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Rothwell, Figg, Ernst & Manbeck attorneys G. Franklin Rothwell, Anne
Sterba and Jenny Workman recently obtained judgment from the US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) in favor of its client, fashion icon Valentino, U.S.A., Inc. against a rival fashion company. The issue was whether or not there was a likelihood of confusion between Valentino's marks (VALENTINO, V VALENTINO and GARAVANI VALENTINO) and the other entity’s marks (GIOVANNI VALENTINO and GIANNI VALENTINO). The opposition and cancellation proceedings moved into a higher gear, after Rothwell Figg took over the case from a prominent New York law firm. The parties engaged in extensive discovery, provided substantial evidence in their
respective testimony periods, submitted their respective briefs and
participated in an oral argument. At the conclusion of this 16-year pending action, the TTAB held that Valentino had established priority of use and that a likelihood of confusion existed between the marks at issue. Therefore, the TTAB sustained the oppositions and granted the petitions to cancel.
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