Miguel Torres, S. A.v.Advantage Wine Group

Trademark Trial and Appeal Board

Nov 23, 1999

No. 91101101 (T.T.A.B. Nov. 23, 1999)

Hearing Date Paper No. 31
April 13, 1999 EWH/EM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 23,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Miguel Torres, S.A.
v.
Advantage Wine Group
_____
Opposition No. 101,101
to application Serial No. 74/600,257
filed on November 17, 1994
_____
Robert G. McMorrow of Sughrue, Mion, Zinn, McPeak & Seas for
Miguel Torres, S.A.
Thomas F. Smegal, Jr. of Knobbe, Martens, Olson & Bear,
L.L.P. for Advantage Wine Group.
______
Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Advantage Wine Group (applicant) seeks to register DONA
SOL in typed drawing form for wine. The application was
filed on November 17, 1994 with a claimed first use date of
December 23, 1993. At the request of the Examining
Attorney, applicant indicated that the English translation
of DONA SOL is “lady sun.”
Opposition No. 101,101
2
Miguel Torres, S.A. (opposer) filed a notice of
opposition alleging that prior to 1993 it both used and
registered the trademarks VIÑA SOL and GRAN VIÑA SOL for
wine. Opposer alleged that “the trademark of the opposed
application is confusingly and deceptively similar to
opposer’s previously used and registered trademarks as
applied to the products of the parties.” (Notice of
opposition paragraph 9). Finally, opposer alleged that
“registration of the mark of the opposed application is
barred by the provisions of Section 2(d) of the Trademark
Act of 1946.” (Notice of opposition paragraph 11).
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition. Applicant also set
forth three affirmative defenses. However, in its brief
applicant did not discuss these affirmative defenses.
Accordingly, we have given no consideration to them.
Both parties filed briefs and were present at a hearing
held on April 13, 1999.
The record in this case includes the depositions (with
exhibits) of Luis De Javier (the manager of opposer’s legal
department) and Gary A. Ramona (the owner of applicant).
Opposer properly made of record certified status and title
copies of its United States registrations for the three
marks depicted below (Registration Numbers 785,330;
1,349,893; and 1,358,372). The goods of each registration
Opposition No. 101,101
3
are wine. In Registration Numbers 1,349,893 and 1,358,372
registrant disclaimed the exclusive right to use VIÑA apart
from the mark as shown. In addition, registrant explained
that VIÑA SOL could be translated into English as “sun
vineyard” or “vineyard of the sun.” Registrant stated that
GRAN VIÑA SOL could be translated as “great sun vineyard.”
Opposition No. 101,101
4
Because opposer properly made of record the above
registrations, priority rests with opposer. King Candy Co.
v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). As the parties agree, the sole issue in this
proceeding is whether the contemporaneous use of applicant’s
mark and opposer’s marks on wine is likely to result in
confusion, mistake or deception. (Opposer’s brief page 4;
applicant’s brief page 3). Obviously, of all of opposer’s
three marks, opposer’s mark VIÑA SOL is most similar to
applicant’s mark DONA SOL. Indeed, on a number of occasions
in its brief, opposer focuses solely on a comparison of the
marks VIÑA SOL and DONA SOL. See opposer’s brief pages 7
and 8.
In our likelihood of confusion analysis, we have
considered all of the relevant DuPont factors. Because the
goods of the parties (wine) are legally identical, a number
of DuPont factors favor opposer. Obviously, with identical
goods, there will be identical channels of trade and
identical types of purchasers. Moreover, because the
registrations and application list simply “wine” and not
“expensive wine,” we find that these common purchasers would
exercise just an ordinary degree of care in making their
purchases.
However, there is one DuPont factor which clearly
favors applicant and which causes us to find that there is
Opposition No. 101,101
5
no likelihood of confusion. Put quite simply, we believe
that opposer’s mark VIÑA SOL and opposer’s other marks are
so dissimilar from applicant’s mark DONA SOL that there is
no likelihood of confusion. Our primary reviewing Court has
made it clear that in appropriate cases, one DuPont factor
can outweigh all of the other factors. Kellogg Co. v.
Pack’em Enterprises, 951 F.2d 330, 21 USPQ2d 1142, 1144
(Fed. Cir. 1991). This is “especially [true] when that
single factor is the dissimilarity of the marks.”
Champagne Louis Roederer v. Delicato Vineyards, 148 F.3d
1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998). In Champagne
Louis, the Court affirmed a decision of this Board in which
it was found that the contemporaneous use by applicant of
CRYSTAL CREEK for wine and by opposer of CRISTAL and CRISTAL
CHAMPAGNE for wine would not result in a likelihood of
confusion.
In the present case, while both VIÑA SOL and DONA SOL
consist of two words with the second word being identical,
the first words are so different in terms of appearance,
pronunciation and connotation such that their
contemporaneous use on identical goods (wine) is simply not
likely to result in confusion. In terms of visual
appearance and pronunciation, the differences between VIÑA
and DONA are quite obvious. In terms of connotation,
opposer’s own legal director testified that VIÑA SOL means
Opposition No. 101,101
6
“sun vineyard” and that DONA SOL means “Madam Sol.” (Javier
deposition page 54). Indeed, Mr. Javier even went on to
state that as applied to wine, “Vina is generic.” (Javier
deposition page 130). Moreover, in its brief, opposer
stated that DONA SOL meant “lady sun” whereas VIÑA SOL meant
“sun vineyard.” (Opposer’s brief page 8). However, opposer
argued that “the average U.S. consumer cannot be expected to
have such information” as to the foregoing meanings.
(Opposer’s brief page 8).
We simply disagree. The word “vino” – which is very
similar to the VIÑA portion of opposer’s marks – appears in
ordinary, unabridged American dictionaries and it is defined
as meaning “wine.” Webster’s New World Dictionary (2d ed.
1970). While some United States consumers may not
understand the meaning of VIÑA in the abstract, we believe
that most United States consumers would recognize VIÑA as
meaning “wine” when said term is used in conjunction with
wine. Indeed, at the oral hearing, counsel for opposer
conceded this very point. Moreover, while some United
States consumers may not understand DONA as referring to a
lady in general, we believe that many of these consumers
would, at a minimum, perceive DONA as a shortened form of
the female name Donna. Thus, in terms of meaning or
connotation, the marks VIÑA SOL and DONA SOL are quite
different.
Opposition No. 101,101
7
There are other factors which also favor a finding of
no likelihood of confusion. First, opposer has never
contended that any of its marks are famous and thus are
entitled to a greater scope of protection. See Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350,
222 USPQ2d 1453, 1456 (Fed. Cir. 1992). Indeed, opposer’s
United States sales of wine under the marks VIÑA SOL and
GRAN VIÑA SOL are quite minimal. In 1996, opposer’s United
States sales of all products bearing either of these two
marks came to less than 6,000 cases. (Javier deposition
pages 59-60). Moreover, opposer acknowledged that “we don’t
spend much money in advertising or publishing in newspapers
or media, like radio or television because we don’t believe
in this system.” (Javier deposition page 15). Indeed, Mr.
Javier was unable to state how much opposer had spent in
advertising its VIÑA SOL and GRAND VIÑA SOL wines. (Javier
deposition page 73). While it is true that over the years
opposer’s wines under these two marks have received mention
in some industry publications and publications of interest
to wine drinkers, these mentions have been rather sporadic.
Another factor favoring applicant is that there is no
suggestion whatsoever that applicant adopted its mark DONA
SOL in bad faith. In this regard, opposer’s witness Mr.
Javier testified that the trade dress for applicant’s
Opposition No. 101,101
8
product and opposer’s products was quite different. (Javier
deposition pages 163-164).
As for the remaining DuPont factors, we find them to be
either neutral or slightly in favor of applicant. Despite
four years of contemporaneous use, neither applicant’s
witness nor opposer’s witness was aware of any instances of
actual confusion involving their respective products.
However, given opposer’s very limited sales in recent years
of VIÑA SOL and GRAND VIÑA SOL products, we have considered
this absence of actual confusion to be a neutral factor.
As for the use of the word SOL in other wine
trademarks, while applicant’s witness Mr. Ramona testified
there were approximately five or six other companies which
marketed wines under marks containing the word SOL, we have
accorded this factor limited weight simply because Mr.
Ramona was unable to state the extent of sales of other
wines marketed under trademarks having the term SOL as a
component.
In summary, given the significant differences in the
marks; the fact that none of opposer’s marks is even
remotely famous (and opposer does not contend otherwise);
and the fact that applicant adopted its mark in complete
good faith as witnessed by the significant differences in
the trade dresses of applicant’s product and opposer’s
Opposition No. 101,101
9
products, we find that there exists no likelihood of
confusion, mistake or deception.
Decision: The opposition is dismissed.
E. W. Hanak
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board