Oakville Hills Cellar, Inc.v.Victor F. Maya

Trademark Trial and Appeal Board

Aug 26, 2008

No. 91163751 (T.T.A.B. Aug. 26, 2008)

Mailed: August 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Oakville Hills Cellar, Inc.
v.
Victor F. Maya
_____

Opposition No. 91163751
to application Serial No. 78364405
filed on February 7, 2004
_____

J. Scott Gerien of Dickenson, Peatman & Fogarty for Oakville
Hills Cellar, Inc.

Victor F. Maya, pro se.
______

Before Grendel, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Victor Maya has filed an application to register on the
Principal Register the mark MAIA (in standard character
form) for “wine.” in Class 33.1

1 Serial No. 78364405, filed on February 7, 2004, and asserting
January 1, 1998 as the date of first use of the mark anywhere and
January 1, 2004 as the date of first use of the mark in commerce.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91163751

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Registration has been opposed by Oakville Hills Cellar.
Opposer, in its amended notice of opposition, specifically
alleges, inter alia, that “since as early as 1990, well
before any filing date or date of first use upon which
Applicant can rely, Opposer adopted and continuously used
the mark MAYA in connection with wine” (Opposition ¶ 1);
that it “is the owner of Registration No. 2,508,4012 for the
mark MAYA [in “typed” form3] for wine in International Class
33, goods similar to those identified in Applicant’s
application” (Opposition ¶ 2); and that applicant’s mark so
resembles its previously used and registered mark MAYA, as
to be likely, when applied to the goods of applicant, to
cause confusion, or to cause mistake, or to deceive.4
Opposer also alleges that “based on Applicant’s failure
to use the mark MAIA in commerce, Applicant is not entitled
to registration of its mark pursuant to Section 1(a) as
alleged in Applicant’s application, and application Serial
No. 78/364,405 should therefore be denied.” (Opposition ¶
10).

2 Registration 2508401 issued November 20, 2001, Section 8
Affidavit accepted, Section 15 Affidavit acknowledged.

3 The former reference to what the Office now refers to as
“standard character” form.

4 Opposer also claimed ownership of Registration No. 2274626 for
the mark MAYA and design. However, that registration has been
cancelled under Trademark Act § 8 for opposer’s failure to file
an affidavit of continued use. Opposer’s claim in view of this
registration is therefore moot.
Opposition No. 91163751

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Applicant, in its answer, admits that opposer is the
owner of Registration No. 2508401, but has denied the
remaining essential allegations of the notice of
opposition.5
THE RECORD
The record includes the pleadings and the file of
involved application Serial No. 78364405. During their
testimony periods, both opposer and applicant filed notices
of reliance; opposer filing one during its testimony period
and one during its rebuttal testimony period and applicant
filing five during his testimony period. Although only
applicant has raised a number of objections to opposer’s
evidence, we find that a discussion of the evidence,
submitted by both opposer and applicant during their

5 Applicant also pleaded certain affirmative defenses, which are
in the nature of elaborations of his denials and have been
considered only to that extent. In addition, “in order to avoid
the inconvenience of trial and for the benefit of all parties
involved,” applicant offered to (1) restrict his use of the MAIA
mark to not include the wine grapes Cabernet Sauvignon and
Cabernet Franc and (2) to amend the basis of his application if
the Board determines that he did not declare the correct basis.
Inasmuch as trial has been completed, we will not consider these
proffered amendments. Notably, acceptance of the amendment to
the identification of goods would not have changed our decision
herein on opposer’s Section 2(d) claim.

We also note that applicant, in its brief, requested the Board
to “intervene to mediate a reasonable, mutually agreeable, and
legally sound compromise settlement that will bring this matter
to its final conclusion.” (Brief at p. 28) Such a request in a
final brief is both untimely and inappropriate.

Opposition No. 91163751

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respective testimony periods, is necessary because much of
the material sought to be introduced is not admissible via
notice of reliance.6 We also note that applicant, prior to
briefing in this case, moved to strike opposer’s notice of
reliance filed January 8, 2008.
Applicant’s Motion to Strike
We first address applicant’s motion to strike opposer’s
notice of reliance, filed January 8, 2008 during opposer’s
scheduled rebuttal testimony period. Applicant argues that
the documents accompanied by the notice of reliance are
improper rebuttal because applicant took no testimony, and
that the notice of reliance is procedurally defective. On
March 25, 2008, the Board denied the motion insofar as it is
based on a procedural defect, finding that opposer
sufficiently explained the relevance of the attached
material. We now consider whether the documents
accompanying the notice constitute improper rebuttal.
Opposer responded to the motion, arguing that the content of
the rebuttal notice of reliance directly addressed evidence
submitted by applicant during his testimony period.
A party may, on rebuttal, introduce facts and witnesses
to deny, explain or discredit facts and witnesses adduced by

6 Further, the evidence attached to opposer’s brief is untimely
and has not been considered herein. See Trademark Manual of
Procedure (“TBMP”) § 704.05(b)(2d ed. rev. 2004)(and the cases
cited therein).

Opposition No. 91163751

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the defendant. See Carefirst of Maryland Inc. v.
FirstHealth of the Carolina Inc., 77 USPQ2d 1492, 1498 (TTAB
2005). Opposer’s notice of reliance introduces excerpts
from the book Wine Atlas of California by James Halliday,
published in the United States in 1993 by the Penguin Group,
Penguin Books USA Inc. Opposer indicates in the notice that
the excerpts would be relied upon to rebut the assertion in
“Item One” of applicant’s notice of reliance7, filed
November 23, 2007, regarding the similarity of the marks
MAYA and MAYACAMUS for wine, and to demonstrate that the

7 Item One [Exhibit 1] consists of a copy of opposer’s
supplemental responses to applicant’s second set of
interrogatories, nos. 1 and 4. Applicant indicates that the
responses are relied upon, in part, to demonstrate that Opposer
does not consider the trademark Mayacamus for wine to be
confusing or harmful to the use of its MAYA mark.

Interrogatory 1:

Does Opposer consider the registered trademark
MAYACAMUS, Registration No. 1050905, for wine, to
be harmful to the commercial use of the mark
MAYA, for wine, or in any way confusingly similar
to consumers while distinguishing between the
two.

Supplemental Response:

Opposer objects to this interrogatory on the
grounds that it seeks information which is
neither relevant nor likely to lead to the
discovery of admissible evidence. Subject to and
without waiving this objection, Opposer states
that Opposer lacks sufficient information to
fully evaluate the potential for harm or consumer
confusion between the referenced marks; however,
Opposer can state that to date it is unaware of
any instances of consumer confusion between them.

Opposition No. 91163751

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term “Mayacamus” describes and refers to a well documented
wine-growing region of California.
Applicant appears to be under the misapprehension that
opposer may only rebut evidence in the form of testimony.
That is not the case. Evidence in support or defense of
claims in a Board proceeding may be made of record by
several means, including a notice of reliance. See
generally, TBMP Chapter 700 (2d ed. rev. 2004). We find
that the evidence attached to opposer’s rebuttal notice of
reliance as to the geographical meaning of the term
“Mayacamus” in relation to wine explains opposer’s position
with regard to the MAYACAMUS trademark, introduced by
applicant in his November 23, 2007 notice of reliance.
Accordingly, applicant’s motion to strike is denied.
Notices of Reliance
In a Board proceeding, certain materials may be made of
record pursuant to a notice of reliance. However, the
categories of materials which may be introduced under a
notice of reliance are limited. They consist only of an
adverse party’s discovery deposition, answer to an
interrogatory or admission to a request for admission8;
printed publications9; and official records. 10 Within this
framework, we consider the evidence of record.

8 See Trademark Rule 2.120(j)(3)(i).
9 See Trademark Rule 2.122(e).
10 Id.
Opposition No. 91163751

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Opposer’s Notices of Reliance
1. Opposer’s notice of reliance, filed November 13,
2007, on (1) portions of the discovery deposition transcript
of applicant [Exhibit 1]; (2) a copy prepared and issued by
the Patent and Trademark Office showing current status and
title of pleaded Registration No. 2508401 [Exhibit 2]; (3)
an excerpt from The Women’s Encyclopedia of Myths and
Secrets [Exhibit 3]; (4) definitions and pronunciation keys
for the terms “maya” and “maia” [Exhibits 4 and 5]; (5) web
pages from two websites [Exhibits 6 and 7]; and (6) copies
of articles from Wine Spectator magazine [Exhibits 8 through
15].
2. Opposer’s rebuttal notice of reliance, filed
January 8, 2008, on excerpts from the Wine Atlas of
California.
Applicant’s Notices of Reliance
1. Applicant’s notice of reliance, filed November 5,
2007, on (1) excerpts from the Oxford English Dictionary
[Exhibit 1]; (2) copies of web pages from various websites,
including Wikipedia [Exhibits 2, 3, 5, 7, 10, and 11]; (3)
an unreferenced copy of a John Keats poem [Exhibit 4]; (4)
opposer’s responses to applicant’s first set of
interrogatories nos. 8 and 9 and fourth set of
interrogatories nos. 11, 12, 13 and 14 [Exhibits 6 and 8];
(5) a printout from the Trademark Electronic Search System
Opposition No. 91163751

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(TESS) of Registration No. 1050905 [Exhibit 9]; (6)
opposer’s responses to applicant’s first request for
admissions no. 9 [Exhibit 12]; and (7) opposer’s
supplemental responses to applicant’s first request for
admissions nos. 2 and 3 and fourth set of interrogatories
no. 11 [Exhibit 13].
2. Applicant’s notice of reliance, filed November 13,
2007, on (1) copies of newspaper and periodical articles
about MAYA wine [Exhibits 1, 3 and 4]; and (2) a copy of a
letter from applicant to opposer [Exhibit 2].
3. Applicant’s notice of reliance, filed November 15,
2007, on (1) a copy of the annual report to the State of
North Carolina for Maia, LLC [Exhibit 1]; (2) copies of a
Watershed Protection Permit and a zoning permit issued by
Burke County, North Carolina [Exhibits 2 and 3]; (3) copies
of wine labels for MAIA wine [Exhibit 4]; (4) copies of
packing lists for farm equipment, labeling supplies and
storage supplies [Exhibit Nos. 5, 8 and 10]; (5) copies of
invoices for bottling supplies and plant tissue [Exhibit
Nos. 6 and 7]; and (c) a copy of a purchase contract for
nursery supplies [Exhibit 9].
4. Applicant’s notice of reliance, filed November 26,
2007, on (1) opposer’s supplemental responses to applicant’s
second set of interrogatories 1 and 4 [Exhibit 1]; and (2) a
printout from the website for the Theoi Project [Exhibit 2].
Opposition No. 91163751

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5. Applicant’s notice of reliance (also filed November
26, 2007) on documents marked confidential, namely, (1)
opposer’s responses to applicant’s first set of
interrogatories nos. 2, 3, 4, 6 and 7 [Exhibit 1]; and (2)
opposer’s response to applicant’s first request for
production of documents, nos. 1, 2, 3 and 10 [Exhibit 2].
Trademark Rule 2.122(e)11 allows for the submission of
“printed publications” or “official records” by a notice of
reliance because they are self-authenticating, may be
submitted by notice of reliance. We therefore find as
follows:
(1) The Internet excerpts consisting primarily of web
pages from various websites submitted by both parties are
not self-authenticating in nature and, thus, are not
admissible by notice of reliance. Raccioppi v. Apogee Inc.,
47 USPQ 1368, 1370 (TTAB 1998). Accordingly, Exhibits 6 and
7 of opposer’s notice of reliance, filed November 13, 2007,
as well as Exhibits 2, 3, 5, 7, 10 and 11 of applicant’s
notice of reliance, filed November 5, 2007, are not properly

11 Trademark Rule 2.122(e) provides, in part, as follows:

Printed publications and official records.
Printed publications, such as books and
periodicals, available to the general public in
libraries or of general circulation among members
of the public or that segment of the public which
is relevant under an issue in a proceeding, and
official records, if the publication or official
record is competent evidence and relevant to an
issue, may be introduced in evidence by filing a
notice of reliance on the material being offered.
Opposition No. 91163751

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of record and therefore have not been considered in this
decision.
(2) Copies of applicant’s wine labels, packing slips,
invoices and a purchasing contract are not self-
authenticating printed publications or official records and
may not be made of record by notice of reliance.
Accordingly, Exhibits 4 through 9 of applicant’s notice of
reliance, filed November 15, 2007, are not properly of
record and therefore have not been considered in this
decision.
(3) The unreferenced copy of the Keats poem is neither
a printed publication nor an official record and accordingly
may not be made of record by notice of reliance.
Accordingly, Exhibit 4 of applicant’s November 5, 2007
notice of reliance is not properly of record and therefore
has not been considered.
Last, we consider applicant’s evidentiary objections.
We need not, however, consider the objections to those
documents which we have found to be not properly of record
because they cannot be submitted via notice of reliance.
Accordingly, we will not further consider applicant’s
objections to Exhibits Nos. 6 and 7 of opposer’s notice of
reliance.12 Hence, the only remaining objection is to

12 In addition, applicant’s objection to opposer’s rebuttal
notice of reliance on the ground that it is improper
Opposition No. 91163751

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exhibit 3 of applicant’s notice of reliance, i.e., the
excerpt from the Women’s Encyclopedia of Myths and Secrets,
on the grounds of “incompetence and/or hearsay.” These
objections are overruled. Although, a printed publication
is usually only admissible for what it shows on its face,
the excerpt falls within an exception to the hearsay rule.
That is, the Board may properly take judicial notice, for
the truth of the matter stated therein, of information
appearing in standard reference works, such as encyclopedias
and treatises. See e.g., In re Hartop & Brandes, 311 F.2d
249, 135 USPQ 419, 420 n.6 (CCPA 1962). We find that
opposer, by its notice of reliance, is essentially
requesting the Board to take judicial notice of the factual
information contained in the excerpts from the Women’s
Encyclopedia of Myths and Secrets, and we have taken
judicial notice and have considered the excerpt for its
appropriate probative value.
With respect to the material, as outlined above, that
we have not considered in this decision, we note that even
if we had considered those submissions, they would not have
changed our outcome with respect to opposer’s claims.

rebuttal and immaterial is moot, inasmuch as we addressed
the issue in our decision on applicant’s motion to strike.
Opposition No. 91163751

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DISCUSSION
Opposer’s Standing and Priority of Use
We now consider the merits of opposer’s Section 2(d)
claim. Inasmuch as opposer has properly made its pleaded
registration of record, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 105 (CCPA 1982).
Moreover, because opposer’s pleaded registration for the
MAYA mark is of record, Section 2(d) priority is not an
issue in this case as to the goods identified therein. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.

Opposition No. 91163751

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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We first consider the du Pont factors which pertain to
the similarity or dissimilarity of the goods, channels of
trade and classes of purchasers. It is well settled that
likelihood of confusion is determined on the basis of the
goods as identified in the application and in the pleaded
registration. Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Herein, the goods identified in the application are “wine.”
The goods identified in opposer’s pleaded registration are
“wine.” Thus, the goods are legally identical.
Despite the identity of the goods, applicant attempts
to claim that the comparison of the goods should not be
based on the respective identifications but rather on the
basis of “actual use” of the respective marks on or in
relation to wine products.” Applicant particularly argues
that there is no likelihood of confusion because opposer’s
mark is used “exclusively” on a wine that is a blend of the
red grapes Cabernet Sauvignon and Cabernet Franc and is
produced in the Napa Valley of California, whereas its mark
is not, and never has been, used in connection with that
well known blend or in connection with any grapes from that
distinct wine producing region. This argument is
unavailing. An applicant may not restrict the scope of the
Opposition No. 91163751

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goods covered in the cited registration by argument or
extrinsic evidence. See In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986).
Applicant similarly attempts to claim that the parties’
respective goods travel in different trade channels and to
different classes of consumers. However, because the
identical identifications of goods in the pleaded
registration and applicant’s application are not restricted
as to channels of trade or classes of purchasers, we must
presume that both opposer’s wine and applicant’s wine will
travel in the same channels of trade and have the same
methods of distribution, including high-end boutiques, wine
shops and grocery stores, and will be offered to the same
consumers, namely ordinary purchasers seeking wine. See In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
We thus find the du Pont factors of the similarity of
the goods, channels of trade and classes of purchasers
strongly favor opposer.
With respect to the conditions under which the parties’
goods will be purchased, applicant contends that given the
sophistication of opposer’s customers [due to higher-end
pricing and limited availability of opposer’s wine], they
are “fully cognizant of the ‘Maya’ brand, as distinguished
from any others.” (Brief p. 14). As noted above, in the
absence of any limitations in the identification of the
Opposition No. 91163751

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pleaded registration, it must be presumed that opposer’s
wine will include inexpensive varieties that will be
purchased by ordinary consumers. These ordinary consumers
would be expected to exercise no more than ordinary care
when selecting opposer’s wine.
Accordingly, this du Pont factor is neutral or, at
best, slightly favors opposer.
We next consider the similarity of the marks, keeping
in mind that when marks would appear on identical goods, as
they do here, 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 determining the
similarity or dissimilarity of the marks, we must consider
the marks in their entireties in terms of sound, appearance,
meaning and commercial impression. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689
(Fed. Cir. 2005). 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
their entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general, rather than a
specific impression of trademarks. Sealed Air Corp. v.
Opposition No. 91163751

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Scott Paper Co., 190 USPQ 106 (TTAB 1975). That is, the
purchaser's fallibility of memory over a period of time must
be kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurant Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Obviously, the marks differ in appearance. Opposer’s
pleaded mark is MAYA and applicant’s applied-for mark is
MAIA. However, the difference between the two is not
particularly significant when we consider the overall
similarities. The marks are similarly constructed. Each
mark contains two syllables comprised of four letters –
three in common, and both begin with the letters “MA” and
end with the letter “A.” The only difference being them is
that the third letter in opposer’s mark is a “Y,” while the
third letter in applicant’s mark is an “I.” It is unlikely
that consumers will focus on this difference because the
different letters are imbedded in the middle of both marks.
Applicant argues that the marks are distinctly different in
appearance because his mark “is in the standard character
mark, which is lower case, wherein the letters ‘i’ and ‘y’
are distinctly different in appearance” and because he “is
not applying for registration of a design at this time.”
(Brief at p. 10). As opposer points out, the fact that
applicant seeks registration of his mark in standard
Opposition No. 91163751

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character format, as does opposer, means that neither party
is limited to any particular manner of display. See
Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376,
170 USPQ 35, 36 (CCPA 1971) (When a word mark is registered
in typed form, the Board must consider all reasonable modes
of display that could be represented.). Thus, both parties
could display their marks in similar lettering. In
addition, neither party’s mark includes a design element.
As a result, any design element that opposer may utilize in
the marketplace does not limit the scope of its pleaded
registered MAYA mark in any way. Quite simply, the
difference in the parties’ marks is not so significant that
it is likely to be noted or remembered by purchasers upon
seeing the marks at different times.
In addition, MAYA and MAIA may be pronounced the same.
While the marks could be pronounced differently, as
applicant urges, it is settled that there is no correct
pronunciation of a trademark, as it is impossible to predict
how the public will pronounce a particular mark. Kabushiki
Kaisha Hattori Tokeiten v. Acuotto, 228 USPQ 461 (TTAB
1985). Thus, even if marks may be pronounced differently,
they also may be pronounced in the same manner. Therefore,
for our purposes, the parties’ marks are phonetically
identical.
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Further, as regards the connotation and commercial
impression of the marks, given the substantial similarity in
the appearance of both marks and identity in sound between
the two, and the because both opposer’s mark MAYA and
applicant’s mark MAIA are arbitrary in relation to wine, we
find the marks substantially similar in connotation and
overall commercial impression.
Applicant maintains that the marks have distinctly
different meanings and origins as either common nouns or
proper nouns. Applicant particularly contends that The
Oxford English Dictionary defines the common noun “maia” as
“a spider-crab” and the common noun “maya” as “Illusion: a
prominent term in Hindu philosophy.” (Exhibit 1,
Applicant’s not. of rel., filed November 5, 2007); and that
the proper noun “Maia” has its origin in Greek mythology and
identifies the mother of Hermes, one of the seven Pleiades,
whereas “Maya” has its origin in India and identifies the
mother of Buddha. Opposer, on the other hand, maintains
that the terms “maia” and “maya” have an overlap in meaning,
notwithstanding their different origins. Both terms,
opposer contends, “are religious references to the virgin
mothers of well-known spiritual or historical persons, and
both MAYA and MAIA were individuals regarded in their
respective cultures as goddesses in their own right.”
(Brief at p. 5). As noted above, and confirmed by the
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parties’ arguments and evidence, both MAYA and MAIA are
arbitrary for wine and, accordingly, it is unlikely that
consumers will appreciate any difference in connotations or
commercial impressions of the parties’ respective marks.
Thus, the du Pont factor of similarity of the marks
favors opposer.
The next du Pont factor to consider is the strength of
opposer’s MAYA mark. Opposer contends that its mark is
arbitrary, and therefore strong and entitled to a wide scope
of protection. Opposer also maintains that its MAYA mark is
well-known among the relevant purchasing public, namely,
consumers of wine. Opposer particularly contends that:
During Opposer’s continuous use of its MAYA
mark on wine for the past sixteen years,
the wine has come to be regarded as one of
California’s top red wines, receiving a
substantial amount of unsolicited media
attention and public recognition … Most
recently, Opposer’s MAYA wine was named one
of Napa Valley’s Top 50 Cabernets by Wine
Spectator magazine in 2006, being named the
seventh best Napa Valley Cabernet for the
period 1990-2003.

(Brief at p. 12, citing to Exhs. 8-15 of Opposer’s not. of
rel., filed November 13, 2007 and Exhs. 1, 3 and 4 of
Applicant’s not. of rel., filed November 13, 2007). While
opposer’s MAYA wine has been rated by Wine Spectator
magazine as a top California wine for many years, and has
been touted in several publications as a superior wine, the
Opposition No. 91163751

20
record does not support a finding that opposer’s wine is
famous.
Thus, the du Pont factor of fame is neutral.
Considering next the number and nature of similar marks
in use on similar goods, applicant has made of record a TESS
copy of a single third-party registration [Registration No.
1050905] for the mark MAYACAMUS for “wine.” Applicant
maintains that:
When the Board considers that a Registered
Trademark exists that is identical to
Opposer’s Maya mark in every conceivable
respect, that it holds priority over
Opposer’s mark, and that Opposer never
opposed it, the Board will conclude that
Opposer’s action against Applicant’s Maia
mark is arbitrary and inexplicable, and the
Applicant prevails in the sixth test.

(Brief at p. 16). While third-party registrations may be
used to demonstrate that a portion of a mark is suggestive
or descriptive, they are not evidence that the marks shown
therein are in use or that the public is aware of them. See
AMF Incorporated v. American Leisure Products, Inc., 177
USPQ 268, 269 (CCPA 1973)[“little weight is to be given such
registrations in evaluating whether there is likelihood of
confusion.”]. In any event, the MAYACAMUS mark in the sole
proffered third-party registration is not as similar to
applicant’s pleaded mark as is applicant’s mark. As our
principal reviewing court noted in Nett Designs, 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), “[e]ven if some
Opposition No. 91163751

21
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior
registrations does not bind this Board or this court.”
Further, to the extent that applicant is arguing that
opposer’s failure to oppose registration of the MAYACAMUS
mark entitles it to registration of his mark, we find such
argument unpersuasive. This proceeding involves opposer’s
opposition to applicant’s registration. Opposer’s failure
to oppose a registration of a substantially different mark
is irrelevant.
This du Pont factor thus favors opposer.
Last, applicant has admitted that he has yet to use the
MAIA mark in commerce in connection with the sale of his
wine.13 Accordingly, and contrary to applicant’s
contention, the du Pont factors of the nature and extent of
any actual confusion and the length of time during and
conditions under which there has been concurrent use without
evidence of actual confusion are neutral.
When all of the relevant du Pont factors are
considered, we conclude that contemporaneous use by
applicant of the mark MAIA for wine is likely to cause

13 Applicant stated in his deposition that he has never shipped,
sold or commercially produced wine under the MAIA mark.
(Opposer’s not. of rel., Exhibit 1, citing to the Maya deposition
pp. 8-10, 13-15, 21, 24, 33-34, 37 and 39).

Opposition No. 91163751

22
confusion with opposer’s use of its MAYA mark with respect
to wine.
NON-USE OF THE MAIA MARK IN COMMERCE
We now address the issue of whether applicant is
entitled to registration of its mark pursuant to Section
1(a) of the Trademark Act. Opposer maintains that applicant
failed to make a bona fide use of his MAIA mark in commerce
prior to the filing of his use-based application for
registration of the MAIA mark under Section 1(a) and, thus,
the opposition should be sustained.
Applicant, on the other hand, “acknowledges that its
[sic] use basis falls in a ‘gray area’ of interpretation”
and request the Board to consider the entirety of the
circumstances. (Brief, p. 23). Applicant explains that:
Federal permitting is required before wine
can be sold or shipped across state lines.
Such permitting is not practical until the
quantity of wine produced is sufficient to
warrant it. Consequently, use under these
circumstances is limited to applying the
mark to wine labels, maintaining an
internet website and corresponding domain
name, conducting business transactions that
do not involve the sale of alcoholic
beverages, and transporting wine within the
state of production for promotional
purposes.

(Id.)

Pursuant to Section 45 of the Trademark Act, “… a mark
shall be deemed to be in use in commerce on goods when- (A)
it is placed in any manner on the goods or their containers
Opposition No. 91163751

23
or the displays associated therewith or on the tags or
labels affixed thereto, or if the nature of the goods makes
such placement impracticable, then on documents associated
with the goods of their sale, and (B) the goods are sold or
transported in commerce.” 15 U.S.C. § 1127(1). As
indicated previously, applicant, during his August 14, 2006
deposition, admitted that he had yet to sell, ship or
commercially produce any wine under the MAIA mark. (Exh. 1
to opposer’s not. of rel., filed November 13, 2007, citing
to the Maya deposition, pp. 14, 24 and 33). We thus find
that, at least as of August 14, 2006, applicant had not used
his MAIA mark in commerce as defined by Section 45. Because
applicant had not used his mark as of the filing date of his
use-based application, applicant was not entitled to seek
registration under Trademark Act Section 1(a).14

Decision: The opposition is sustained as to both
opposer’s Section 2(d) claim and its claim based on
applicant’s failure to make bona fide use of its mark in
commerce prior to his filing for registration of the MAIA
mark under section 1(a).

14 Applicant requested, in the event the Board found that he
misinterpreted the rule regarding use in commerce, that he be
allowed to amend his application basis to Section 1(b). Opposer
indicates that it does not consent to the requested amendment.
We find the request inappropriate at this late stage of the
proceeding. Moreover, inasmuch as we have found the parties’
respective marks confusingly similar, the request is moot.