Miguel Torres, S. A.v.Norsan Foods, Inc.

Trademark Trial and Appeal Board

Jun 29, 1999

No. 91101850 (T.T.A.B. Jun. 29, 1999)

Hearing: Paper No. 18
September 17, 1998 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 29,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Miguel Torres, S.A.
v.
Norsan Foods, Inc.
_____
Opposition No. 101,850
to application Serial No. 74/673,148
filed on April 28, 1995
_____
Robert McMorrow of Sughrue, Mion, Zinn, Macpeak & Seas for
Miguel Torres, S.A.
James B. Middleton for Norsan Foods, Inc.
______
Before Cissel, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Miguel Torres, S.A. has opposed the application of
Norsan Foods, Inc. to register CASTA as a trademark for
tequila.1 The opposition is brought pursuant to Section
2(d) of the Trademark Act, with opposer alleging that it

1 Application Serial No. 74/673,148, filed April 28, 1995, based
on an asserted bona fide intent to use the mark in commerce.
Opposition No. 101,850
2
sells alcoholic beverages, primarily wines and brandies;
that in connection with the sale of its wines and other
products opposer has used the trademark DE CASTA; that it is
the owner of two registrations for DE CASTA for wine; and
that, if applicant were to use its applied-for mark on
tequila, it would be likely to cause confusion or mistake or
to deceive.
In its answer applicant admitted that its application
is based on an intent to use, and that it has made no use of
the mark in commerce. Applicant denied all other salient
allegations in the notice of opposition.
The record includes the pleadings; the file of the
opposed application; the testimony of opposer’s witness Luis
de Javier and applicant’s witnesses Bryan M. Haines and
Ricardo Espinosa. In addition, opposer has submitted, under
a notice of reliance, applicant’s responses to opposer’s
first set of requests for admission, and applicant has
submitted, under a notice of reliance, opposer’s responses
to applicant’s first set of interrogatories. Applicant also
submitted, with its notice of reliance, the affidavit of its
CFO. While such a document is not proper subject matter for
a notice of reliance, opposer specifically stated in its
brief that it has elected not to object to it. Accordingly,

Opposition No. 101,850
3
we deem the affidavit to have been stipulated into the
record.
Only opposer filed a brief; both parties were
represented at an oral hearing before this Board.
The evidence shows that opposer is a Spanish company
which produces wines and brandies. The business was started
in 1870. In 1977 opposer established a winery in Chile, and
in the early 1980’s established one in California. It now
produces wines in Spain, Chile and the United States.
Opposer uses its company name or house mark TORRES on all
the labels for its wines, as well as a specific product
mark.
Opposer uses DE CASTA as a product mark for a rose wine
which it produces in Spain. It has shipped DE CASTA wine to
the United States since 1970, with sales reaching a high of
4,286 cases in 1973, and averaging between 1000 and 2000
cases each year from 1976 to 1986, and dropping from that
point. Sales have been made throughout the United States.
The wine is imported into the United States by an importer,
and is then distributed by regional or local distributors.
Although opposer does not pay to advertise its products to
the public, it has received publicity through newspaper
articles. Opposer does provide promotional materials to the
distributors and wholesale customers of its products, such
as restaurants and wine bars.
Opposition No. 101,850
4
Although opposer now uses its DE CASTA mark solely on
rose wine in the United States, in the past it used the mark
on whiskey, brandy and gin sold in the United States, and
currently sells whisky and gin under the mark in Europe.
Although applicant’s application was based on an intent
to use the mark in commerce, the evidence shows that
applicant’s CASTA tequila was imported into the United
States beginning in 1996. "Tequila" is an officially
protected designation of origin, and cannot be used on any
product not made in Tequila, Mexico. Applicant’s tequila is
in the premium price category, and is sold in a hand-blown
glass bottle representative of Mexican art crafts.
Priority is not in issue in this proceeding, since
opposer has made of record status and title copies of its
pleaded registrations for DE CASTA for wine.2 King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Moreover, the record shows that
opposer has used the mark DE CASTA for wine since long prior
to the filing of applicant’s intent-to-use application on
April 28, 1995.
This brings us to the issue of likelihood of confusion.
In determining this issue, two key factors are the
similarity of the marks and the similarity of the goods.

2 Registration No. 1,097,673, issued July 25, 1978; Section 8
affidavit accepted; Section 15 affidavit received; renewed;
Opposition No. 101,850
5
Turning first to the marks, we find that they are
virtually identical in appearance, pronunciation and
commercial impression, CASTA being the dominant word in
opposer’s mark and applicant’s mark in its entirety. The
initial portion of opposer’s mark, DE, is a preposition
meaning "of." Those who understand Spanish would realize
that CASTA is the primary part of the mark, and because "de"
means "of" in many Romance languages, and because of the
manner in which it appears, even non-Spanish speakers will
regard it as secondary.
As for the connotation of the marks, the parties’
Spanish-speaking witnesses have provided somewhat different
translations. Mr. de Javier, the director of opposer’s
legal department, who is from Spain, testified that, in
effect, DE CASTA, as applied to a person, means one having a
good family background, and as applied to animals, means
that they come of good stock.3 He also testified that there

Registration No. 1,728,000, issued October 27, 1992; Section 8
affidavit accepted; Section 15 affidavit received.
3 It is obvious from Mr. de Javier’s testimony that English is
not his native language, so we have paraphrased his translation
of DE CASTA. His actual testimony was:
Well, it’s quite a typical Spanish expression. I must
say that it really should be good background or
something like this. In a family with several
generations, if a person is good and the parents and
the grandparents and so on has been in the same way,
so we say, well, he’s a person of De Casta, one with
faith, serious, this is what we say. And also if
we’re referring to animals, for instance, with a horse
that is a very good racer, it is because the parents
Opposition No. 101,850
6
is no difference in Spanish between De Casta and the word
Casta alone, because de is the preposition "of" and one
would never use the word Casta per se. Mr. Espinosa,
applicant’s witness, who was raised in Mexico, testified
that Casta means excellent qualities, and could apply to an
animal, plant or person. When asked to translate De Casta,
he said it would appear, even to Spanish-speaking people, to
be a surname.
We believe that Mr. de Javier’s translation is more
accurate, and that Spanish-speaking people, in fact, would
regard the two marks as having the same meaning. In this
connection, we note that the translation contained in
opposer’s registrations (which of course issued many years
prior to this litigation) states that "De Casta" refers to a
person or animal of good stock or breeding, and that
applicant originally stated, in its application, that "the
word CASTA can be translated into English as ’breed’ as of a
horse, cow etc."4 We also take judicial notice that a
Spanish-English/English-Spanish dictionary translates
"pedigree" as "de casta."5

of the horse were racers as well so we say this is a
horse of De Casta. P. 27.
4 When the application was published, it was determined to print
the translation as simply "breed."
5 Cassell’s Spanish-English English-Spanish Dictionary, © 1978.
The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Opposition No. 101,850
7
We also point out that, even if there are subtle
differences in meaning between DE CASTA and CASTA, to a non-
Spanish speaking person there would be no connotative
differences in the marks at all.
In view of the foregoing, we find that the marks are
substantially identical, and would convey the same
commerical impression. We also note that DE CASTA is an
arbitrary term for alcoholic beverages. Applicant has not
submitted any evidence of third-party use or registrations
of DE CASTA or other CASTA marks, such that we could
conclude that DE CASTA is entitled to only a limited scope
of protection.
With respect to the goods, we recognize that there are
clear differences between tequila and wine. They are
produced differently, one being a distilled beverage and the
other fermented; they smell and taste different; they are
different in color; and they are sold in differently-shaped
bottles. There is no question that a consumer would be able
to distinguish the two products, and would not mistake one
for the other. However, the test in determining likelihood
of confusion is not whether the products are
distinguishable, but whether they would be thought to come
from the same source. As it has often been stated, it is

Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Opposition No. 101,850
8
not necessary that the goods of the parties be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same person
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same producer. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, the evidence shows that a single company
may produce both wine and distilled beverages. Opposer
itself sells wine, whiskey, gin and brandy, and at one time
sold these products in the United States under the DE CASTA
mark. Further, a single distributor may sell both wine and
spirits (i.e., distilled beverages like tequila), and wine
and tequila are both sold in restaurants, bars, and liquor
stores. Although the testimony is that spirits like tequila
would not be in the same section of a liquor store as wine,
it appears to us that both wine and tequila could be
purchased by the same customer while in that store. See
Monarch Wine Co. v. Hood River Distillers, 196 USPQ 855, 857
(TTAB 1977).
Opposition No. 101,850
9
At the oral hearing applicant argued that the parties’
goods are priced differently, and would therefor appeal to
different classes of purchasers. However, it is well
established that in a proceeding such as this, the question
of likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or services
recited in applicant's application vis-à-vis the goods
and/or services recited in an opposer's registration, rather
than what the evidence shows the goods and/or services to
be. Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
NA, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Because
there are no limitations on the "wine" identified in
opposer's registrations and the "tequila" identified in
applicant's application, we must assume that they can be
sold at all price points for such goods. Applicant's
attorney acknowledged at the oral hearing that tequilas
range in price from very inexpensive to expensive. To the
extent that the parties' marks may be used on inexpensive
products, we must assume that the customers for such goods
may purchase them casually, and without a great deal of
thought or care.
We have also taken into consideration the fact that
term "tequila" may only be used for a product which
originates in Mexico, and that opposer's wine is produced in
Spain. However, we are not persuaded that consumers will
Opposition No. 101,850
10
scrutinize the labels of opposer’s product to ascertain that
fact, nor even if they did, that they would assume from this
that the goods emanate from different sources. Simply
because a company is located in one country does not mean
that they cannot have a business, subsidiary or licensee in
another country. Opposer itself, although a Spanish
company, has wineries in Chile and the United States.
Accordingly, after considering all the applicable
duPont factors,6 and particularly the substantial similarity
of the marks and the relatedness of the goods, we find that
applicant’s use of CASTA for tequila would be likely to
cause confusion with opposer’s use of DE CASTA for wine.
We also note that applicant, as a newcomer, has the
obligation to avoid confusion. Carl Karcher Enterprises
Inc. v. Stars Restaurant Corp., 35 USPQ2d 1125, 1133
(TTAB1995). Therefore, we follow the well-established
principle that any doubts on the issue of likelihood of
confusion must be resolved against applicant, as the
newcomer. See A. H. Robins Company, Inc. v. Evsco
Pharmaceutical Corp., 190 USPQ 340 (TTAB 1976).
Decision: The opposition is sustained.
R. F. Cissel
Opposition No. 101,850
11
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board

6 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).