Maestro Tequilero, S.A. de C.V.

Trademark Trial and Appeal Board

Nov 29, 2012

No. 77904774 (T.T.A.B. Nov. 29, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Maestro Tequilero, S.A. de C.V.
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Serial No. 77904774
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Lawrence E. Abelman and Erica R. Halstead for Maestro Tequilero, S.A. de C.V.

Heather D. Thompson, Trademark Examining Attorney, Law Office 109 (Dan
Vavonese, Managing Attorney).
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Before Mermelstein, Ritchie, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On January 4, 2010, Maestro Tequilero, S.A. de C.V., a Mexican corporation,
applied to register the mark ATELIER (in standard character form) on the Principal
Register for “alcoholic beverages” in Class 33 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). After the examining attorney found the
identification of goods to be indefinite, the applicant amended the goods to “tequila.”
The examining attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with
the mark in Registration No. 3020017. That mark is ATELIER WINERY (in
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standard character form), with WINERY disclaimed, for “wine” in Class 33.
Applicant timely appealed after the refusal was made final, and its request for
reconsideration was denied.
Analysis
Our determination under Section 2(d) is based on an analysis of all 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 similarities between the marks and the similarities
between the goods. 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.”). We discuss each of the du Pont factors as to
which applicant or the examining attorney submitted argument or evidence. To the
extent that any other du Pont factors for which no evidence or argument was
presented may nonetheless be applicable, we treat them as neutral.
A. Similarity of the Marks
We turn first 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. Du Pont, 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);
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In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks,
we are mindful that the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression so that
confusion as to the source of the goods offered under the respective marks is likely
to result. San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, our 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 re Nat’l 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 233, 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
Co. v. Gold Medal Candy Corp., 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 Nat’l Data
Corp., 224 USPQ at 751.
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Applicant’s mark is the single word ATELIER, which is also the first word in
the applied-for mark. Although neither the application nor the cited registration
includes a translation, other registrations and applications of record specify that the
English translation of the French word “atelier” is “workshop.” We view ATELIER
as arbitrary in association with either wine or tequila, heightening the similarity in
commercial impression made by the marks ATELIER and ATELIER WINERY and
therefore increasing the likelihood of confusion. For those consumers who know the
meaning of the French word “Atelier,” applicant’s and registrant’s marks will have
the same connotation, i.e., that both applicant’s and the registrant’s goods are hand-
crafted in an “atelier” or workshop. For consumers who do not know the meaning of
the word, they are likely to perceive the two marks as presenting the same overall
commercial impression, albeit without knowledge of the meaning of the distinctive
term shared by both applicant’s and the registrant’s mark. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
We also find that the word ATELIER is the dominant portion of the
registered mark ATELIER WINERY, for the following reasons.
First, ATELIER is the initial word in the registered mark. See Palm Bay
Imports, Inc., 73 USPQ2d at 1692 (finding “veuve” the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (noting that upon
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encountering the marks, consumers will first notice the identical lead word); Presto
Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that
“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
Second, the term WINERY is disclaimed from the prior registered mark and
is at least descriptive of the identified goods, while, as noted, the term ATELIER is
arbitrary for tequila and wine. It is well-settled that disclaimed, descriptive or
generic matter may have little or no significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224
USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
Applicant has submitted print-outs from the websites of several wine-
producing companies that contain “Wines” or “Winery” in their corporate names and
apparently make and sell wine only. Applicant argues that the term “winery” in the
registered mark ATELIER WINERY will alert consumers that the registrant’s
goods are wines, thereby in fact reducing a likelihood of confusion. “Consumers are
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not likely to believe that ‘tequila’ comes from the same source, namely, a winery.”
Applicant’s Brief, at 2.
This argument, however, improperly focuses on a side-by-side comparison of
the marks, rather than on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Winnebago Indus., Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975). The word WINERY in the registered
mark is at least highly descriptive of the registrant’s wine and therefore is unlikely
to be used by purchasers as a basis for distinguishing the source of the respective
goods. This difference is outweighed by the overall similarity which results from
the dominant presence in both marks of the identical, distinctive word ATELIER.
Thus, we find that applicant’s mark ATELIER is the dominant portion of the
registered mark. We also find that the two marks make similar commercial
impressions. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK
LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407
(CCPA 1967) (THE LILLY as a mark for women’s dresses is likely to be confused
with LILLI ANN for women’s apparel including dresses).
Applicant has argued that the term ATELIER is relatively weak and entitled
to only a narrow scope of protection because it is commonly used in connection with
alcoholic beverages, submitting as evidence two registrations and one abandoned
application. The two registrations are for ATELIER DE MAÎTRE ALBERT
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(Registration No. 3892808), translated as “Workshop of Master Albert,” for (among
other goods and services) “alcoholic beverages, except for beers, namely, whiskey,
distilled spirits, liqueurs, beverages, containing fruit, brandy; wines” in Class 33;
and L’ATELIER DE JOËL ROBUCHON (Registration No. 3409256) in design form:

for “alcoholic beverages other than beers, namely, alcoholic essences, alcoholic
extracts of spirituous liquors; wine; beverages containing alcohol, namely, alcoholic
coffee-based beverages, alcoholic punch” in Class 33, among other goods and
services.1
The registrations applicant has submitted are distinguishable in that, unlike
applicant’s mark ATELIER and the prior registration for ATELIER WINERY, they
combine other distinctive wording with ATELIER and formatives. Applicant’s mark
is much closer to the mark in the cited registration than the cited mark is to the
marks in these additional registrations. Moreover, “[t]he existence of [third-party]
registrations is not evidence of what happens in the market place or that consumers
are familiar with them nor should the existence on the register of confusingly
similar marks aid an applicant to register another likely to cause confusion,
mistake or to deceive.” AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,

1 We need not discuss the proffered abandoned application. An abandoned registration is
evidence of nothing more than that it was once filed, and an abandoned application is
surely no more probative. See Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ
46, 47 (CCPA 1973); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB
1987).
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177 USPQ 268, 269 (CCPA 1973); see also In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010).
The third-party registrations introduced by applicant are not evidence that
those marks have been used at all, let alone used so extensively that consumers
have become sufficiently conditioned by their usage that they can distinguish
between such marks on the basis of minor differences. The probative value of third-
party trademarks depends entirely on their usage. Palm Bay Imports, Inc., 73
USPQ2d at 1693. Where, as here, the record includes no evidence about the extent
of third-party uses, the probative value of this evidence is minimal. Han Beauty,
Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001);
see also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542,
1545 (Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may
not be given any weight.”).2
For all of the reasons discussed above, we find the marks to be quite similar
in commercial impression, and the similarities in sight, sound and connotation to
outweigh the differences. In our likelihood of confusion analysis, this finding (under
the first du Pont factor) supports a conclusion that confusion is likely.

2 We have given no consideration to the third-party registrations attached to applicant’s
brief, which address marks and goods not at issue here. As the examining attorney
correctly pointed out, this evidence was not timely submitted. 37 C.F.R. § 2.142(d); In re
Fitch IBCA Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans Cont’l Records, Inc.,
62 USPQ2d 1541, 1541 n.2 (TTAB 2002); TBMP §§ 1203.02(e), 1207.01. We hasten to add
that the evidence would not change our decision herein.
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B. Similarity of the Goods and Channels of Trade
We turn next to the similarity of the goods and their channels of trade, the
second and third du Pont factors, respectively. In determining the similarity or
dissimilarity of the goods, we note that the more similar the marks at issue, the less
similar the goods need to be for the Board to find a likelihood of confusion. In re
Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). The goods need not be
identical or even competitive in order to support a finding of likelihood of confusion.
Rather, it is enough that the goods are related in some manner or that some
circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which could give rise, because of the
marks used or intended to be used therewith, to a mistaken belief that they
originate from or are in some way associated with the same producer or that there
is an association between the producers of each of the parties’ goods. In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207
USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201
USPQ 851, 854 (TTAB 1978).
Because the application is unrestricted, we must presume that applicant’s
tequila will travel through all normal channels of trade and reach all classes of
purchasers which are usual for such goods. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990);
Nike, Inc. v. WNBA Enters., LLC, 85 USPQ2d 1187, 1195 (TTAB 2007).
Applicant argues that, although wine and tequila may be sold in the same
retail outlets, they are not competing products and that rather there are
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appreciable differences between the goods. Applicant submits: “They are produced
differently, one being a distilled beverage and one being fermented, they look, taste
and smell different, and they are generally contained in bottles of differing
aesthetics.” Applicant’s Brief, at 3. Applicant further argues that it “is simply not
within reason to believe that ATELIER tequila is manufactured by the same source
as ATELIER WINERY wines. As said before, wineries are not known for their
tequilas.” Id.
Based on the evidence regarding the similarity of the marks and the related
nature of the goods, we find that alcoholic beverage consumers who are familiar
with ATELIER WINERY wine, upon encountering ATELIER tequila, are likely to
assume that the winemaker also is marketing tequila, or that there is some
sponsorship relationship or affiliation between the producers of the respective
goods.
Although there is no per se rule that all alcoholic beverages are related, In re
White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009), the Federal
Circuit Court of Appeals and the Board repeatedly have found that different types
of alcoholic beverages are related goods for purposes of a Trademark Act Section
2(d) analysis. See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1947-48 (Fed. Cir. 2004) (holding JOSE GASPAR GOLD for tequila likely to be
confused with GASPAR’S ALE for beer and ale); In re Kysela Pere et Fils, Ltd., 98
USPQ2d 1261, 1265 (TTAB 2011) (finding beer related to wine); In re Majestic
Distilling Co., 65 USPQ2d at 1207 (holding RED BULL for tequila likely to be
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confused with RED BULL for malt liquor); In re Salierbrau Franz Sailer, 23
USPQ2d 1719, 1720 (TTAB 1992) (holding CHRISTOPHER COLUMBUS for beer
likely to be confused with CRISTOBAL COLON & design for sweet wine); Somerset
Distilling Inc. v. Speymalt Whisky Distribs. Ltd., 14 USPQ2d 1539, 1542 (TTAB
1989) (holding JAS. GORDON and design for scotch whiskey likely to be confused
with GORDON’S for distilled gin and vodka); Schieffelin & Co. v. Molson Cos.,
9 USPQ2d 2069, 2073 (TTAB 1989) (holding BRADOR for malt liquor, beer and ale
likely to be confused with BRAS D’OR for brandy); Bureau Nat’l Interprofessionel
Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610, 1617 (TTAB 1988) (holding
COLAGNAC for cola liqueur likely to be confused with certification mark COGNAC
for brandy); Rosenblum v. George Willsher & Co., 161 USPQ 492, 492-93 (TTAB
1969) (holding RED BULL for scotch whiskey likely to be confused with TORO
ROJO for rum).
The Board has specifically found wine and distilled spirits to be related
goods. Monarch Wine Co. v. Hood River Distillers, Inc., 196 USPQ 855, 857 (TTAB
1977) (finding distilled spirits related to wine and champagne); In re AGE Bodegas
Unidas, S.A., 192 USPQ 326, 326 (TTAB 1976) (finding wine related to whiskey).
Cf. In re Majestic Distilling Co., 65 USPQ2d at 1204 (finding malt liquor and tequila
to be related goods).
The Board and the Federal Circuit Court of Appeals also have repeatedly
found that different types of alcoholic beverages share identical trade channels and
classes of purchasers. See, e.g., In re Chatam Int’l Inc., 71 USPQ2d 1944 at 1948; In
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re Majestic Distilling Co., 65 USPQ2d at 1204; Monarch Wine Co., 196 USPQ at
857; In re AGE Bodegas Unidas, S.A., 192 USPQ at 326.
In this case, the examining attorney has submitted evidence, consisting of
Internet print-outs, that wine and tequila have complementary uses and may be
used together or otherwise purchased by the same purchasers in the same places for
the same purposes, as summarized below:
• Use of wine and tequila together: approximately ten recipes for cocktails,
margaritas, and sangria featuring both tequila and wine or champagne.
• Restaurants and bars offering wine and tequila pairings: references to three
restaurants and bars offering both wine and tequila menus or pairings with
food, as well as a food and wine festival sponsored by Tequila Herradura.
• Manufacture and distribution of wine and tequila: print-outs from Hoover’s
Company Records and from the websites of several producers, distributors,
and retailers of both wine and tequila.
• Third-party registrations for both tequila and wine, including the following: Registration Nos. 1803376 (BANDOLERO); 2488097 (COMPADRE); 2791187 (CHARBAY); 3083621 (CAVE ART); 3188831 (QI); 3209611 (MORGENSTER); 3261562 (BROCK SAVAGE); 3326272 (EL AMO); 3428626 (THE PROOF IS IN THE FRUIT); 3624987 (CABRITO & design); 3632066 (FRUITION).3

3 We also note applicant’s submission of a third-party registration for a mark including the
term ATELIER which is registered for distilled spirits and wine: ATELIER DE MAÎTRE
ALBERT (Registration No. 3892808), translated as “Workshop of Master Albert,” for
(among other goods and services) “alcoholic beverages, except for beers, namely, whiskey,
distilled spirits, liqueurs, beverages, containing fruit, brandy; wines” in Class 33.
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The first three types of evidence demonstrate on their face that wine and
tequila have complementary uses and travel in the same channels of trade. The
third-party registrations demonstrate that tequila and wine are goods of a kind that
may emanate from a single source under a single mark. See In re Davey Prods. Pty.
Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Although these registrations are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless have probative value to the extent that they serve to
suggest that the identified goods are products which are produced and/or marketed
by a single source under a single mark. See Venture Out Properties LLC v. Wynn
Resorts Holdings LLC, 81 USPQ2d 1887, 1893 (TTAB 2007); see also In re Kysela
Pere et Fils Ltd., 98 USPQ2d at 1264-65 (third-party registration evidence sufficient
to establish relatedness of alcoholic beverages).
In sum, we find the examining attorney has submitted persuasive evidence
establishing that wine and tequila move in the same channels of trade and are
sufficiently complementary or related that source confusion is likely. In our
likelihood of confusion analysis, these findings under the second and third du Pont
factors support a conclusion that confusion is likely.
Balancing the Factors
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors. We have carefully considered applicant’s arguments and evidence,
even if not specifically discussed herein, but have not found them persuasive. In
view of our findings that the marks make a similar commercial impression and that
the goods are related and move in the same or similar channels of trade, we find
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that applicant’s mark ATELIER for tequila is likely to cause confusion with the
registered mark ATELIER WINERY for wine.
To the extent that any of applicant’s points raises a doubt about likelihood of
confusion, that doubt is required to be resolved in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984).
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is affirmed.