Order Sons of Italy in Americav.Richard Callisi

Trademark Trial and Appeal Board

Jun 29, 1999

No. 91099992 (T.T.A.B. Jun. 29, 1999)

Paper No. 20
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/29/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Order Sons of Italy in America
v.
Richard Callisi
_____
Opposition No. 99,992
to application Serial No. 74/633,337
filed on February 13, 1995
_____
Joseph Scafetta, Jr. for Order Sons of Italy in America.
Richard Calissi, pro se.
______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Richard Calissi to
register the mark GOODFELLAS and design shown below
Opposition No. 99,992
2
for services which were subsequently identified by amendment
as “entertainment services, namely, live performances by a
musical group.”1
Registration has been opposed by the Order Sons of
Italy in America under Section 2(a) of the Trademark Act.
As grounds for opposition, opposer alleges that since its
founding in 1905, it has provided fraternal assistance,
moral support and entertainment services to its Italo-
American members through approximately 2700 lodges in the
United States and Canada; that at many of the lodges, live
entertainment is provided; that the Commission for Social
Justice (CSJ) is a separate corporate entity of opposer
which works to eradicate bias, bigotry and prejudice against
Italo-American citizens; that opposer, through the CSJ, has
worked to eliminate the use of the terms “Mafia”, “Cosa
Nostra”, and “Goodfellas” in reference to Italo-Americans;
that “Goodfellas” is a code word used by organized criminals
to refer to each other; that a synonym for “goodfellas” is
“mafioso” which refers to members of the “Mafia”, also known
as “Cosa Nostra”; that the term “Goodfellas” became
generally known throughout the United States and Canada for
its criminal meaning when the movie of the same name was
released in 1990; that opposer and the CSJ object to use of
the term “Goodfellas” beyond its meaning and description of

1 Application Serial No. 74/633,337 filed February 13, 1995;
Opposition No. 99,992
3
a small group of organized criminals both in Italy and
America; that “Goodfellas” is a word detested by most law-
abiding Italians and Italian Americans, and to call an
honest Italian or Italian American “goodfellas”, i.e.,
members of the Mafia or Cosa Nostra, is considered a grave
insult that disparages the character and damages the
reputation of the individual by labeling him or her a
criminal; and that the mark “GOODFELLAS” and design, when
used in connection with the identified services, disparages
the members of opposer, and brings opposer as an institution
into contempt or disrepute.
Applicant, in an amended answer, denied the allegations
of the notice of opposition.
The record consists of the file of the involved
application and the trial testimony, with exhibits, of
opposer’s witnesses John G. Spatuzza, Vincent S. Romano,
Gabriel Bevilacqua, and Augustus Accurso2. Applicant took
no testimony and offered no other evidence.3 Only opposer
filed a brief and no oral hearing was requested.

alleging dates of first use of January 17, 1994.
2 We note that opposer submitted under notice of reliance a list
of the depositions and accompanying exhibits. This was
unnecessary, however, inasmuch as the depositions and exhibits,
at the time of filing with the Board, automatically became part
of the record herein. See Trademark Rule 2.123(h).
3 We should point out that accompanying applicant’s original
answer were copies of excerpts taken from dictionaries and a
book. These materials, however, do not form part of the record
herein. See Trademark Rule 2.122(c).
Opposition No. 99,992
4
The record shows that the Order Sons of Italy in
America was established in 1905. There are approximately
2700 existing lodges with about 450,000 family memberships
throughout the United States. During the course of
testimony, opposer introduced a copy of a study prepared by
the U.S. Bureau of Census which shows that as of 1990
Italian Americans comprised 14,664,550 or 5.9% of the
population of 248,709,873 in the United States. As such,
they were the fifth largest of the top 100 ancestry groups
ranked by the Bureau of the Census. Also, opposer
introduced a copy of the results of a survey conducted at
its request in October 1990 concerning the public images,
beliefs, and misconceptions regarding Americans of Italian
descent. Opposer notes that 74% of the persons surveyed
identified Italians as the ethnic group “into a lot of the
organized crime in this country.” Further, opposer
introduced definitions of the words “Mafia” and “Mafioso”
taken from The American Heritage Dictionary (2 ed.):
Mafia : 1. A secret terrorist organization
in Sicily operating since the early 19th
century in opposition to legal authority.
2. An alleged international criminal
Organization believed active esp. in Italy
And the United States since the late
19th century.
Mafioso: A member of the Mafia.
According to the record, The Commission for Social
Justice (CSJ), a separately chartered arm of opposer, is
Opposition No. 99,992
5
charged with “fight[ing] discrimination, slander, bias, and
prejudice against Italian Americans.” (Bevilacqua
deposition, p. 7). Of particular concern to opposer and the
CSJ are false portrayals of Italian Americans. As part of
its efforts in this regard, opposer, in 1971, succeeded in
having Attorney General John N. Mitchell issue a memorandum
which noted that “many good Americans of Italian descent are
offended by the use of the term Mafia and Cosa Nostra in
news reports about organized crime” and directed Department
of Justice officials to discontinue use of these terms. In
addition, in 1977, Attorney General Griffin Bell wrote
opposer’s president, indicating in a letter that “terms like
‘Mafia’ and ‘cosa nostra’ have no place in the discourse of
Justice Department officials” and that it continues to be
departmental policy “not to use such disparaging terms when
referring to organized crime.”
Further, in this regard, it has been opposer’s policy
to oppose registration of marks which it considers
disparaging to Italian Americans. Opposer introduced copies
of oppositions which it had filed against the following
marks: MAFIA, MA-FI-O-SO, DON VITO, MAFIA BOB, and MAFIA
FOR MOB. In each of these oppositions, judgment by default
was entered against the applicant. Also, in this respect,
the CSJ placed a notice in the September 1995 issue of the
Journal of the Patent and Trademark Office Society advising
Opposition No. 99,992
6
trademark practitioners that opposer had opposed and would
continue to oppose on the grounds of disparagement any
applications for marks which include the terms “COSA NOSTRA,
MAFIA, MAFIOSO, DON VITO, MAFIOSI, or WOP.” In November
1994 the CSJ adopted a resolution denouncing the use of
“Goodfellas” by three separate entities. One was using the
mark for pizza and the two others were using it for
restaurant services. In addition, opposer sent cease and
desist letters to two of the entities which had applied to
register the mark. Both applications were ultimately
abandoned.
The record includes a frame from the movie “GoodFellas”
which appeared on the cover of The Italic Way (Vol. 6,
No. 1, 1993). The frame features a group of men, who are
apparently gambling, seated around a table. One of the men
is pointing a gun at another man. Appearing within the
frame are the following: “Strangers Among Us: The Mafia
and its Ilk,” and “Hollywood’s Love Affair: Italian-
American cast of the 1990 movie GoodFellas.” Also made of
record were copies of six magazine/newspaper reviews of the
“GoodFellas movie.” In the September 21, 1990 issue of the
Chicago Tribune, Gene Siskel described the movie as a
“workaday mob drama” concerning “the life of self-described
‘wiseguys’ and ‘goodfellas’.” David Ansen, in the September
17, 1990 issue of Newsweek, wrote a story in which he
Opposition No. 99,992
7
reviewed “GoodFellas” and two other movies. The story was
entitled “A Hollywood Crime Wave” with the subtitle “Three
brilliant and bloody new gangster movies kick off a season
of mayhem, molls and mafiosi.” In the September-October
1990 issue of Film Content, Kathleen Murphy described
“GoodFellas” as “chronicling the rise and fall from grace of
a trio of mafiosi.” (emphasis in original). In the 1991
edition of Magill’s Cinema Annual, Patricia Kowai described
one of the main characters in the movie as “a ‘goodfella’
who loved to steal.” Another principal character was
described as always wanting “to be a gangster” and that
“life in the Mafia appealed to him.” In the September 14,
1990 issue of the New York Times, the review of “GoodFellas”
is headlined “A Cold-Eyed Look at the Mob’s Inner Workings.”
Finally, in the September 24, 1990 issue of Time magazine,
the review is entitled “Married to the Mob” and the lead
characters are described as “gangsters, hit men, wise guys –
good fellas.”
Each of opposer’s witnesses is an officer or member of
opposer and expressed the opinion that the mark GOODFELLAS
and design, when used in connection with the identified
services, would bring the Order as an institution into
contempt and disrepute; that the mark perpetuates the
stereotype fostered on the American public of a connection
between Italian Americans and organized crime, or criminal
Opposition No. 99,992
8
activity in general; and that it will have a negative impact
on not only members of the Order, but all Americans of
Italian descent.
In view of the above evidence, it is opposer’s position
that the mark GOODFELLAS and design, as used in connection
with the identified entertainment services, disparages
members of the Order and brings the Order as an institution
into disrepute. In this regard, opposer maintains that the
term “Goodfellas” means “mafiosi” which in turn means a
member of the Mafia. According to opposer:
Words like “goodfellas” and “mafiosi” are
specifically addressed to and associated
with the Italian-American community. Such
terms tar the reputation and hold up to
ridicule the members of the Italian-
American community.
(Brief, p. 25).
At the outset, we note that the Board has applied
different tests for disparagement depending upon whether the
party alleging such is an individual/commercial corporate
entity or a non-commercial group such as a religious or
ethnic group. In this case, although opposer, in the notice
of opposition, seeks relief alleging disparagement of the
organization and its members, opposer claims that
applicant’s mark is disparaging to all Italian-Americans who
are honest. In view thereof, and because it appears that
the issue which has actually been tried is whether honest
Italian Americans are disparaged by applicant’s mark, the
Opposition No. 99,992
9
appropriate test in this case is that set forth in Harjo v.
Pro-Football, Inc., ___ USPQ2d ___ (Cancellation No.
21,069 decided April 2, 1999). That test is as follows:
(1) What is the likely meaning of the matter in
question, taking into account, not only
dictionary definitions, but also the
relationship of the matter to the other
elements in the mark, the nature of the
goods or services, and the manner in
which the mark is used in the marketplace
in connection with the goods or services;
(2) And, if that meaning is found to refer
to identifiable persons, institutions,
beliefs, or national symbols, whether
that meaning may be disparaging to
a substantial composite of the referenced
group.
While we have carefully considered the record herein,
we are not persuaded that applicant’s mark GOODFELLAS and
design, when used in connection with its services, may be
disparaging to honest Italian Americans.
Considering first the likely meaning of GOODFELLAS as
used in applicant’s mark, we note that there are no
dictionary definitions of the term “goodfella[s].” While
opposer has made of record dictionary definitions for the
words “Mafia” and “Mafiosi,” neither of these definitions is
particularly probative of the meaning of the term
“goodfellas” since there is no reference to the term in
either definition. In any event, neither “Mafia” or
“Mafioso” has been labeled “offensive,” and it appears from
the definitions that “Mafia” is perfectly acceptable when
Opposition No. 99,992
10
referring to either the secret terrorist organization in
Sicily or the specific international criminal organization.
In short, we cannot say from these dictionary definitions
that the term GOODFELLAS, as used in applicant’s mark would
be understood by the general public to associate organized
crime with Italian Americans.
Looking next at the reviews of the “Goodfellas” movie,
it is clear from these reviews that the movie depicted a
criminal lifestyle and that the term “goodfellas” refers to
the criminals depicted in the movie. Thus, this is some
evidence of the likely meaning of the term “goodfellas.”
However, there is insufficient evidence from which to
conclude that the movie created an image of criminals that
extended generally to Italian Americans. Also, while we
recognize that the movie was critically acclaimed, there is
no information regarding the public’s exposure to this
movie. Thus, we cannot say from this evidence that the
term GOODFELLAS as used in applicant’s mark would be
understood by the general public to associate organized
crime with Italian Americans.
Further, the letter and memo from Justice Department
officials which concern use of the specific terms “Mafia”
and “Cosa Nostra” are not particularly probative of the
generally understood meaning of the term “goodfellas.”
Again, there is no mention of the term “goodfellas” in
Opposition No. 99,992
11
either the letter or memo. Also, while the Department
agreed to refrain from using the terms “Mafia” and “cosa
nostra” when referring to all organized crime, there does
not appear to be a prohibition against using the term to
refer accurately to the specific international criminal
organization. In any event, we cannot conclude from this
letter and memo that the Justice Department considers
“goodfellas” to be disparaging in any context.
We recognize that opposer has undertaken numerous
efforts (adoption of resolutions, letter writing, filing
oppositions, etc.) to prevent the use of terms which it
considers disparaging to Italian Americans. However,
opposer’s efforts in this regard are not conclusive of
whether such terms, and in particular “goodfellas,” are
disparaging.4 Also, while we recognize that the public
opinion survey which was conducted revealed that a
substantial number of people identified Italian Americans
with criminal activity, there were no questions concerning
the term “goodfellas.”
As to the opinions of opposer’s witnesses with respect
to applicant’s mark, they are of little persuasive value as
all are members/officers of opposer. Notwithstanding
opposer’s attorney’s attempt to qualify them

4 We should point out that in none of the oppositions was there a
final decision on the merits, i.e., a determination that the
mark involved was disparaging to Italian Americans.
Opposition No. 99,992
12
as such, there is insufficient basis to find that opposer’s
witnesses are experts on the issue of trademark
disparagement, or on the attitudes of all or even a
substantial composite of, Italian Americans. Also, the
opinions of opposer’s witnesses as to the ultimate issue
before us, i.e., whether applicant’s mark is disparaging,
are not considered in determining this issue. In any event,
we regard the testimony of opposer’s witnesses to be the
views of a few Italian American individuals.
In sum, opposer has failed to establish that the term
GOODFELLAS, as used in applicant’s mark and in connection
with the entertainment services specified in the
application, is understood by the general population to
associate all organized crime with Italian Americans, or
that a substantial composite of Italian Americans feel
disparaged by such use in the context of the mark and the
identified services.
In view of the foregoing, we find that opposer has not
established that the mark GOODFELLAS and design for
entertainment services in the nature of live performances by
a musical group may be disparaging to Italian Americans.
Opposition No. 99,992
13
Decision: The opposition is dismissed.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board