Industria de Licores Del Valle de Caucav.Guillermo UribeDownload PDFTrademark Trial and Appeal BoardJul 21, 2010No. 91150615 (T.T.A.B. Jul. 21, 2010) Copy Citation Mailed: July 21, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Industria de Licores Del Valle de Cauca v. Guillermo Uribe _____ Opposition No. 91150615 to Application Serial No. 78015297 filed on July 3, 2000 _____ Ari Rafilson of Sidley Austin, LLP for Industria de Licores Del Valle De Cauca. Guillermo Uribe pro se. _____ Before Walters, Zervas and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Guillermo Uribe (“applicant”) filed an intent-to-use application for the mark AGUARDIENTE DEL VALLE and design, shown below, for “distilled spirits, namely aguardiente,” in Class 33.1 Applicant disclaimed the exclusive right to use the word “Aguardiente” and provided an English translation of the term “Del Valle” as meaning “of the valley.” 1 Aguardiente is “a liquor, popular in South and Central America, made from sugar cane.” The Random House Dictionary of the English Language (Unabridged) p. 41 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. 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). THIS OPINION IS NOT CITABLE AS A PRECEDENT OF THE T.T.A.B. Opposition No. 91150615 2 Industrial de Licores Del Valle del Cauca (“opposer”) opposed the registration of applicant’s mark on the following grounds:2 1. Priority of use and likelihood of confusion; 2. Pursuant to Article 7 of the Pan American Convention registration should be refused because applicant knew of the prior existence and continuous use of opposer’s previously registered AGUARDIENTE DEL VALLE marks in Columbia; and 3. Pursuant to Article 6 of the Paris Convention registration should be refused because applicant, as an agent or representative of opposer, improperly applied to register the mark at issue in his own name. With respect to its priority and likelihood of confusion claim, opposer alleged that it has used the marks AGUARDIENTE DEL VALLE, AGUARDIENTE DEL VALLE BLANCO, and ARUGUARDIENTE BLANCO DEL VALLE to identify aguardiente and that it has used its trade name since prior to the filing 2 In the amended notice of opposition, opposer also alleged a dilution claim. However, opposer presented no argument in its brief on such claim, and we give it no further consideration. Opposition No. 91150615 3 date of the application at issue and that applicant’s mark AGUARDIENTE DEL VALLE AND DESIGN for aguardiente so resembles opposer’s previously used marks to be likely to cause confusion. In its answer, applicant denied the salient allegations in the amended notice of opposition. As an affirmative defense, applicant asserted, in essence, that the opposition should be dismissed because of opposer’s fraudulent conduct, unclean hands, and abandonment of its mark. Applicant did not state with particularity the circumstances constituting fraud in its affirmative defenses. See Fed. R. Civ. P. 9(b). Preliminary Issues Opposer filed a motion to strike the Spanish language documents in applicant’s notices of reliance that did not have an English translation. Applicant did not file a brief in opposition to opposer’s motion. “When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded.” Trademark Rule 2.120(a). Accordingly, we treat opposer’s motion as conceded. Moreover, opposer’s motion to strike is well taken because foreign language documents that are not accompanied by an English translation are essentially incomprehensible. See Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (sustaining objections to foreign language documents submitted via notice reliance as being Opposition No. 91150615 4 unintelligible); see also Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005) (foreign language documents without a translation have limited or no probative value because the Board does not understand them). Also, opposer filed a motion to strike applicant’s fourth notice of reliance comprising two exhibits: a decision rendered in a Columbian criminal proceeding and an affidavit of applicant’s witness Miguel Uribe Romero. Applicant failed to file a brief in opposition to opposer’s motion and we, therefore, treat opposer’s motion as conceded and sustain opposer’s objection to the admissibility of the documents in applicant’s fourth notice of opposition. Trademark Rule 2.120(a). Furthermore, we note that opposer’s objection to the evidence is well taken for the reasons articulated in opposer’s motion to strike.3 3 In an Order dated August 12, 2009, the Board denied applicant’s motion to extend trial dates to permit applicant to introduce testimony from the above-noted Columbian criminal proceeding. Applicant is essentially trying to introduce that evidence by introducing the final decision from that criminal proceeding. Section 17 of the Trademark Act of 1946, 15 U.S.C. §1067, gives this Board the authority and duty “to determine and decide the respective rights of registration.” In determining the rights to registration, each case must be decided on its own merits based on the evidence of record. We are obviously not privy to the entire record before the court in Colombia and, in any event, we must make our own decision and we are not bound by the findings of another court based on facts not before us and upon laws which may not be applicable to our determination. Thus, we expressly reject applicant’s argument that the decision of the Colombian court is relevant. (Applicant’s Brief, p. 19). With respect to applicant’s attempt to introduce the declaration of Miguel Uribe, opposer expressly refused to stipulate to the introduction of testimony by declaration. See Trademark Rule 2.123(b). Opposition No. 91150615 5 With respect to the remaining evidence proffered by applicant, opposer has lodged numerous objections. None of the other evidence sought to be excluded is outcome determinative. Given this fact, coupled with the number of objections, we see no compelling reason to discuss the specific objections. Suffice it to say, we have considered all of the testimony and exhibits submitted and not otherwise excluded herein by both parties. In doing so, we have kept in mind the various objections raised by the parties, we have accorded whatever probative value the subject testimony and evidence merit. The Record By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes the pleadings and the application file for applicant’s mark. The record also includes the following testimony and evidence: A. Opposer’s Evidence. 1. Opposer’s first notice of reliance on printed publications, applicant’s responses to written discovery, and copies of official records from Colombia, including opposer’s Colombian trademark registrations for, inter alia, AGUARDIENTE DEL VALLE AMARILLO, BLANCO DEL VALLE, AGUARDIENTE DEL VALLE BLANCO, AGUARDIENTE BLANCO DEL VALLE, and AGUARDIENTE DEL VALLE BLANCO EXTRAFINO. Opposition No. 91150615 6 2. Opposer’s second notice of reliance on applicant’s responses to opposer’s written discovery. 3. Testimony deposition of Doney Ospina, opposer’s General Manager, with attached exhibits; and 4. Testimony deposition of Maria Victoria Cruz, opposer’s Deputy Manager of Administration and Finance, with attached exhibits. B. Applicant’s Evidence. Applicant filed three notices of reliance on various documents. Standing Opposer sells aguardiente identified as AGUARDIENTE BLANCO DEL VALLE in commerce with the United States.4 Furthermore, opposer is the owner of a pending trademark application Serial No. 76109898 for the mark AGUARDIENTE BLANCO DEL VALLE, in standard character form, for “distilled liquor, wine, and distilled spirits of sugar cane,” in Class 33.5 Applicant’s application was cited as a potential bar to the registration of opposer’s mark. In previous cases, the Board has found standing where the defendant’s application or registration had been cited as a bar to the plaintiff’s application. “The filing of opposer’s 4 Applicant’s notice of reliance (Opposer’s response to applicant’s interrogatory Nos. 1, 3 and 19(a)); Cruz Dep., p. 251; Ospina Dep., p. 25. 5 Applicant’s notice of reliance. Opposition No. 91150615 7 application and the Office’s action taken in regard to that application provides opposer with a basis for pleading its standing.” Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010) (“the Office made a provisional refusal of opposer’s application based on prior pending applications), citing Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (standing found because the opposed application was cited as a potential bar to opposer’s registration); see also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). In view of the foregoing, we find that opposer has shown that it has a reasonable belief of damage and a real interest in this proceeding. Therefore opposer is not a mere intermeddler, and it has established its standing. Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ at 189. Priority In order for opposer to prevail on its Section 2(d) claim, it must prove that it has a proprietary interest in the mark AGUADIENTE BLANCO DEL VALLE and that it obtained that interest prior to the earliest date of use that applicant can claim.6 Herbko International Inc. v. Kappa 6 With respect to its proprietary interest, opposer must establish that its mark is distinctive – inherently or otherwise. However, since applicant did not raise any issue regarding the Opposition No. 91150615 8 Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993). For purposes of determining priority of use, because applicant did not submit evidence of earlier use, applicant’s date of first use is July 3, 2000, the filing date and therefore the constructive use date of its intent-to-use application. Opposer first used the mark AGUARDIENTE BLANCO DEL VALLE in commerce with the United States on November 14, 1979. Opposer authorized the sale of 7200 bottles of AGUARDIENTE BLANCO DEL VALLE to Compania de Comercio Exterior Ltda for sale in the United States. The products were shipped to New York and sold in New Jersey, Connecticut, Maine, Delaware, Maryland, Virginia, Florida, Texas, Mississippi, California, Rhode Island, Georgia, Alabama, North Carolina, South Carolina and the District of Columbia.7 In his brief, applicant conflates its defense to opposer’s claim of priority with his affirmative defenses of fraud, unclean hands, and abandonment. With respect to priority of use, applicant makes the following argument: distinctiveness of opposer’s mark, we consider the mark to be inherently distinctive. 7 Applicant’s notice of reliance (opposer’s response to applicant’s interrogatory No. 1); see also Cruz Dep., pp. 14 and 251 and Exhibits 7, 8, 10, 12, 32-36, 47, 53 and 80. Opposition No. 91150615 9 1. OPPOSER IS NOT SENIOR USER OF THE SO CALLED AGUARDIENTE DEL VALLE MARKS. The use of most of the trademarks was abandoned by Opposer who shifts to the AGUARDIENTE BLANCO trademarks, as it is well established by the research done on the Alcohol, Tobacco and Tax Relief Trade Bureau. (Emphasis in the original).8 As best we understand applicant’s position, he does not challenge opposer’s claim that opposer first used the mark AGUARDIENTE BLANCO DEL VALLE in commerce with the United States as early as 1979. It is applicant’s position that opposer has abandoned that mark in commerce with the United States. In view of the foregoing, we find that opposer has proven its prior use, and we analyze applicant’s affirmative defenses below. 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the 8 Applicant’s Brief, pp. 53-54. Opposition No. 91150615 10 similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”). A. The similarity or dissimilarity and nature of opposer’s goods and the goods described in the application. Applicant is seeking to register its mark for aguardiente and opposer uses its mark to identify the same product.9 B. The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers. Opposer targets the sales of its aguardiente to the Latin population in the United States, especially Colombians. Q. What is the market population in the United States to whom this product - - to whom Aguardiente Blanco del Valle is marketed? A. To the population which are trying to capture which the - - Aguardiente Blanco del Valle is the colony - - is the Latin population, especially the Colombians which reside outside of Colombia. And in that sense, we’re aiming - - we search the regions where there is a large number of Latinos and Colombians.10 9 Ospina Dep., pp. 10 and 27; Cruz Dep., p. 143; Opposer’s notice of reliance, Exhibit 3. 10 Ospina Dep., pp. 25-26. Opposition No. 91150615 11 With respect to applicant’s aguardiente, because there are no restrictions as to channels of trade or classes of consumers in applicant’s description of goods, we must assume that applicant’s aguardiente will be sold in all of the normal channels of trade to all of the normal purchasers for such goods, including Latinos and Colombians. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). Moreover, because the goods identified in the application and identified by opposer’s mark are identical, we presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); 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”). Opposition No. 91150615 12 C. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful that where, as here, the goods are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In Opposition No. 91150615 13 re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. There are a number of cases that reflect the principle that if a mark comprises both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. See In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). In this case, we find that the word portions of the marks are the dominant elements of the marks because the consumers would use them to call for the products. In addition, the design portion of applicant’s Opposition No. 91150615 14 mark is not so distinctive as to attract the consumers’ attention to form a separate and distinct commercial impression. The word portions of the marks AGUARDIENTE DEL VALLE and AGUARDIENTE BLANCO DEL VALLE are substantially similar. The only difference is opposer’s addition of the word “blanco” which is Spanish for “white.”11 An English speaker who knows some Spanish may believe that Aguardiente Blanco is a white aguardiente, and, therefore, will perceive the term aguardiente blanco as identifying a type of aguardiente.12 However, Ms. Cruz testified, without any evidence to corroborate her testimony, that consumers use the word “blanco” as a “diminutive of the brand name and is how the people that uses Pepsi in place of Pepsi-Cola or Coke instead of Coca-Cola.”13 Whatever, the significance of the word “blanco,” the term “Del Valle” is the most significant source identifying feature of the marks and, therefore, consumers may mistakenly believe that AGUARDIENTE BLANCO DEL VALLE is a variation of AGUARDIENTE DEL VALLE. Accordingly, we find that the marks have similar meanings and engender similar commercial impressions because 11 Applicant’s notice of reliance, Exhibit 4 (Opposer’s application); Cruz Dep., p. 268. 12 There is no testimony or evidence in the record regarding aguardiente (e.g., how it is made, its taste, or its color, etc.). In the photographs of the product that are in evidence, aguardient is a clear liquid. 13 Cruz Dep., p. 267. Opposition No. 91150615 15 applicant’s mark means “aguardiente of the valley”14 and opposer’s mark means “white aguardiente of the valley.”15 Even when we consider the design elements, we find the marks are similar.16 We note that applicant argued that the color schemes used by applicant and opposer are different, however, because applicant did not claim color as a feature of its mark, applicant’s mark is broad enough to include opposer’s colors.17 D. Balancing the factors. Because the marks are similar and the goods, channels of trade and classes of consumers are identical, we find that applicant’s mark AGUARDIENTE DEL VALLE and design for aguardiente so resembles opposer’s previously used mark AGUARDIENTE BLANCO DEL VALLE for aguardiente as to be likely to cause confusion. 14 Applicant’s application. 15 Applicant’s notice of reliance, Exhibit 4 (Opposer’s application); Ospina Dep., p. 6. 16 Cruz Dep., Exhibit 39 is a photograph of a bottle displaying opposer’s label with the mark AGUARDIENTE BLANCO DEL VALLE in a rectangular background. Ms. Cruz testified that the label is currently in use. (Cruz Dep., pp. 67 and 112-113). We could not reproduce a legible copy to include in the decision. 17 Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the colors and where they appeared on the mark. Alternatively, the applicant could use a color lining system that previously appeared in Trademark Rule 2.52 but was deleted from the rule effective October 30, 1999. See TMEP §807.07(g) (6th ed. rev. 2 2010) Opposition No. 91150615 16 Affirmative Defenses As best we understand applicant’s affirmative defenses, applicant alleges that opposer is not making lawful use of the mark in commerce because it has not complied with the rules and regulations for labeling alcohol and that opposer has abandoned the mark AGUARDIENTE BLANCO DEL VALLE. A. Labeling requirements. Determining whether the use of a mark is lawful under one or more of the myriad of regulatory acts involves two questions: (1) whether a court or government agency having competent jurisdiction under the statute involved has previously determined that party is not in compliance with the relevant statute; or (2) whether there is a per se violation of a statute regulating the sale of a party’s goods. General Mills Inc. v. Healthy Valley Foods, 24 USPQ2d 1270, 1273 (TTAB 1992). In this case, there has been no final determination of noncompliance by a court or agency regarding opposer’s labels. Rather, applicant has attempted to show that opposer’s shipments of aguardiente were per se violations of labeling regulations promulgated by the federal Alcohol and Tobacco Tax and Trade Bureau.18 [I]t is incumbent upon the party charging that the use was unlawful to demonstrate by clear and convincing evidence more than that the use in question was not in compliance with applicable law. Such party must prove 18 Applicant’s Brief, pp. 30-33. Opposition No. 91150615 17 also that the non-compliance was material, that is, was of such gravity and significance that the usage must be considered unlawful – so tainted that, as a matter of law, it could create no trademark rights -- warranting cancellation of the registration of the mark involved. General Mills Inc. v. Healthy Valley Foods, 24 USPQ2d at 1274. Furthermore, “there must be some nexus between the use of the mark and the alleged violation before the unlawfulness of a shipment can be said to result in the invalidity of a registration.” Id. citing Satinine Societa v. P.A.B. Produits, 209 USPQ 958, 967 (TTAB 1981). Despite applicant’s vigorous argument, we find that applicant failed to show that there was a per se violation of any law or regulation regarding the labeling of opposer’s AGUARDIENTE BLANCO DEL VALLE aguardiente. Applicant introduced documents showing that opposer’s distributors sought approval for labels for, inter alia, AGUARDIENTE BLANCO and for AGUARDIENTE BLANCO DEL VALLE CAUCA,19 and asks us to infer that opposer did not seek approval or properly label other brands such as AGUARDIENTE BLANCO DEL VALLE. There is simply no basis for us to find that opposer or its distributors did not properly seek federal approval of opposer’s labels for AGUARDIENTE BLANCO DEL VALLE and that those labels were not in compliance with the 19 Applicant’s Motion for the Taking of Judicial Notice, Exhibit A. Opposition No. 91150615 18 appropriate regulations. Applicant did not proffer any testimony regarding the label applications and simply because applicant did not introduce the label application(s) for AGUARDIENTE BLANCO DEL VALLE does not mean that opposer or its distributors did not apply for approval. In view of the foregoing, applicant did not prove that opposer’s use its mark is unlawful. B. Abandonment. In determining whether opposer has abandoned its mark, Section 45 of the Trademark Act of 1946, 15 U.S.C. §1127, provides that a mark is abandoned “[w]hen its use has been discontinued with intent not to resume such use.” Applicant has the burden of proving abandonment by a preponderance of the evidence. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998). Opposer introduced testimony and evidence that it has been continuously using the mark AGUARDIENTE BLANCO DEL VALLE since 1979.20 In support of its abandonment defense, applicant submitted evidence showing that opposer used the mark AGUARDIENTE BLANCO. Applicant did not submit any evidence that proved that opposer ceased using AGUARDIENTE BLANCO DEL VALLE. There is nothing that prohibits a party from using different marks for the same product. Different 20 Applicant’s notice of reliance (opposer’s responses to interrogatory Nos. 3 and 19A); Ospina Dep., pp. 24-25; Cruz Dep., Exhibits 27, 29, 30, 39, 40, 55, 56 and 62-65. Opposition No. 91150615 19 marks, such as AGUARDIENTE BLANCO and AGUARDIENTE BLANCO DEL VALLE, may signify different variations of the same product (e.g., different levels of quality). Applicant’s contends that the testimony of opposer’s witnesses regarding opposer’s use of AGUARDIENTE BLANCO DEL VALLE is entitled to little probative value because the testimony is part of a pattern of perjury and fraud. However, we find that there is no basis in this record for that conclusion. In view of the foregoing, we find that opposer has made continuous use of its mark AGUARDIENTE BLANCO DEL VALLE and has not abandoned it. In view of our finding that opposer has priority of use of its mark AGUARDIENTE BLANCO DEL VALLE and that there is a likelihood of confusion, we need not address opposer’s claim of likelihood of confusion with opposer’s trade name, nor do we determine opposer’s cause of action under the Pan American Convention or the Paris Convention. Decision: The opposition is sustained and registration to applicant is refused. Copy with citationCopy as parenthetical citation