Order Sons of Italy in Americav.The Memphis Mafia, Inc.

Trademark Trial and Appeal Board

Jul 9, 1999

No. 92025282 (T.T.A.B. Jul. 9, 1999)

Paper No. 22
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Order Sons of Italy in America
v.
The Memphis Mafia, Inc.
_____
Cancellation No. 25,282
_____
Joseph Scafetta, Jr., Esq. for Order Sons of Italy in
America.
Marty Lacker for The Memphis Mafia, Inc., pro se.
_____
Before Simms, Cissel and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Order Sons of Italy in America (Order) has filed a
petition to cancel Registration No. 1,891,835 of the mark
THE MEMPHIS MAFIA for “entertainment services, namely,
rendering talks relating to popular music and music
Cancellation No. 25,282
2
personalities,”1 pursuant to Section 2(a) of the Trademark
Act.2
In the petition to cancel, petitioner alleges that the
Order, since its founding in 1905, has been engaged in
providing fraternal assistance and moral support to its
Italo-American members through approximately 2700 lodges in
the United States and Canada; that at many of the lodges
entertainment services are provided, which may include talks
relating to famous Italian Americans; that the Commission
for Social Justice (CSJ) is a separate corporate entity of
the Order which works to eradicate bias, bigotry and
prejudice against Italo-American citizens; that the CSJ has
particularly fought to eliminate the indiscriminate use of
the term “Mafia”; that although “Mafia” originates from a
battle cry used against the French in the invasion by
Napoleon in 1799, the term now has an entirely different
meaning; that the Order and the CSJ object to use of the
term beyond the description of a small group of organized
criminals in Italy and America; that “Mafia” is a word

1 Reg. No. 1,891,835, issued Apr. 25, 1995, from an intent-to use
application filed Oct. 4, 1990. A statement of use was filed
claiming first use dates of August 4, 1994.
2 Section 2(a) reads, in pertinent part:
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration on the principal register on account of its nature
unless it –
(a) consists of or comprises ...matter which may
disparage... persons living or dead, institutions,
beliefs, or national symbols ... .
Cancellation No. 25,282
3
detested by most law-abiding Italians and Italian Americans,
and to call an honest Italian or Italian American a member
of any “Mafia” is a grave insult that disparages the
character and damages the reputation of the individual by
labeling him or her a criminal; and thus the Order petitions
to cancel the registration of the mark THE MEMPHIS MAFIA
because its use for the services listed disparages the
members of the Order and brings the Order as an institution
into contempt or disrepute.
Respondent, in its answer, denied the salient
allegations of the petition to cancel.
The record consists of the file of the involved
registration and the trial testimony taken by petitioner,3
with accompanying exhibits.4 Both parties filed briefs on
the case, but no oral hearing was requested.

3 During its testimony period, respondent filed a communication
signed by Mr. Lacker, as an officer of respondent, entitled
“Registrant’s Testimony and Answer to Petitioner”, consisting of
statements and accompanying exhibits with respect to the history
and functions of respondent, as well as a response to
petitioner’s testimony. Petitioner filed its objections to the
admissibility of this as evidence on respondent’s behalf and a
motion to strike the same, in that there had been no agreement
between the parties, as required by Trademark Rule 2.123(b),
that respondent could file testimony in the form of an affidavit
or declaration. Petitioner’s motion to strike was granted and
accordingly, respondent’s “testimony and answer” and the exhibits
attached thereto, have been given no consideration.
4 Petitioner also filed a notice of reliance listing the three
trial depositions taken and the exhibits introduced thereby.
Since all testimony depositions must be filed with the Board,
and, when filed, automatically become part of the record, the
filing of a notice of reliance was unnecessary. See Trademark
Rule 2.123(h).
Cancellation No. 25,282
4
By the testimony deposition of John G. Spatuzza, an
attorney and a past president of the Order and present
member of the trademark committee of the CSJ, petitioner has
established that the Order was founded in 1905; that there
are 2700-2800 existing lodges with about 450,000 family
memberships throughout the United States; and that the CSJ
is a separately chartered arm of the Order to oppose
discrimination. Mr. Spatuzza further testified that, as
president of the Order, he wrote to Attorney General Griffen
Bell in March 1977 regarding renewed use by the Justice
Department of the terms “Mafia” and “Cosa Nostra,” after a
prior ban issued by Attorney General John Mitchell in 1970;
that a response was received from Griffen Bell affirming
that “terms like ‘mafia’ and ‘cosa nostra’ have no place in
the discourse of Justice Department officials” and that it
“has been this Department’s policy not to use such
disparaging terms when referring to organized crime. This
is and will continue to be our policy.” Mr. Spatuzza also
identified the early memorandum issued by Attorney General
John Mitchell in which the Attorney General noted that it
had “become increasingly clear that many good Americans of
Italian descent are offended by the use of the terms Mafia
and Cosa Nostra in news reports dealing with organized
crime,” and that “since there is nothing to be gained by

Cancellation No. 25,282
5
using these terms except to give gratuitous offense, I am
requesting that we discontinue their use in news releases,
speeches or other public statements of this Department...”
In the deposition of Vincent S. Romano, a retired
school supervisor and the present president of the CSJ,5 he
introduced evidence of the work done by CSJ to fight
discrimination against Italian-Americans in publications,
television and radio shows, advertising and the like, as
well as its opposition to the registration of trademarks
considered disparaging by members of the Order. Mr. Romano
also identified a copy of an advertisement placed by CSJ in
the Journal of the Patent and Trademark Office in September
1995 advising trademark practitioners that the Order had
opposed and would continue to oppose on the grounds of
disparagement any applications for marks including the terms
COSA NOSTRA, MAFIA, MAFIOSO, DAGO, MAFIOSI or WOP. In line
with this, Mr. Romano put into evidence a dictionary
definition for “mafia” and one for “mafioso” which he
believed to be appropriate.6 He also identified copies of
notices of opposition7 filed by the Order against the

5 This deposition was taken May 23, 1997.
6 The selected definitions from The American Heritage Dictionary
(2nd College Ed.) were:
Mafia 2. An alleged international criminal organization
believed active, esp. in Italy and the United States.
Mafioso A member of the Mafia.
7 Opposition Nos. 97,043 and 97,639.
Cancellation No. 25,282
6
registration of the marks MAFIA MOB for clothing and MAFIA
FOR MOB for perfumes and the like and the subsequent orders
of default judgment in favor of the Order issued by the
Board. In addition, Mr. Romano identified a letter received
from John Keeney, Acting Assistant Attorney General, in
March 1997, in which he stated that the Justice Department
“continues to adhere to the spirit of the Mitchell and Bell
memoranda, recognizing that the terms ‘La Cosa Nostra’ and
‘mafia’ are offensive to some of the citizens of this
country.” Mr. Keeney goes on to state that public
statements by the Justice Department only include references
to “La Cosa Nostra” or “mafia” if documented by the court
record, and that the Justice Department believes
no one should ever use these terms as a
shorthand for the phrase “organized crime,”
suggesting that organized crime is somehow
confined to descendants of Italian heritage
or that Italian-Americans condone organized
crime. ... The Department knows that self-
described “La Cosa Nostra” or “mafia” groups
neither reflect the high morals of, nor
speak for, our Italian-American communities.
In the deposition of Gabriel Bevilacqua, an attorney
and a past president and present voting member of CSJ, he
identified a copy of a publication of the U.S. Bureau of the
Census showing that in 1990 the Italian ancestry group
constituted 5.9 percent of the U. S. population. Mr.
Bevilacqua further described the policy adopted by CSJ in
1990 of opposing the registration of trademarks considered
Cancellation No. 25,282
7
disparaging to Italian-Americans and introduced copies of
oppositions filed by the Order against registration of the
marks MAFIA for business services,8 MA-FI-O-SO for
entertainment services,9 and DON VITO for beer and malt
liquor.10 In each opposition, judgment by default was
entered in the Order’s favor.
Mr. Bevilacqua also placed in evidence a public opinion
study conducted in 1990 at the request of the Order with
respect to prevalent social attitudes toward certain ethnic
groups including Italian-Americans. He drew special
attention to the fact that 74 percent of the 1,000 persons
surveyed identified Italians as the ethnic group which is
“into a lot of the organized crime in this country.” He
further introduced a position paper generated by the CSJ in
1990 setting forth the belief of the Order that “use of the
term ‘mafia’ as a generic description of organized crime
leads to the unfavorable association of our people with
criminality” and that “our community cannot possibly
tolerate the use of this code word.” The Order sets forth
the viewpoint that since organized crime encompasses persons
of all races and national origins, it should not be equated

8 Opposition No. 83,102.
9 Opposition No. 88,377.
10 Opposition No. 89,377.
Cancellation No. 25,282
8
with Italian-Americans, as is the effect of using the word
“mafia.”
Finally, petitioner’s three deponents, after counsel’s
moving, without objection, for them to be qualified as
expert witnesses in the area of defamation and
disparagement, testified as to their opinions that the mark
THE MEMPHIS MAFIA, when used for the listed entertainment
services, disparages the members of the Order and brings 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 activity in general; and that
it will have a negative impact on not only members of the
Order, but all Americans of Italian descent. These
witnesses also testified to the effect that, since the Order
sponsors entertainment services at its lodges and various
groups advertise in its publications, and since there are
many Italians in the music business, people might believe
that there was a relationship between the Order and
respondent’s services.
On the basis of the foregoing evidence, which stands
unrebutted by respondent,11 petitioner takes the position

11 As previously pointed out, the “testimony and answer” submitted
by respondent has been stricken from the record. While
respondent has made similar arguments in its brief concerning the
self-serving nature of the testimony of petitioner’s three
witnesses and questioned their qualification as expert witnesses,
Cancellation No. 25,282
9
that the mark THE MEMPHIS MAFIA, as used in connection with
respondent’s entertainment services, may disparage the
members of the Order and bring the Order as an institution
into contempt. Petitioner argues that although the Order
only consists of 3.1% of the Italian-Americans in the
country, it still should be considered a substantial
composite of the general public for purposes of this
proceeding, and also as the best representative of the
interests of the Italian-Americans, the fifth largest ethnic
group in this country. Petitioner points to the statements
of the Justice Department as evidence of recognition of the
disparaging nature of the term “mafia” to this ethnic group.
Petitioner stresses the unrebutted testimony of its expert
witnesses that the mark THE MEMPHIS MAFIA, and its “negative
innuendo” is offensive to both members of the Order and to
the “targeted” Italian-American community in general.
Petitioner contends that words such as “mafia” and “mafiosi”
are specifically addressed to the Italian-American community
and hold the members of this community up to ridicule.
Petitioner argues that use of the mark THE MEMPHIS MAFIA in
connection with entertainment services is particularly
offensive because the “choice” of the word “mafia” plays on

the fact remains that respondent neither attended the
depositions nor properly introduced evidence to rebut the
testimony taken therein.
Cancellation No. 25,282
10
the fictional gangster scenes and the “mafia” criminal life
style glorified in the movies and on television.
Insofar as the Order itself is concerned, petitioner
advances the argument that nonmembers of the Order might
presume a connection between the entertainment services
offered under the mark THE MEMPHIS MAFIA and the Order,
since the Order does sponsor social activities and
entertainment, and that such non-members would consider the
Order to be contemptible for its use of the term MAFIA.
Respondent, in its brief, argues that the purpose of
the group of men dubbed “The Memphis Mafia” is solely to
perpetuate the memory of Elvis Presley; that the group
consists of associates and employees of Elvis Presley who
now give talks about Elvis; that these persons, when
traveling with Elvis, were in no way thought of as gangsters
or mobsters; that the mark THE MEMPHIS MAFIA, as used in
connection with respondent’s services, is not intended to
disparage the Italian people; and that the talks are not
directed to crime, ethnic groups or anything other than
Elvis Presley. Respondent argues that the term MAFIA, as
used in its mark, falls within the dictionary definition of
“mafia” as “an exclusive and dominant group.”12

12 Respondent cites Webster’s Collegiate Dictionary (3d ed.) for
this definition.
Cancellation No. 25,282
11
In its recent decision in Harjo v. Pro-Football, Inc.,
50 USPQ2d 1705 (TTAB 1999), the Board set forth a two-step
test for determining whether matter may be disparaging under
Section 2(a).13 Under this test, the following factors must
be considered:
(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; and
(2) if that meaning is found to refer to identifiable
persons, institutions, beliefs or national
symbols, whether that meaning may be disparaging14
to a substantial composite of the referenced
group.
Turning first to the likely meaning of the term “Mafia”
as used in respondent’s mark THE MEMPHIS MAFIA, we have
taken under consideration, as our initial source of
information, dictionary definitions, as we did in the Harjo

13 As the Board noted in Harjo, there are different tests for
disparagement depending upon whether the party alleging
disparagement is an individual or commercial corporate entity
(Greyhound Corp. v. Both Worlds, Inc., 6 USPQ2d 1635 (TTAB
1988)), or a non-commercial group, such as a religious or racial
group (In re Hines, 31 USPQ2d 1635 (TTAB 1994), vacated on other
grounds, 32 USPQ2d 1376 (TTAB 1994) and the Harjo case). Here,
although in its petition to cancel, petitioner alleges
disparagement of the Order as an entity and the members thereof,
petitioner has actually tried the issue of whether respondent’s
mark is disparaging to Italian-Americans in general. Thus, as in
petitioner’s copending Opposition No. 99,992, we find the test
enunciated in the Harjo case to be the appropriate one.
14 The Board found matter which may “disparage” to include matter
which may “dishonor by comparison with what is inferior, slight,
deprecate, degrade, or affect or injure by unjust comparison.”
Id. at 106-107.
Cancellation No. 25,282
12
case. While petitioner has introduced one definition and
respondent has referred to another definition, we find it
advisable to take judicial notice of additional definitions,
in their entireties. See University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Thus,
we note the following definitions:
1. in Sicily a) [m-] an attitude of popular hostility
to law and government b) a secret society
characterized by this attitude
2. in the U.S. and elsewhere, a secret society, of
Italian origin, engaged in such illegal activities
as gambling, prostitution, and illicit trade in
narcotics
3. [m-] any exclusive or dominating group.
Webster’s New World College Dictionary (3d Ed.
1997).
1. a hierarchically structured secret organization
allegedly engaged in smuggling, racketeering,
trafficking in narcotics, and other criminal
activities in the U. S., Italy, and elsewhere.
2. (in Sicily) a. (l.c.) a popular spirit of hostility
to legal restraint and to the law, often
manifesting itself in criminal acts. b. a 19th
century secret society, similar to the Camorra in
Naples, that acted in this spirit.
3. (often l.c.) any small powerful or influential
group in an organization or field; clique.
The Random House Dictionary of the English Language
(2d Ed. 1987).
Upon consideration of all of the definitions before us,
we find that, in the United States, the predominant meaning
of “Mafia,” especially when used as a proper noun, is that
of a secret organization of Italian origin engaged in
criminal activities. The term may, however, also encompass
powerful or influential groups which are not necessarily
Cancellation No. 25,282
13
either formed of persons of Italian descent or operated for
the purposes of criminal activity. There is no indication,
in contrast to the Harjo case, that the word “Mafia” is
offensive or disparaging per se to any ethnic group.
Petitioner has, in fact, acknowledged that the word is
appropriately used when reference is accurately being made
to the specific international criminal organization.
Our next step is to determine the meaning most likely
to be attributed to the term “Mafia,” as it is being used in
respondent’s mark and in connection with respondent’s
services. The mark is THE MEMPHIS MAFIA and the services
are entertainment services in the nature of talks relating
to music personalities. While respondent has stated that
the talks are in fact restricted to one performer, Elvis
Presley, we cannot construe the topic of the talks so
narrowly, inasmuch as there is no evidence of record to
substantiate this representation, nor are the services, as
identified, so limited.
From the record before us, it appears that there is no
connection whatsoever between respondent’s entertainment
services and the dictionary definition of “Mafia,” as an
organization dedicated to criminal activities composed of
persons of Italian origin. Instead, the only relevant
meaning of the term MAFIA as used in respondent’s mark would
presumably be the definition of “mafia” as an exclusive, or
Cancellation No. 25,282
14
small and powerful, group or clique. But, admittedly we
have nothing specific upon which to base any conclusion that
this was the intended meaning of the term as used in
respondent’s mark. We have no evidence before us with
respect to the circumstances under which the group which
revolved around Elvis Presley was given the name “The
Memphis Mafia,” which the group subsequently adopted as a
mark for its entertainment services. We have no information
as to the perceived connotation of this name, or of the
nature of the group with which it was used, other than that
the group consisted of persons close to Elvis Presley.15
While petitioner takes the broad stand that use of the
term “Mafia” in any way, other than when accurately used in
reference to one specific criminal organization, is a slur
to the Italian-American ethnic group, the record is not
persuasive of this position. The situation here is not
similar to the Harjo case, where all usages of the term
“Redskins” were found to be offensive to Native Americans.
Here, from the evidence of record, particularly the
memoranda from the Justice Department, it appears that it is
the inaccurate use of the term “Mafia” as a generic
descriptor for all organized crime, regardless of origin,
which is the usual manner in which Italian-Americans become

15 It is in the specimens of record in the registration file that
“The Memphis Mafia” is identified as the “name of the group of
guys close to Elvis.”
Cancellation No. 25,282
15
associated in a derogatory sense with the term. While in
the public opinion study made of record by petitioner a
general association was found to exist between Italian-
Americans and organized crime, no mention was made of the
term “Mafia,” or whether its use, regardless of context,
would automatically trigger this association.
Instead, petitioner relies upon the testimony of its
three witnesses, said to be experts in the field of
disparagement to Italian-Americans, to the effect that the
mark THE MEMPHIS MAFIA perpetuates the stereotype of a
connection between Italian-Americans and organized crime and
thus has a negative impact on this ethnic group. Although
we have carefully considered this testimony, we cannot
ignore the fact that these witnesses are all active members
of the Order. Their testimony cannot be viewed as other
than reflecting the objectives of this organization.
Accordingly, this testimony must be considered as
potentially self-serving in nature and not necessarily as
probative as, for example, the opinion of an expert witness
not associated with petitioner. Moreover, the Board is
required to reach its own conclusions with respect to the
ultimate issue of disparagement, rather than relying upon
the opinions of witnesses, even if these witnesses were

Cancellation No. 25,282
16
truly qualified as experts. See Saab—Scania Aktiebolag v.
Sparkomatic Corp., 26 USPQ2d 1709 (TTAB 1993).
Accordingly, we find that petitioner has failed to
carry its burden of proving that the term “Mafia” as used by
respondent in the mark THE MEMPHIS MAFIA, in connection with
its entertainment services, may disparage either the members
of the Order or Italian-Americans in general.16
Decision: The petition to cancel is denied.
R. L. Simms
R. F. Cissel
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board

16 In view of this decision, we find no need to consider
petitioner’s further allegations that the mark would bring the
Order as an institution into contempt or disrepute.