and
lighters (in Class 34).

Thus, opposer's standing has been established, and its
priority with respect to the registered marks for the goods
identified in those registrations is not in issue. King Candy
Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Likelihood of confusion

Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
In our analysis we will focus on opposer's registered mark
and class of goods which can be considered closest to the mark
and goods in the subject application, namely Registration No.
Opposition No. 91118017
9
1711127 for the mark YSL in stylized form for "jewelry, clocks
and watches."
We turn first to the goods, keeping in mind that the
question of likelihood of confusion is determined on the basis of
the identification of goods set forth in the application and
registration, without limitations or restrictions as to the
actual nature of the goods, their channels of trade and/or
classes of purchasers that are not reflected therein. See J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d
1889 (Fed. Cir. 1991); and Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990).
Applicant's goods are "men's and women's fine jewelry."
Opposer's broadly identified "jewelry" fully encompasses the
"fine jewelry" identified in the application. Thus, the
respective goods are in part legally identical. Because there
are no restrictions as to the channels of trade for the goods or
their classes of purchasers, the goods must be deemed to be sold
in the same channels of trade and directed to the same
purchasers. See In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) ("Because the goods are legally identical, they must
be presumed to travel in the same channels of trade, and be sold
to the same class of purchasers").
The channels of trade for fine jewelry, as the evidence
shows, include department stores and retail jewelry stores. We
Opposition No. 91118017
10
find that the purchasers for such goods would include ordinary
consumers as well as discriminating consumers. We have no
information regarding the retail pricing of opposer's jewelry.
However, according to applicant's discovery responses,
applicant's fine jewelry ranges in price from $20 to $10,000,
although it is not clear what proportion of applicant's jewelry
is sold at the lower price point. Purchasers of at least the
lower cost items of jewelry are likely to be less careful in
their purchasing decisions, and therefore more prone to
confusion. However, even those purchasers of the more expensive,
or very expensive, items of jewelry who may be considered
"discriminating" and careful purchasers can be confused as to
source under circumstances where identical goods are sold under
similar marks. See Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir.
1986).
Thus, we turn to a consideration of the marks, and first to
the factor regarding the fame of opposer's YSL mark. We find, in
view of the evidence of opposer's use of the mark for over 40
years, its substantial sales and advertising expenditures, the
extensive media recognition and coverage of the mark, and the
significant exposure of the mark to the public over the years,
that opposer's YSL mark is strong and famous in the fashion field
Opposition No. 91118017
11
and entitled to a broad scope of protection.10 We also note that
there is no evidence in the record of any third-party use or
registration of similar marks for similar goods.
We turn then to a comparison of applicant's stylized SL mark
with opposer's stylized YSL mark, and a determination of the
similarity or dissimilarity of the marks in their entireties.
See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). The marks are shown below.

In analyzing composite letter marks, it is important to
consider both the literal and visual elements of the marks. In
re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d 1239,
1240 (Fed. Cir. 1990) ("the nature of stylized letter marks is
that they partake of both visual and oral indicia. ... [A]
stylized letter design can not be treated simply as a word
mark"). Where the letters are so highly stylized that the marks
are essentially design marks incapable of being spoken, the
decision would turn primarily on the basis of the visual

10 We have not considered the untimely evidence of opposer's asserted
policing activities which was submitted for the first time with
opposer's brief.
Opposition No. 91118017
12
similarity of the marks. See Textron Inc. v. Maquinas Agricolas
"Jacto" S.A., 215 USPQ 162 (TTAB 1982). That is not the
situation here. In this case, the marks are easily recognizable
as the letters YSL and SL, and the letters are essential features
of each mark. Compare, e.g., Georgia-Pacific Corp. v. Great
Plains Bag Co., 204 USPQ 697 (CCPA 1980); In re Burndy
Corporation, 133 USPQ 196 (CCPA 1962); and In re Johnson Products
Co., Inc., 220 USPQ 539 (TTAB 1983). Thus, these marks are
capable of being spoken, and when spoken, they are similar in
sound. Applicant's mark SL contains two of the three letters in
YSL and they are in the same sequence in both marks.
The visual similarity of these marks is striking. The marks
contain two letters in common, S and L, the letters are in the
same size and proportion to each other in both marks, and the
arrangement of the letters, in vertical interlocking form, is
essentially identical. The rectangular border in applicant's
mark is an inconsequential difference. It is far overshadowed by
the letters and their design which make the strongest commercial
impact.
As to meaning, the marks may be perceived as merely a
combination of arbitrary letters having no inherent meaning. As
stated by the Court in Dere v. Institute for Scientific
Information, Inc., 420 F.2d 1068, 164 USPQ 347, 348 (CCPA 1970),
"it is more difficult to remember a series of arbitrarily
arranged letters than it is to remember figures, syllables, or
Opposition No. 91118017
13
phrases," and further that "the difficulty of remembering such
multiple-letter marks makes the likelihood of confusion between
such marks, when similar, more probable." See also Weiss
Associates Inc., supra at 1841. On the other hand, in view of
the promotion of a close association of YSL with the name Yves
Saint Laurent in opposer’s product packaging and advertisements,
and in media stories, purchasers may be aware of the derivation
of YSL as the initials for the designer's name, Yves Saint
Laurent. To the extent opposer's mark would have this meaning,
the meaning of applicant's stylized SL mark would be similar, if
not the same.11 Because of the visual similarities of the marks,
and considering the fame and recognition of YSL, applicant's SL
mark, particularly in this format, may be perceived as simply a
slightly different or more abbreviated version of opposer's
stylized YSL mark, perhaps identifying a particular line of Yves
Saint Laurent jewelry.
In view of the foregoing, we find that even careful
purchasers when confronted with these highly similar marks on or
in connection with identical goods are likely to be confused.12

11 We note that applicant’s mark is derived from the initials of its
president and owner, Steven Lee. However, there is no evidence of
record that consumers would be aware of Mr. Lee or otherwise associate
the mark with his name.

12 To the extent opposer is making the argument that applicant adopted
its mark in bad faith, there is insufficient evidence to show or from
which we can infer this. Mere knowledge of the existence of opposer's
mark does not, by itself, constitute bad faith. See Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed.
Cir. 1989). Opposer must show that applicant intentionally sought to
trade on opposer's good will or reputation. See Big Blue Products Inc.
Opposition No. 91118017
14
Decision: The opposition is sustained.

v. International Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991).
While applicant indicated in its discovery responses that the letters
SL were adopted to reflect its owner's name, there is no testimony or
other evidence regarding applicant's intent in adopting the mark in its
present form.