AGE, Bodegas Unidas, S.A.

Trademark Trial and Appeal Board

Aug 26, 2003

No. 78074052 (T.T.A.B. Aug. 26, 2003)

Mailed: 26 AUG 2003
Paper No. 10
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re AGE, Bodegas Unidas, S.A.
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Serial No. 78/074,052
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Jane F. Cullen of Cullen IP for AGE, Bodegas Unidas, S.A.
Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Hanak, Hohein and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On July 16, 2001, AGE, Bodegas Unidas, S.A.
(applicant) applied to register the mark SIGLO, in typed
form, on the Principal Register for goods identified as
“wines” in International Class 33.1 The applicant has
indicated the Spanish word “Siglo” is translated as
“Century.”
1 Serial No. 78/074,052. The application contains an allegation
of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 78/074,052
2
The examining attorney has refused to register the
mark under Section 2(d) of the Trademark Act because of a
prior registration for the mark SIGLO DE ORO shown below
for goods identified as “rum” in International Class 33.2
15 U.S.C. § 1052(d).
The mark is lined for the color gold and the words “Siglo
de Oro” are translated as “Golden Century.”
After the examining attorney made the refusal final,
this appeal followed.
The examining attorney’s position is that the term
SIGLO in the registrant’s mark is prominently displayed and
the term “ORO is translated as gold and the term gold is
one of the colors that rum comes in.” Examining Attorney’s
Brief at 3. The examining attorney held that the points of
similarities are greater than the differences between the
marks because they share a common dominant element. In
addition, the examining attorney found that the goods are
related. She cited a prior case, apparently involving
applicant, in which the Board found that wine and whiskey
2 Registration No. 2,270,857, issued August 17, 1999.
Ser. No. 78/074,052
3
were related goods. In re AGE Bodegas Unidas, S.A., 192
USPQ 326 (TTAB 1976). The examining attorney determined
that the goods in this case (rum and wine) “are marketed to
the same consumers and are sold through the same channels
of trade.” Examining Attorney’s Brief at 6. The examining
attorney also submitted copies of nine use-based
registrations as evidence that wine and rum have been
registered by the same party under a common mark.
Applicant, on the other hand, maintains that the
registered mark is translated as “golden century” while
applicant’s mark is translated simply as “century.” The
registered mark, applicant argues, “suggests entirely
different meanings than the Applicant’s mark” (Applicant’s
Brief at 5) and the fact that both marks contain a common
term does not mean the marks are confusingly similar.
Applicant also disputes that the registrations that the
examining attorney has placed in evidence demonstrate that
the goods travel in the same channels of trade. Finally,
applicant argues that wine purchases are not impulse
purchases, “consumers of fine wines are a group of
sophisticated purchasers,” and the “sophistication of the
average wine consumer is world renowned.” Applicant’s
Brief at 11. Applicant concludes by arguing that the
Ser. No. 78/074,052
4
differences in the marks and the goods support the reversal
of the refusal to register.
We affirm.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We start with a comparison of the applicant’s mark
SIGLO and registrant’s mark SIGLO DE ORO (stylized).
First, regarding applicant’s arguments regarding the
stylization of the registered mark, since applicant’s mark
is shown in typed form, no difference can be asserted with
the stylization of the registered mark. Squirtco v. Tomy
Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir.
1983) (“[T]he argument concerning a difference in type
Ser. No. 78/074,052
5
style is not viable where one party asserts rights in no
particular display. By presenting its mark merely in a
typed drawing, a difference cannot legally be asserted by
that party. Tomy asserts rights in SQUIRT SQUAD regardless
of type styles, proportions, or other possible variations.
Thus, apart from the background, the displays must be
considered the same”).
Next, we compare the words in the marks and, having
done so, we find that they are similar. Both marks contain
the same word SIGLO. Indeed, it is the only word in
applicant’s mark and it is the first word in the registered
mark. Registrant’s mark also contains the additional
Spanish words DE ORO, which are translated as “golden.”
Despite the presence of these words in the registration, we
find that the marks still look and sound very similar
inasmuch as they begin with the same word “Siglo.”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1845 (Fed. Cir. 2000) (“[B]ecause both marks begin
with "laser," they have consequent similarities in
appearance and pronunciation”) (quotation marks in original
omitted). In addition, the presence of the words DE ORO
would not significantly change the meaning and commercial
impression of the marks. Coca-Cola Bottling Co. v. Joseph
E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106
Ser. No. 78/074,052
6
(CCPA 1975) (“When one incorporates the entire arbitrary
registered mark of another into a composite mark, inclusion
in the composite mark of a significant nonsuggestive
element does not necessarily preclude the marks form being
so similar as to cause a likelihood of confusion”). Even
to those familiar with the Spanish language, the difference
in meaning and commercial impression between “century” and
“golden century” is not substantial. To those not fluent
in Spanish, the differences would be even less prominent.
In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ 1531, 1534
(Fed. Cir. 1997) (more weight given to common dominant word
DELTA); Wella Corp. v. California Concept Corp., 558 F.2d
1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and
surfer design likely to be confused with CONCEPT for hair
care products). We find that the differences between the
marks are not enough to avoid confusion if the goods are
related.
Therefore, we next examine the relationship of the
goods, wine and rum. There is certainly no rule that the
use of similar marks on different alcoholic beverages
always results in a likelihood of confusion.3 However, it
3 See, e.g., G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d
1292, 16 USPQ2d 1635, (Fed. Cir. 1990) (RED STRIPE and design for
beer not confusingly similar to a design of a red stripe for
wines and sparkling wines); National Distillers and Chemical
Corp. v. William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34
Ser. No. 78/074,052
7
is not necessary that the respective goods be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991); In re Opus One Inc., 60 USPQ2d
1812, 1814-15 (TTAB 2001).
The question of whether specific alcoholic beverages
are related to other beverages has been the subject of
numerous cases. See, e.g., AGE Bodegas Unidas, 192 USPQ at
326 (“[T]here is clearly a relationship between wine and
whiskey, both of which alcoholic beverages are sold through
the same specialized retail outlets to the same purchasers,
and are frequently bought at the same time”); In re Rola
Weinbrennerei Und Likorfabrik GmbH & Co., 223 USPQ 57, 58
n.1 (TTAB 1984) (“Nevertheless, it is fair to say that
(CCPA 1974) (DUET on prepared alcoholic cocktails and DUVET for
French brandy and liqueurs not confusingly similar).
Ser. No. 78/074,052
8
adults who consume alcoholic beverages can and do consume
soft drinks as well. There are no limitations as to
channels of trade in the descriptions of goods before us
and there can be little question that alcoholic beverages
and soft drinks, travelling in their respective channels of
trade (and, quite likely, overlapping in many respects) can
and would come to the attention of the millions of adults
who drink the former”).
In a specific case involving rum and other distilled
alcoholic beverages and wine, the Board found that there
was a relationship between these alcoholic beverages.
In the case before us there is no doubt but that
purchasers could readily distinguish the products of
opposer from those of applicant. However, the
products of both parties are alcoholic beverages which
flow through the same channels of trade to the same
class of purchasers, and we believe that a prospective
purchaser of an alcoholic beverage upon entering and
browsing through the various alcoholic products
located or displayed on the various shelves or
counters in retail liquor establishments would, upon
encountering a whiskey, rum, brandy or vodka
identified by the term "MONARCH", and then continuing
on his jaunt to another counter or section of the same
store and seeing a wine or champagne sold under the
identical mark "MONARCH", be likely to believe that
both products originated with the same producer.
Monarch Wines Co., Inc. v. Hood River Distillers, Inc., 196
USPQ 855, 857 (TTAB 1977).
Ser. No. 78/074,052
9
Recently, the Federal Circuit has also addressed the
issue of the relationship between various alcoholic
beverages.
The PTO responds, and we agree, that malt liquor and
tequila are similar by virtue of the fact that both
are alcoholic beverages that are marketed in many of
the same channels of trade to many of the same
consumers. Although the PTO apparently found no
evidence of any manufacturer who both brews malt
liquor and distills tequila, Majestic has not shown
that the PTO’s lack of evidence in that regard is
relevant. Unless consumers are aware of the fact, if
it is one, that no brewer also manufactures distilled
spirits, that fact is not dispositive. The DuPont
factors require us to consider only “trade channels,”
which may be, but are by no means necessarily,
synonymous with manufacturing channels. In this case,
Majestic has not demonstrated that consumers
distinguish alcoholic beverages by manufacturer rather
than brand name.
Majestic Distilling, 65 USPQ2d at 1204.4
Regarding the issue of whether the goods are related,
the examining attorney has placed in the record nine use-
based registrations that show that the same party has
registered the same mark for wine and rum. See
Registration Nos. 2,528,250; 2,215,583; 2,505,385;
2,402,053; 2,404,673; 2,000,976; 1,910,791; 1,747,347; and
1,550,458. See In re Mucky Duck Mustard Co., 6 USPQ2d
4 We are also aware of the case of In re National Distillers &
Chemical Corp., 297 F.2d 941, 132 USPQ 271 (CCPA 1962) in which
the CCPA noted there were differences in the marks and goods
(MERITO for rum and MARQUES DEL MERITO for wines). These
factors, along with a consent to register by the registrant,
resulted in the CCPA concluding that there was no likelihood of
confusion. There is no consent to register in the instant case.
Ser. No. 78/074,052
10
1467, 1470 n.6 (TTAB 1988) (Although use-based, third-party
registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993). This evidence and the
case law leads us to conclude that rum and wine are not so
dissimilar that the goods would not be considered related
by the relevant purchasers.
Another factor we consider is the channels of trade.
“[S]ince there are no restrictions with respect to channels
of trade in either applicant's application or opposer's
registrations, we must assume that the respective products
travel in all normal channels of trade for those alcoholic
beverages.” Schieffelin & Co. v. Molson Companies Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989). There are no restrictions
on the goods in this case, so we must presume that
applicant’s wines and registrant’s rum are likely to be
sold through at least some of the same channels, i.e.,
stores that sell various alcoholic beverages.
We also believe that applicant’s malt liquor is
sufficiently related to opposer’s Cognac brandy that,
when sold under similar marks in the same channels of
Ser. No. 78/074,052
11
trade, such as bars, restaurants and liquor stores,
confusion is likely. While we have no doubt that
purchasers are not likely to consume a malt liquor
thinking that it is Cognac brandy, in view of the
similarities of the mark it is reasonable to assume
that purchasers may believe that BRADOR malt liquor is
another premium imported alcoholic beverage sold by
the same company which sells expensive BRAS D’OR
Cognac Brandy.
Id. See also Fleischmann Distilling Corp. v. Maier Brewing
Co., 314 F.2d 149, 136 USPQ 508, 514 (9th Cir. 1963) (BLACK
& WHITE scotch whiskey confusingly similar to BLACK & WHITE
beer; purchasers may believe that beer may be produced
under the supervision of the scotch whiskey distiller or
pursuant to some other arrangement with them).
In response to applicant’s argument that “consumers of
fine wine are a group of sophisticated purchasers”
(Applicant’s Brief at 11), we note that applicant’s
identification is not limited to fine wines.
Applicant does not dispute the identity of the goods
but, rather, argues that its wine and the wine sold
under the cited "PETRUS" trademark are expensive,
high-quality wine sold to a small group of extremely
sophisticated wine connoisseurs through high-quality
wine and spirits stores and that these well-informed
consumers are cognizant of the vineyard naming
conventions in France and are sensitized to the
vineyard naming practices whereby no connection
between vineyards is presumed due to the inclusion of
part of one vineyard's name in the name of another
nearby, albeit unrelated, vineyard. The problem with
this argument is that applicant is attempting to
restrict the scope of its goods in its application and
the scope of the goods covered in the cited
registration by extrinsic argument and evidence while
neither the recitation of goods in applicant's
Ser. No. 78/074,052
12
application nor the recitation of goods in the cited
registration is so restricted. It is well settled
that in a proceeding such as this, the question of
likelihood of confusion must be determined by an
analysis of the marks as applied to the goods
identified in the application vis-a-vis the goods
recited in the registration, rather than what
extrinsic evidence shows those goods to be.
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB
1986). See also Opus One, 60 USPQ2d at 1817 (“‘[W]ine’
must be presumed to encompass inexpensive or moderately-
priced wine”).
Inasmuch as applicant’s goods are simply identified as
“wines,” we must not read limitations into the
identification of goods. Applicant’s goods are considered
to include all types of wines sold through all normal
channels of trade. Obviously, purchasers of wine in
general are not necessarily sophisticated and this factor
does not indicate that confusion is unlikely. In addition,
“[o]ne can concede an enormous growth in recent years of
buyer sophistication in wine purchasing without conclusion
that this would obviate likelihood of confusion or
transform all buyers into discriminating purchasers immune
from source confusion.” In re Jakob Demmer KG, 219 USPQ
1199, 1201 (TTAB 1983). There is also no evidence that
wine and rum would not be impulse purchases as applicant
suggests. Accord Majestic Distilling, 65 USPQ2d at 1207
Ser. No. 78/074,052
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(“[M]alt liquor and tequila are both fairly inexpensive and
likely to be purchased on impulse”).
Finally, having considered the record in the case, we
find that the marks SIGLO and SIGLO DE ORO (stylized) are
similar and that the goods are related. When potential
customers who are familiar with SIGLO DE ORO rum would
encounter SIGLO wine, they are likely to believe that there
would be some relationship or association between the
sources of these products. Therefore, we conclude that
there is a likelihood of confusion. Even if we had any
doubts about whether there is a likelihood of confusion, it
has long been the law that we must resolve those doubts in
favor of the prior registrant and against the newcomer. In
re Pneumatiques, Caoutchouc Manufacture et Plastiques
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA
1973); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988)
Decision: The refusal to register is affirmed.