Mionetto S.P.A.

Trademark Trial and Appeal Board

May 31, 2012

No. 79081140 (T.T.A.B. May. 31, 2012)

Mailed:
May 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mionetto S.P.A.
________

Serial No. 79081140
_______

Joe McKinney Muncy of Muncy, Geissler, Olds & Lowe, PLLC
for Mionetto S.P.A.

Simon Teng, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Kuhlke, Wellington and Kuczma
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Mionetto S.P.A. (“applicant”) filed an application
requesting extension of protection of International
Registration No. 1034862 to the United States pursuant to
§ 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), seeking
registration of the mark LA PIEVE and Design shown below:

for the following goods in Class 33, as amended:
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 79081140
2
Wines, spirits, liqueurs and alcoholic
beverages, namely distilled spirits and
aperitifs, consisting of wine,
sparkling water and liqueurs.

The application includes the following translation of LA
PIEVE -- The English translation of the foreign words in
the mark is: The city historical center.--
The examining attorney issued a final refusal to
register the mark pursuant to § 2(d) of the Trademark Act
of 1946, 15 U.S.C. § 1052(d), citing Registration No.
2461227 as a bar to registration.1 Registration No. 2461227
is for the mark PIEVE DI SPALTENNA in a typed drawing
format2 for “wines” in Class 33 and includes a statement
that the translation of the mark is “Parish of Spaltenna.”
In view of the slight discrepancy in the translation
statements for “pieve,” we take judicial notice that the
translation of the Italian word “pieve” is “parish church,
parish.”3

1 Registration 2461227 issued June 19, 2001; renewed June 27,
2011.

2 In 2003, Trademark Rule 2.52(a) was amended to refer to “typed”
drawings as “standard character” drawings. See Trademark Rule
2.52(a); 37 C.F.R. § 2.52(a); TMEP § 807.03(i).

3 Cassell’s Italian Dictionary (Italian-English/English-Italian)
(1967), p. 377. The Board may take judicial notice of dictionary
evidence. University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). Although applicant’s
translation does not include the word “parish,” its evidence and
argument recognize that “pieve” refers to Italian “parishes.”
Serial No. 79081140
3
Likelihood of Confusion
Our determination of likelihood of confusion under
§ 2(d) is based on an analysis of all of the probative
facts in evidence that are relevant to the factors
bearing on the 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 Co., 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 and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). These are the two
factors to which applicant and the examining attorney have
devoted the most attention.
A. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers

We initially address the du Pont factor involving the
similarity or dissimilarity of applicant’s goods (“wines,
spirits, liqueurs and alcoholic beverages, namely distilled
spirits and aperitifs, consisting of wine, sparkling water
and liqueur”), in relation to the goods in the cited

See Applicant’s Brief p. 4 and December 1, 2010 Response to
Office Action.

Serial No. 79081140
4
registration (“wines”). It is well-settled that the issue
of likelihood of confusion between applied for and
registered marks must be determined on the basis of the
goods as they are identified in the involved application
and registration. Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). A likelihood of confusion may be found with respect
to a particular class based on any product within the
identification of goods for that class. See In re Wacker
Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
Because the goods of both parties include “wine,” the
goods are in part identical and we can presume that the
channels of trade and classes of purchasers are the same
with respect to the identical goods. 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
Serial No. 79081140
5
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers.”).
Accordingly, the du Pont factors of similarity of the
goods, trade channels and customers strongly favor a
finding of likelihood of confusion.
B. The similarity or dissimilarity of the marks as to
appearance/sound/connotation and commercial impression

We now turn to the du Pont 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.
To the extent that the word PIEVE is the first word in
the cited PIEVE DI SPALTENNA mark and is the second word in
applicant’s mark following the nondescript article “LA,”
the marks are similar in appearance. Likewise, the initial
pronunciation of the marks will have a similar sound.
The term “LA” is translated in English from the
Italian, French and Spanish languages, to mean “the.”4

4 We take judicial notice of the definition of the term “LA” in
applicant’s mark. See Cassell’s Italian Dictionary (Italian-
English/English-Italian) (1967), p. 284: “def. art. The (used
before a feminine noun in the singular beginning with a
consonant), pl. le.;” Cassell’s French-English/English-French
Dictionary (1951), p. 431: “art. f. and pron. f.;” Cassell’s Spanish-
English/English-Spanish Dictionary (1959), p. 515: “def. art. fem. sing.
The.”
An “article” is “any member of a small class of words . . .
that are linked to nouns and that typically have a grammatical
function identifying the noun as a noun rather than describing
it. In English, the definite article is the, the indefinite
Serial No. 79081140
6
Based on the foregoing, it is highly likely that a
significant portion of the U.S. population recognizes and
understands the word “LA” to mean “the.”
Typically, the word “the” is found not to be
distinctive and without any source-identifying
significance.5 See In re The Place Inc., 76 USPQ2d 1467,
1468 (TTAB 2005)(definite article THE and generic term BAR
are not distinctive and add no source-indicating
significance); In re Weather Channel, Inc., 229 USPQ 854,
856 (TTAB 1985)(use of “the” does not add any source-
indicating distinctiveness to THE WEATHER CHANNEL); In re
The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB
1981)(definite article “The” does not convert merely
descriptive term THE COMPUTER STORE into registrable mark).
The word “LA” in the LA PIEVE mark is being used in
its ordinary sense, i.e., as the article “the,” and as

article is a or an, and their force is generally to impart
specificity to the noun or to single out the referent from the
class named by the noun.” The Random House Dictionary of the
English Language (Unabridged), p. 118 (2nd ed. 1987).

5 In certain instances, such as when “LE” or “LA” are used in
connection with an English word, the combination of the foreign
article with an English word has been found sufficiently
distinctive and registrable on the Principal Register (with a
disclaimer of the English word that is merely descriptive of the
goods). See In re Universal Package Corp., 222 USPQ 344, 347
(TTAB 1984) and In re Johanna Farms Inc., 8 USPQ2d 1408, 1413
(TTAB 1988) (the use of the French article combined with the
English generic changes the commercial impression of the LA
YOGURT mark as a whole). This situation is not present in this
case.
Serial No. 79081140
7
such, does not serve to distinguish applicant’s mark from
the cited mark. That the addition of a French, or in this
case, Italian, article does not differentiate a term in
determining whether it is or is not distinctive is well
established under the case law. See In re Le Sorbet, Inc.,
228 USPQ 27, 30, 31 (TTAB 1985).
Given the context of applicant’s LA PIEVE mark,
consumers are likely to ignore the word “LA.” Thus,
“PIEVE” is the focus in both applicant’s LA PIEVE mark, and
in the cited PIEVE DI SPALTENNA mark where PIEVE has
prominence as the first word in the 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)
(consumers are generally more inclined to focus on the
first word, prefix or syllable in a mark); Presto Products
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (often the first part of a mark is most likely to be
impressed upon the mind of a purchaser and remembered when
making purchasing decisions).
Applicant argues that its LA PIEVE mark connotes an
abstract idea of a place or location, similar to referring
to “the village,” “the city,” or “the plaza,” while the
cited mark PIEVE DI SPALTENNA connotes a specific reference
Serial No. 79081140
8
to an actual location, i.e., Spaltenna, Italy.6 In support
of the general connotation of the word “pieve,” applicant
submits a list of the names of more than 300 parishes in
Italy that are identified as “Pieve (insert name of
specific parish).”7 This listing of “Pieve” parishes, while
extensive, has little probative value without a showing
that U.S. consumers know the word “Pieve” is used to
identify these parishes or villages.
Moreover, there is no evidence that “PIEVE” is such a
commonly used or weak term that U.S. consumers would gloss
over that word to focus their attention on SPALTENNA.8
Accordingly, the word PIEVE has source identifying value
and potential purchasers are likely to remember and focus

6 Applicant’s Brief p. 3.

7 Applicant’s evidence is consistent with the translation of the
mark PIEVE DI SPALTENNA contained in the cited registration which
reads: “The translation of the mark is ‘Parish of Spaltenna’.”

8 Relying on the results of an “X-search,” an automated search
system of the USPTO, the examining attorney notes on p. 3
(unnumbered) of his appeal brief, that the only issued
registrations for PIEVE marks are owned by the cited registrant
and that this suggests that PIEVE is not a weak or diluted term
and accordingly, registrant’s mark should be entitled to a broad
scope of protection. We have not considered this argument or
evidence because the “screenshots from X-search” attached to the
June 24, 2011 action entitled Request for Reconsideration Denied
are not sufficient to make the registrations of record. TMEP
§ 710.03 requires a complete printout taken from any of the
USPTO’s automated systems, including the X-search system.
However, the X-search screenshots submitted by the examiner are
not equivalent to a “complete printout” because they fail to show
crucial information regarding the registrations.

Serial No. 79081140
9
their attention on the Italian term PIEVE when seeking
goods in the marketplace.
Even if U.S. consumers do not understand the meaning
of “PIEVE,” applicant argues that the impression created by
the registered mark when used for wine is of wines produced
in or originating from PIEVE DI SPALTENNA, a well-known
location in Italy recognized by the wine consuming public.9
In support of its position, applicant cites to internet
evidence advertising “Castello di Spaltenna Chianti
Classico” wine and noting the “Castello di Spaltenna” as a
place to stay and dine.10 While applicant’s evidence
establishes that Spaltenna is a location somewhere in
Italy, the offering of “Castello di Spaltenna” wine for
sale on 3 websites of unknown popularity, and mention of
“Castello di Spaltenna” on two websites, does not establish
that Spaltenna is a “well-known” location to wine consumers
or to U.S. consumers at large. Moreover, those consumers

9 Applicant’s Brief pp. 3-5.

10 See evidence submitted with June 16, 2011, Request for
Reconsideration. With his appeal brief, the examining attorney
submitted copies of webpages relating to the definition of the
word “castello” from the website
http://www.wordreference.com/iten/castello requesting the Board
take judicial notice of the webpages based on our decision in In
re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006). For the reasons
set forth in Red Bull, 78 USPQ2d at 1378, we may take judicial
notice of definition of “castello” but do not deem it necessary
to do so as our decision does not rely on the definition of
“castello,” i.e., a castle.
Serial No. 79081140
10
who may recognize Spaltenna as a wine-producing area of
Italy would likely associate the geographic meaning of
“Spaltenna,” thereby discounting the significance of that
term in the cited mark.
Applicant’s own evidence demonstrates the confusing
association of the marks that results from their commercial
impressions. Registrant’s homepage found at
www.pievedispaltenna.it, features the name PIEVE DI
SPALTENNA in close proximity to a link entitled: “La Pieve
and the Chianti’s territory.” The webpage from
www.spaltenna.it/english/surroundings.html contains a
similar reference to “La Pieve” in the title: Tour 7 “La
Pieve di Santa Maria a Spaltenna (the parish Church of
Santa Maria a Spaltenna).”11 These internet references
highlight the interplay between the terms LA PIEVE and
PIEVE DI SPALTENNA, supporting the likelihood of confusion
as to some affiliation or association between the marks,
particularly for those U.S. consumers who are not fluent in
the Italian language and/or who are unfamiliar with
Spaltenna, Italy.
When considering the similarity of the marks, the test
is not whether the marks can be distinguished when

11 See exhibits to applicant’s December 1, 2010 Response to Office
Action.
Serial No. 79081140
11
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of overall
commercial impression so that confusion as to the source of
the services offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992).
In evaluating similarities of marks, if one of the
marks comprises both a word and a design, the word is
normally accorded greater weight in determining whether
marks are similar because it would be more likely to be
impressed upon a purchaser’s memory and used by purchasers
to request the goods or services. CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela
Pere et Fils Ltd., 98 USPQ2d 1261, 1267 (TTAB 2011); In re
Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999).
This is particularly so where, as here, the wording in
applicant’s mark is set inside an ordinary rectangle. The
primary impression of applicant’s mark centers on the words
LA PIEVE with the rectangle functioning merely as a
background. See Kysela Pere et Fils, 98 USPQ2d at 1267,
and In re Solar Energy Corp., 217 USPQ 743, 745 (TTAB
Serial No. 79081140
12
1983). Thus, when considering the marks as a whole, the
rectangle in applicant’s mark does not serve to impart a
different commercial impression or otherwise distinguish
the marks.
In view of the foregoing, potential purchasers are
more likely to recall the word PIEVE, and overall Italian
connotation and commercial impression of the LA PIEVE and
PIEVE DI SPALTENNA marks than to distinguish between them.
C. Balancing the factors
Where marks appear in connection with, at least in
part, legally identical goods, the degree of similarity
between the marks that is necessary to support a finding of
likely confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698. 1701
(Fed. Cir. 1992).
In view of the similarity of the marks in their
entireties in sound and appearance, and especially in
connotation and commercial impression, the legal identity
of at least some of applicant’s goods to those in the cited
registration, and the presumption that the goods move in
the same channels of trade and are available to the same
classes of consumers, we find that applicant’s mark LA
PIEVE for the goods identified in its application is likely
Serial No. 79081140
13
to cause confusion with the mark PIEVE DI SPALTENNA shown
in Registration No. 2461227.

Decision: The refusal to register is affirmed.