Miguel Torres S.A.v.Casa Vinicola Gerardo Cesari S.R.L.

Trademark Trial and Appeal Board

Dec 15, 1998

No. 91099024 (T.T.A.B. Dec. 15, 1998)

Hearing: Paper No. 20
January 22, 1998 PTH
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB DEC. 15, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Miguel Torres S.A.
v.
Casa Vinicola Gerardo Cesari S.R.L.
_____
Opposition No. 99,024
to application Serial No. 74/312,015
filed on September 8, 1992
_____
Robert G. McMorrow of Sughrue, Mion, Zinn, MacPeak & Seas
for Miguel Torres S.A.
Fernanda M. Fiordalisi and Joseph Orlando of Bucknam &
Archer for Casa Vinicola Gerardo Cesari S.R.L.
______
Before Simms, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Casa Vinicola Gerardo
Cesari S.R.L. to register the mark set forth below for
wines.1

1 Application Serial No. 74/312,015, filed September 8, 1992,
alleging dates of first use and first use in commerce of June
1990. The application states that “[t]he English translation of
“DUE TORRI” is “TWO TOWERS.”
Opposition No. 99,024
2
Registration has been opposed by Miguel Torres S.A.
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with wines, so
resembles opposer’s previously used and registered marks set
forth below, as to be likely to cause confusion: TORRES for
wines and brandy;2
for brandy and wine;3 and
for brandy.4

2 Registration No. 897,048 issued August 18, 1970; renewed. The
registration states that “ ‘Torres is a Spanish word for
‘towers’.”
3 Registration No. 1,413,565 issued October 14, 1986; Sections 8
& 15 affidavit filed. The registration indicates that the lining
and/or stippling shown in the mark is for shading purposes, with
Opposition No. 99,024
3
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; trial testimony, with related exhibits,
taken by both parties; and status and title copies of
opposer’s pleaded registrations submitted under notice of
reliance. Both parties filed briefs on the case and both
were represented by counsel at an oral hearing held before
the Board.
Opposer took the testimony of Gregory Christoff, vice-
president of marketing for Paterno Imports. Paterno Imports
is the exclusive U.S. importer of opposer’s wines and a
national marketer of premium wines. According to Mr.
Christoff, the sale of foreign produced wines in the United
States involves a three-tiered distribution system: an
importer or supplier, such as Paterno Imports, in the case
of opposer; a regional distributor for a given geographic
area; and a retailer such as a store or restaurant, which
sells the wine to the ultimate consumer. According to Mr.
Christoff, wines are displayed at retail according to
whether they are domestic or import, and within the import
section by country of origin or by variety. Mr. Christoff

no claim being made as to color, and that the word “TORRES,” when
translated into English, means “TOWERS.”
4 Registration No. 1,459,458 issued September 29, 1987; Sections
8 & 15 affidavit filed. The registration contains the following
Opposition No. 99,024
4
testified that opposer is known in the wine trade as “the
leading quality company from Spain.” (Dep., p. 11). Mr.
Christoff identified two newspaper articles and three
articles from trade publications which discuss opposer and
its wines. According to Mr. Christoff, his company often
uses reprints of these articles in marketing opposer’s
wines.
Applicant took the testimony of Gianfranco Carbone, a
regional manager with the Opici Wine Group. Opici Imports,
a subsidiary, imports applicant’s DUE TORRI wines and
distributes them in New York, Connecticut, Florida and New
Jersey. According to Mr. Carbone, Opici Imports introduced
applicant’s wines into the United States market in 1989 or
1990. Applicant’s wines, which fall into the moderately
priced category, are sold through retail stores and
restaurants. Mr. Carbone testified that in 1996 Opici
Imports sold or distributed over 50,000 cases of DUE TORRI
wines.
As indicated above, opposer has made of record status
and title copies of its three pleaded registrations. Thus,
there is no issue with respect to opposer’s priority. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).

statement: The English translation of the foreign words in the
mark on the drawing is “Three Towers.”
Opposition No. 99,024
5
This brings us to the issue of likelihood of
confusion.5 Turning first to the goods, applicant’s wines
are identical in part or otherwise closely related to
opposer’s wine and brandy. Although applicant argues that
its wines are of Italian origin, while opposer’s wines and
brandy are of Spanish origin, the identifications of goods
in the involved application and registrations contain no
such limitations and must accordingly be considered to
encompass wines and brandy of all types and geographic
origin. Thus, if wines, on the one hand, and wines and
brandy, on the other, were to be sold under the same or

5 We should note that in an ex parte appeal, the Board held that
the visual and phonetic differences in the marks TORRES and
TORRES and design on the one hand and DUE TORRI and design, on
the other, when considered in their entireties, were sufficient
to render the marks distinguishable and thereby avoid a
likelihood of confusion. However, that decision is not
determinative of the outcome herein inasmuch as the record in
this opposition is different from the record in the ex parte
appeal. Here, the owner of the cited registrations, opposer, has
come forward with evidence which of course was not of record in
the ex parte appeal.
Opposition No. 99,024
6
substantially similar marks, confusion as to source or
sponsorship would be likely to occur.
Turning then to a consideration of the marks, we begin
our analysis of whether confusion is likely by keeping in
mind the principle that “when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
In this case, we find that applicant’s mark DUE TORRI
and design is sufficiently similar to opposer’s marks
TORRES, TORRES and design, and TRES TORRES in sound and
connotation as to be likely to cause confusion when the
marks are used in connection with identical and closely
related goods. With regard to sound, we believe that these
marks may be pronounced in very similar manners. We note in
this regard that Italian and Spanish are both Romance
languages with similar roots. Here, not only do the marks
share the sound of the prefix “TOR” (in the words TORRES and
TORRI), but the ending suffixes “-RI” and “-RES” may be
pronounced in like manners. Also, the marks have very
similar connotations. Applicant’s mark, when translated,
means “two towers,” and registrant’s marks, when translated,
mean “towers” and “three towers.”
Opposition No. 99,024
7
We recognize that this Board, on at least one occasion,
has declined to apply the doctrine of foreign equivalents
where the respective marks consisted of terms from different
foreign languages. See Safeway Stores Inc. v. Bel Canto
Fancy Foods Ltd., 5 USPQ2d 1980, 1982 (TTAB 1987). However,
this case does not lay down a proposition of law that bars
the application of this doctrine in all cases involving two
foreign languages.6 As always, each case must be determined
on its own merits. We recognize that only a relatively few
potential customers in the United States may be fluent in
the two languages here (Spanish and Italian). However, in
this case, we do not believe that purchasers and prospective
purchasers need be fluent in Spanish and Italian to readily
understand the connotations of these marks. That is to say,
someone fluent in Spanish and aware of opposer’s marks
TORRES, TORRES and design, and TRES TORRES, who then
encounters the Italian words DUE TORRI on wine may well
understand the meaning (especially in light of the
accompanying design) without being especially fluent in or
knowledgeable of the Italian language. In this regard, we
note that the Spanish translation of applicant’s mark is DOS
TORRES, not terribly dissimilar from the Italian DUE TORRI.
Also, applicant’s mark includes in smaller lettering

6 We note that the opposer in Safeway Stores never argued that
the marks involved therein had similar connotations.
Opposition No. 99,024
8
“2 TORRI,” which aids in the translation. Thus, a consumer
familiar with opposer’s wine and brandy, offered under marks
which connote towers and three towers, would be likely to
believe, upon encountering applicant’s wine, offered under a
similar sounding mark which connotes two towers, that the
goods originate from or are sponsored by the same source.
Cf. In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed.
Cir. 1983).
Another factor which is indicative of a likelihood of
confusion in this case is the strength of opposer’s marks.
Opposer’s witness, Mr. Christoff, testified that opposer is
known as the leading quality wine company from Spain. We
note in this regard that applicant’s counsel, at the oral
hearing, conceded that opposer’s marks are well known.
Consequently, opposer’s TORRES marks are entitled to a
relatively broad scope of protection.7
The lack of evidence of any known instances of actual
confusion does not cause us to reach a contrary result. It
must be remembered that evidence of actual confusion is hard
to come by and that the test under Section 2(d) of the Act
is not actual confusion but likelihood of confusion.
Finally, to the extent that we have any doubt in this
proceeding, we must resolve it in favor of the registrant,
the prior user, and against the applicant. Giant Food, Inc.
Opposition No. 99,024
9
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983).
In sum, we conclude that consumers familiar with
opposer’s well known TORRES, TORRES and design, and TRES
TORRES marks for wines and brandy, would be likely to
believe, upon encountering applicant’s DUE TORRI and design
mark for wine, that such goods emanate from or are otherwise
sponsored by the same source. Even if they were to notice
the minor differences in the marks, they may well believe
that opposer is now selling a new wine (DUE TORRI) to
complement its TORRES and TRES TORRES wines and brandy.

7 It should be noted that this factor was not present in the ex
parte appeal discussed above.
Opposition No. 99,024
10
Decision: The opposition is sustained.
R. L. Simms
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board