Simi Winery, Inc. and Franciscan Vineyards, Inc.v.Mr. Container and Simi Global Corp.

Trademark Trial and Appeal Board

Aug 18, 2005

No. 92030168 (T.T.A.B. Aug. 18, 2005)

Mailed:
August 18, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Simi Winery, Inc. and Franciscan Vineyards, Inc.

v.

Mr. Container and Simi Global Corporation
_____

Cancellation Nos. 92030168; 92031424;
92031728; 92031786 and 92031877
_____

John M. Rannells of Baker & Rannells for Simi Winery, Inc.
and Franciscan Vineyards, Inc.

Edward M. Joffe for Sandler, Travis & Rosenberg, P.A. for
Mr. Container and Simi Global Corporation
_____

Before Seeherman, Quinn and Walsh, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Simi Winery, Inc. and Franciscan Vineyards, Inc.
(hereafter petitioner)1 have petitioned to cancel four

1 The petition to cancel Registration No. 2219750 (Cancellation
No. 92030168) was filed by Simi Winery, Inc. Subsequently Simi
Winery, Inc. was merged with and into Franciscan Vineyards, Inc.
As a result, Franciscan Vineyards, Inc. was joined as a party
plaintiff. Similarly, because Mr. Container merged with Simi
Global Corporation after the commencement of Cancellation
No. 92030168, Simi Global Corporation was joined as a party
defendant.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
2
registrations. These registrations issued to Mr. Container;
subsequently, Mr. Container merged into Simi Global
Corporation. Unless specifically noted, references to
“respondent” in this opinion will mean Mr. Container, Simi
Global Corporation, or both companies. One registration,
No. 2219750, for the mark SIMI, is the subject of two
cancellation actions. Cancellation No. 92030168 seeks to
cancel Class 32 of this registration for “beverages, namely,
powdered soft drink mix”; Cancellation No. 92031877 seeks to
cancel Class 29 of this registration for “food seasonings,
namely, bouillon cubes containing meat/poultry/vegetable
extracts.”2 The other registrations are for SIMI DOCTOR
(Registration No. 2220628, subject of Cancellation No.
92031786) for “baking soda”;3 SIMI TI MOTO (Registration No.
2226361, subject of Cancellation No. 92031728) for
“seasoning”;4 and SIMI in stylized form, as shown below,

2 Issued January 19, 1999, from an intent-to-use application
filed May 23, 1997; Section 8 affidavit accepted. It asserts
first use and first use in commerce for the goods in Class 29 on
June 13, 1998, and first use and first use in commerce for the
goods in Class 32 on November 3, 1997. This registration also
contains a third class, for “toiletries, namely, toothpaste”
(Class 3); petitioner does not seek to cancel the registration in
this class.
3 Issued January 26, 1999, from an application filed May 18,
1998 and asserting first use and first use in commerce on
February 11, 1998. Section 8 affidavit accepted.
4 Issued February 23, 1999, from an application filed May 18,
1998, and asserting first use and first use in commerce on
January 23, 1998. Section 8 affidavit accepted. The
registration states that the English translation of the Patois
term “ti” is “little” and the English translation of the
Indonesian term “moto” is “seasonings.” The registration also
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
3
(Registration No. 2389146, subject of Cancellation No.
92031424) for “breakfast foods, beverages, staple foods,
condiments, and seasonings, namely, salt, spices, sugar,
sauces, coffee, tea, cocoa, pasta, pastries, vinegar,
mayonnaise, mustard, bread, relishes, flour, breakfast
cereal, yeast, baking powder, baking soda, honey, and
rice.”5

The registrations were originally issued in the name of Mr.
Container. This company subsequently merged with Simi
Global Corporation.
Because the cancellation proceedings involved common
questions of fact, the Board consolidated the proceedings.
As grounds for cancellation, petitioner has alleged
that it is the owner of the mark SIMI and variations thereof
as a trademark, trade name and service mark for a wide range
of goods and services; that since prior to any date that may
be claimed by respondent, petitioner has used its mark for

includes a disclaimer of exclusive rights to use “moto” apart
from the mark as shown.
5 Issued September 26, 2000, from an intent-to-use application
filed August 10, 1998, and asserting first use and first use in
commerce on December 11, 1998.

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
4
wines and goods and services related thereto; that
petitioner owns a registration for SIMI for wines;6 and that
respondent’s marks are confusingly similar to petitioner’s
mark when applied to the goods of the parties, such that
respondent’s registrations are likely to cause confusion or
mistake or to deceive.7
Respondent denied the salient allegations of the
petitions to cancel in its answers.8
Motion to Amend
On August 23, 2004, after trial, petitioner moved to
amend the pleadings in Cancellation No. 920314234 pursuant
to Fed. R. Civ. P.15(b) to include “additional and/or
alternative grounds for partial cancellation.”
Specifically, petitioner alleges that, when respondent filed
its Allegation of Use (Amendment to Allege Use) in

6 Registration No. 1021644, issued September 30, 1975, from an
application filed on November 16, 1973, and asserting first use
in 1876 and first use in commerce in 1935; Section 8 affidavit
accepted; Section 15 affidavit received; renewed twice.
Petitioner also pleaded ownership of a registration for SIMI
SENDAL and design for wine, and submitted a status and title copy
of the registration. However, during the pendency of this
proceeding the registration became due for renewal, and Office
records show that the registration expired for failure to renew
it. Therefore, we have given no consideration to this
registration.
7 All four registrations issued in 1999, and the petitions to
cancel were filed within five years of the issuance of the
registrations, so likelihood of confusion is an appropriate
ground for cancellation. See Section 14(1) of the Trademark Act,
15 U.S.C. §1064(1).
8 Respondent has listed an “affirmative defense,” but this is
actually an elaboration of the reasons for its denial that
confusion is likely.

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
5
connection with the application which issued as Registration
No. 2389146 (for the stylized mark SIMI), it had not used
its mark on all of the goods listed in the application.
Therefore, petitioner asserts that the goods for which
respondent had not used the mark should be stricken from the
recitation of goods in that registration, and petitioner
also asserts that “as the Allegation of Use filed by
Registrant in support of and as the basis for the
registration in issue was false, the registration should be
cancelled.”
Petitioner states that the information regarding
respondent’s use, or more correctly, lack of use, became
known when, during petitioner’s cross-examination of George
Saati, respondent’s president, petitioner’s counsel asked
Mr. Saati whether respondent sold various products under the
mark SIMI, and Mr. Saati said no.
The Board, following its usual practice, deferred
action on the motion until final hearing. Petitioner
renewed its motion to amend in its main brief. In its
responsive brief, respondent did not specifically oppose the
motion. Rather, it acknowledged that, with respect to
Registration No. 2389146, respondent “has not used the mark
on [salt, sugar, sauces, coffee, tea, cocoa, mayonnaise,
mustard, bread, flour, honey and rice] and has no opposition
to having those goods removed from the registration.” p. 4.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
6
In its reply brief petitioner pointed out that
respondent did not address petitioner’s amended pleading to
cancel the registration in its entirety as a result of
filing a false Declaration of Use with the PTO.” p. 1. It
therefore requested that, in the event the registration was
not cancelled on the ground of likelihood of confusion, it
should be cancelled in its entirety as a result of
respondent’s filing a false declaration.
Rule 15(b) of the Federal Rules of Civil Procedure
provides that “when issues not raised by the pleadings are
tried by express or implied consent of the parties, they
shall be treated in all respects as if they had been raised
in the pleadings.” We cannot say, based on the questions
raised during cross-examination as to whether respondent had
made use of the mark, that respondent was aware that the
issue of fraud had been tried. Nothing was asked as to
respondent’s reasons for listing goods in the Amendment to
Allege Use for which it had not used the mark that would
have suggested that respondent’s intent, one of the elements
of fraud, was being questioned. Even after briefing, it
appears that respondent did not consider that fraud was a
potential ground; it is clear from respondent’s statements
that it believed that simply striking the goods for which
the mark had not been used was sufficient to resolve the
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
7
problem.9 Moreover, we note that petitioner itself never
clearly indicated that it sought cancellation on the ground
of fraud. It has merely referred to the Allegation of Use
as being false and/or that respondent had made a false
statement. Because petitioner’s own cross-examination could
as easily, and in fact could more easily, be viewed as a
basis for simply striking from the registration those goods
on which the mark had not been used, i.e., partially
cancelling the registration, we cannot say that the issue of
fraud was tried by implied, let alone express consent.
Therefore, petitioner’s motion to amend the pleading to add
this ground is denied. However, because respondent has
agreed to have certain items deleted from the registration,
we grant petitioner’s motion to strike such goods from the
registration. The petition to partially cancel Registration
No. 2389146 to remove from the identification “salt, sugar,
sauces, coffee, tea, cocoa, mayonnaise, mustard, bread,
flour, honey and rice” is granted. We deem the registration
to include only “spices, pasta, pastries, vinegar, relishes,
breakfast cereal, yeast, baking powder and baking soda.”10

9 It should be noted that, if fraud is found on the basis that
an applicant for registration intentionally stated, in an
Amendment to Allege Use, that it had used its mark on any of the
goods in the identification when it had not, the registration as
a whole would be cancelled. A registrant cannot cure fraud by
simply deleting those goods for which its Amendment to Allege Use
was false.
10 We note that, in its reply brief, petitioner has objected to
respondent as having treated, in its main brief, this
registration as having been partially cancelled, and asserts
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
8
The Record
he record includes the pleadings and the files of the
registrations sought to be cancelled. Also of record is the
testimony, with exhibits, of petitioner’s witnesses Ronald
C. Fondiller, Assistant Secretary of Constellation Brands,
Inc., petitioner’s parent company; and Chris Francis
Fehrnstrom, Senior Vice President of Marketing at Franciscan
Vineyards, Inc.; and of respondent’s witnesses George Saati,
president of respondent; Jose Damien, owner of Dixie Food
and an exporter of respondent’s goods; and Mel Dick, a
partner in Southern Wine and Spirits of America, which is a
distributor of petitioner’s SIMI wines. Excerpts from a
declaration by George Saati have been submitted pursuant to
stipulation of the parties. Petitioner has also submitted
four notices of reliance, consisting of a status and title
copy of its pleaded registration; excerpts from The New
American Bartender’s Guide; copies of excerpts from certain
printed publications; and copies of numerous third-party
registrations.
The proceedings have been fully briefed, but an oral

that, for purposes of deciding the issue of likelihood of
confusion, the identification should be considered as it was when
the registration originally issued. However, since it was
petitioner that sought partial cancellation of the registration
after trial, and because respondent has consented to that
request, thereby in effect stipulating to that relief, we think
it appropriate to grant petitioner’s request for partial
cancellation prior to considering the issue of likelihood of
confusion.

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
9
hearing was not requested.
We turn first to objections raised by petitioner in its
reply brief. Petitioner asserts that respondent’s brief is
“replete with distortions and misstatements of the record,
attempts to inject evidence into the record that respondent
did not introduce during its trial period, and the
introduction of inappropriate matter clearly intended to
prejudice the record.” Reply brief, p. 2. With respect to
petitioner’s specific objections, we will not strike that
portion of respondent’s brief which contains copies of its
packaging, although we have given such evidence the limited
probative value that it deserves. Further, we have based
our decision on the evidence that is properly in the record,
or on matters of which we may take judicial notice. In this
connection, petitioner states that respondent has attempted
in its brief to introduce evidence concerning Simi Valley,
California. We point out that, even though no evidence
about this geographic location is in the record, the
existence of a geographical place is a proper subject for
judicial notice. Finally, petitioner objects to
respondent’s discussion of laches. As previously noted,
respondent did not raise laches as an affirmative defense.
However, laches as being indicative of the lack of
likelihood of confusion is one of the subparts of the
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
10
du Pont factor11 of the market interface between the
parties. To that extent, we have considered respondent’s
arguments in our analysis of the issue of likelihood of
confusion.
Facts
Opposer Simi Winery, Inc. was acquired by Constellation
Brands, Inc. and was merged into Constellation’s wholly-
owned subsidiary, Franciscan Vineyards, Inc., where it is
now a division. Simi Winery was founded by two brothers
with the surname Simi. The winery opened in Sonoma County,
California, in 1880, and it has sold wine under the mark
SIMI since the late 1800s continuously to the present day,
except during Prohibition. Through most of these years,
Simi had limited production. Its 1976 newsletter describes
it as a boutique winery. Opposer provided sales figures for
its wine sales starting in 1987. From 1988 through 1993,
annual retail sales ranged from $20.1 million to $25.1
million. By 1996 sales had increased to $30 million, and
hit $34.4 million in 2000. Wholesale sales reached $23
million in 2003. The core group of SIMI wines sells for
between $15 and $25 a bottle, with the upper tier wines
selling for between $25 and $30, and the high end wines
costing $70. The retail sales figure of $34.4 million for

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

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
11
2000 represented sales of 1.8 million bottles.
Depending on individual state laws, opposer sells its
wines in grocery stores, restaurants, independent stores
such as liquor stores and wine stores and club stores. It
also sells its wine direct-to-consumer, with orders taken by
telephone, over the Internet, and as a result of its
newsletter. In addition, opposer operates a visitor center
at its winery, where it offers a variety of merchandise,
including wine, clothing items, wine-related items such as
corkscrews and coasters, food-related items such as bread
boards, and limited food items, in particular, olive oil and
wine vinegar. Between 1999 and 2001, annual sales of
merchandise at the visitor center amounted to $130,000.
Opposer’s annual advertising, promotional and public
relations expenses for the years 1998-2000 were in excess of
$400,000; in 2003 they were over $500,000, and in fiscal
year 2004 they were $450,000. These expenditures were for,
inter alia, participation in consumer and wine trade events
such as the Aspen Food and Wine Festival. Opposer
advertises in newsletters that are produced by liquor and
wine stores, such as The Wine House, which newsletter has a
distribution of between 75,000 and 150,000 customers. At
the time of Mr. Fehrnstrom’s deposition in 2004, opposer was
advertising its SIMI wines in “Bon Appetit” magazine; in the
past it has advertised in newspapers and magazines such as
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
12
“Time” and “Newsweek.”
Opposer and its wines have also been the subject of or
mentioned in articles in magazines and newspapers.
Respondent Mr. Container, Inc. sells a variety of
products under the mark SIMI, including grocery items such
as powdered soft drink mix, macaroni and cheese, and red and
white vinegar; stationery such as notebooks; and health and
beauty items such as toothpaste and soap. Respondent
markets its goods primarily to domestic wholesalers for
resale in the Caribbean and Latin America and directly into
neighboring countries. None of its goods is sold in the
retail trade or marketing channels in the United States.
Respondent had not heard of SIMI wines when it adopted the
mark; it chose the mark because it wanted a four letter mark
that would be easy to pronounce in a variety of foreign
languages. The packaging for its products generally
includes four languages: English, Spanish, French and
Portuguese.
Standing
Opposer, by making its registration of record, as well
as the evidence regarding its use of the mark SIMI, has
established its standing.
Priority
Contrary to petitioner’s assertion, because this is a
cancellation proceeding in which both parties own
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
13
registrations, priority is in issue. See Brewski Beer Co.
v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB 1998);
compare, King Candy Company v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). That is,
petitioner may not rely on its registration as it can in an
opposition proceeding, but must establish that it has
superior rights in its mark. Each party may, however, rely
on its registrations to show use of its mark as of the
filing date of the application which matured into the
respective registration. Thus, petitioner's registration
establishes that as of November 16, 1973, petitioner used
the mark SIMI for “wines.” Petitioner has also shown that,
with the exception of the Prohibition period, when by law it
could not sell wine, it has used the mark SIMI for wine
since the late 1800s, and that it has used the mark for wine
continuously since 1935.
Respondent's registrations establish that it made
constructive use of SIMI for “beverages, namely, powdered
soft drink mix” and “food seasonings, namely, bouillon cubes
containing meat/poultry/vegetable extracts” on May 23, 1997;
of SIMI in stylized form for “spices, pasta, pastries,
vinegar, relishes, breakfast cereal, yeast, baking powder
and baking soda” on August 10, 1998; of SIMI DOCTOR on
“baking soda” on May 18, 1998; and of SIMI TI MOTO for
“seasonings” on May 18, 1998. Respondent’s president
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
14
testified that it began using SIMI in 1996; that it first
used the mark SIMI for the goods in its Registration No.
2219750 (SIMI in typed form) in early 1997, and that it used
the mark for the goods in its other registrations in 1997-
98. However, the first use date claimed by respondent in
Registration No. 2219750 is June 13, 1998 for bouillon
cubes, and November 3, 1997 for powdered soft drink mix. If
a party wishes to show use earlier than that claimed in an
application/registration, it must do so by clear and
convincing evidence. Respondent’s president’s testimony,
consisting only of the statement that “I think 1997, early
1997” and “The filing was in May, ’97, but we were using
before we filed,” test. p. 7, is not sufficient to establish
an earlier use date. Therefore, and because the May 23,
1997 filing date of respondent’s registration is earlier
than the first use dates claimed in this registration, we
will treat the filing date as the constructive use date. As
for the other registrations, the general comment of “’97,
’98” is not sufficient to establish use earlier than the
dates asserted in those registrations. Thus, we deem
January 23, 1998 to be the first use of SIMI TI MOTO,
February 11, 1998 to be the first use of SIMI DOCTOR, and
August 10, 1998 (the filing date, which is earlier than the
claimed first use date) to be the first use of SIMI in
stylized form. Accordingly, petitioner has not only
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
15
established its priority of use of SIMI for wine through its
registration, but has shown that it has used its mark on
wine since long prior to respondent’s use of its various
marks.
Petitioner has also asserted common law rights in the
mark SIMI for a variety of goods. These goods are sold
through the visitor center at opposer’s Simi Winery in
Healdsburg, California. Petitioner has submitted
documentary evidence showing sales of various merchandise as
early as 1996. In particular, petitioner has demonstrated
that it has sold two food items, wine vinegar and olive oil,
bearing the mark SIMI since that date. Such sales are
rather limited, with gross sales in 1996 for wine vinegar
amounting to only $3,754.10 and sales for olive oil
amounting to $4,566,60. Although petitioner’s common law
rights in SIMI for vinegar and olive oil cannot be
considered extensive in view of the small number of sales,
and the restricted channel of trade, they do show that
petitioner has priority not only with respect to wine, but
with respect to wine vinegar and olive oil.12

12 Petitioner has asserted in its brief that it has sold a
variety of SIMI-branded non-food merchandise at its visitor
center, including pepper mills and salt and pepper shakers.
There is no evidence that sales of pepper mills and salt and
pepper shakers were made prior to respondent’s use dates.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
16
Likelihood of confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., supra. See also,
In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003).
Because respondent’s registrations are for somewhat
different marks and different goods, we will first consider
those du Pont factors that are applicable to all of the
registrations.
We turn first to the factor of fame since fame of a
plaintiff’s mark, if it exists, plays a “dominant role in
the process of balancing the DuPont factors”. Bose Corp. v.
QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.
Cir. 2002), quoting Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
Although petitioner has used the mark SIMI on wines for
a very long time, for most of its history its wine
production has been limited. Petitioner’s September-October
1976 newsletter (Fehrnstrom Exhibit 10) stated that “one
hundred years ago Simi was a small, quaint stone winery with
a limited production…. …Today Simi is still a small, quaint
stone winery with a limited production—though the term now
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
17
used is ‘boutique winery’….”13
Its retail sales in 1987 were $15.6 million, while
annual sales in the 1990s ranged from $23.1 million to $34.4
million. Petitioner did not attempt to give any context for
these wine sales, although its witness was specifically
asked how sales of SIMI wines compared to those of opposer
Franciscan Vineyards, Inc.’s other wines. We note that the
website of opposer’s sister company, Canandaigua Wine,
(Fondiller declaration Exhibit 1, submitted as Exhibit 1 to
Fondiller deposition), describes its Dunnewood Vineyards as
bottling “about 200,000 cases of premium table wines each
year.” This would amount to 2.4 million bottles of wine, as
compared to the 1.6 million bottles of SIMI wine sold by
petitioner in 1999 and the 1.8 million bottles it sold in
1999.
In Bose, supra, at 1309, the Court stated that “raw
numbers of product sales and advertising expenses may have
sufficed in the past to prove fame of a mark, but raw
numbers alone in today's world may be misleading. ….
Consequently, some context in which to place raw statistics
is reasonable.” Petitioner has failed to provide any
context for its sales figures that would show that a

13 Although normally an article cannot be used to prove the truth
of the statements made therein, here petitioner’s
characterization of itself having limited production must be
considered an admission against interest, and therefore falls
under an exception to the rule against hearsay.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
18
substantial number of people are familiar with its mark; and
based on the limited information we do have with respect to
the sales by Dunnewood Vineyards, on its face petitioner’s
sales figures do not appear to be substantial for the wine
industry.
Petitioner’s advertising and promotional expenditures
of between $400,000 and $500,000 annually from 1998 through
2004 do not appear to be particularly large. Further, the
number of advertisements in national publications appears to
be rather limited. Petitioner mentioned advertising in only
one nationally distributed magazine, “Bon Appetit,” in 2004,
and testimony about other national advertising was not very
specific: “In the past, Simi Winery has advertised in
newspapers, as well as other [than “Bon Appetit”] magazines,
broad sort of circulation magazines, whether it’s Time,
Newsweek, et cetera.” Fehrnstrom, p. 36. Petitioner did
not submit any advertisements from these broad-circulation
magazines, nor indicate how often such advertisements
appeared. Nor is there any indication that petitioner has
advertised its wines on television, which of course reaches
the largest number of people. The promotional efforts that
petitioner has most discussed are advertisements put in wine
retailer newsletters, with the specific newsletter going to
between 75,000 and 150,000 people; a mini-CD containing
recipes that was attached to 2000 bottles of its wine;
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
19
special events such as winery and restaurant dinners pairing
wines with food; and participation in winery trade events to
cause the press to become interested in writing about its
wines. The dinner events are, to some extent, “preaching to
the choir,” since these events are advertised to members of
petitioner’s wine club and to people who have come to
petitioner’s winery and provided their addresses for such
mailings.
Petitioner has also made of record a large number of
articles that make reference to its SIMI wines and/or
winery.14 Most bear dates from 1990 through 1998.15 A large
number of these articles are from periodicals related to the
wine industry. For example, the August 1997 issue of “Wine
& Spirits” magazine has a story on “Sonoma’s Italian Roots”
which includes a section on the beginnings of the Simi

14 With the testimony of Mr. Fehrnstrom opposer submitted an
exhibit, No. 16, consisting of 320 pages of what purport to be
press clippings. Some of the articles, as shown by the summary
which was prepared by opposer’s attorney and which accompanies
the clippings, are not identified as to publication or date.
Because Mr. Fehrnstrom did not authenticate these particular
articles, and they are otherwise unidentified, they have no or
extremely limited probative value. The same is true for those
clippings that were submitted as part of Exhibit 15 which do not
bear an indication of source or date and were not authenticated
by Mr. Fehrnstrom as part of his testimony. Similarly, we have
given no probative weight to articles that are not in English
(and are not translated), or which appear to come from foreign
publications.
15 We note that, although Mr. Fehrnstrom stated that, since 2002
when he joined the company, he made it a point of maintaining a
history of all press clippings, the clippings that were submitted
as part of Exhibit 16 were all dated prior to 2002 and, in fact,
no clippings dated after Mr. Fehrnstrom became employed by
opposer were submitted as part of his testimony.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
20
Winery; a several page article in the August 1998 issue of
that same publication is all about the Simi Winery. The
October-December 1998 “Quarterly Review of Wines” features
“Simi’s New-Look Wines.” There is an article about new Simi
wines in the August 11, 1998 “The Wine Report.” The May
1996 issue of “Beverage & Food Dynamics” reviews various
wines, including the 1994 Simi Chardonnay, while an article
in the October-November “Insider’s Wine Line” features Simi
Winery.
Other articles are from trade journals. See, for
example, “California Beverage Journal” July 1998 (review of
various wines, including several releases from Simi Winery;
“California Farmer,” August 1998 (viticulture and grape vine
diseases, which discusses research being done in a Simi
vineyard; “The Beverage Analyst,” January 1997 (Simi Winery
wine maker dinner); “V&WM Magazine” (Vineyard & Winery
Management), May/June 1995 (article on team winemaking at
Simi Winery); and “Beverage Media,” July 1995 (reporting a
tasting of Simi wines at a sales meeting for Park Avenue
Merchants).
Some articles appear to be from local papers. See, for
example, “Spotlight’s Wine Country Guide,” July 1999
(article about the winery, wine tastings and tours);
“Rohnert Park/Cotati, California,” (October 24, 1997)
(article titled “Simi noted for food as well as its wines”
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
21
about the dinner events at the winery); “The Press Democrat”
(Santa Rosa, CA), October 28, 1998 (article about Halloween-
themed dishes prepared by chef at Simi Winery); “Russian
River Recorder—An Official Publication of the Healdsburg
Museum and Historical Society,” Summer 1998 (article about
Healdsburg’s early Italian wine families, including the
Simis); “Where Wine Country,” Fall 1998 (wineries in Sonoma
Country, with a brief reference to Simi Winery).
Although there are articles from non-California
newspapers, there are relatively few of them. They include
a review of “SIMI SONOMA COUNTY CHARDONNAY 1996” in the May
27, 1998 “Dallas Morning News”; an article in the July 30,
1998 “Boca Thursday Paper” (Florida) featuring Simi
Vineyards and some of its wines; a listing of wines as gift
ideas in the December 25, 1996 “Sun Journal” (New Bern, NC),
in which a Simi Winery wine appears in a list of nine, and
the same article printed in “The Arizona Republic” on
December 23, 1996. There is also an article in the “Austin
American-Statesman,” February 8, 1995, in which twelve
wines, including SIMI SENDAL, are recommended for
Valentine’s Day presents. A restaurant review that appeared
in several Long Island, New York newspapers, e.g., “Three
Village Times,” Mineola, NY, mentions, in discussing the
Piping Rock restaurant’s wine list, that it offers a Simi
Chardonnay. An article in “The Birmingham News” (Alabama)
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
22
of August 23, 1995 reports on newsletters provided by
wineries, and mentions the “Simi News.”
There are a few articles from national newspapers and
magazines. In particular, the April 3, 1998 issue of “USA
Today” features Simi Winery’s chardonnay as a weekend wine
choice, while the May 10, 1996 issue of that paper has an
article about places to stay and eat in Sonoma Country that
lists Simi Winery as one of six wineries that can be
visited. A Simi wine was also mentioned in a “Tasting Panel
Report” in the October 1995 issue of “Bon Appetit.”
In some of the articles, “Simi” or the Simi Winery
receives only a brief mention. For example, an article in
the May 14, 1998 “Atlanta Journal” discusses food and wines
of summer, and in the penultimate paragraph includes a quote
from Mary Evely, who is identified as heading “the food
service program at Simi Winery in Healdsberg [sic], Calif.”
The last paragraph suggests that if one wants a dry rosé,
“try Simi’s Rosé or Cabernet Sauvignon or another labeled
with the French term vin gris or the Italian term rosato.”
Another article, in the July 24, 1998 “Oxnard Star,”
discusses an auction party at which more than 80 wineries
would be pouring samples, and Simi is mentioned in a list of
eleven. The June 1995 “Wine Enthusiast” merely includes
Simi Reserve in a listing of 23 cabernets.16

16 Petitioner has also made of record an article from the April
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
23
Although there is no question that Simi Winery and SIMI
wines have received some publicity through the years, we
cannot conclude that this publicity, or petitioner’s sales,
advertising and use of the mark, has resulted in SIMI having
become a famous mark for wine. Melvin Dick, a partner in
the largest wholesale distributor of wines and spirits in
the world, and whose company has represented petitioner’s
brands for thirty years, could say only that the wine is
“quite well known to people who appreciate fine wine.”
p. 20. Being quite well known to connoisseurs of fine wine
is different from being famous to the wine-buying public.
After thoroughly reviewing all of the evidence, we find
that it is insufficient to support a finding that SIMI is a
famous mark for wine. In view of the extreme deference that
is accorded to a famous mark in terms of the wide latitude
of legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, we think that
it is the duty of a plaintiff asserting that its mark is
famous to clearly prove it. Although wine connoisseurs may
be well aware of the Simi Winery and the SIMI brand, the
universe of wine purchasers in the United States is far

2003 issue of “Wine & Spirits” that reports a survey of
restauranteurs that asked them for the ten bestselling wines
during the last three months of 2002. We give no weight to the
results of this survey, since such results would be hearsay if we
were to consider the article for the truth of the statements made
therein.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
24
larger than those who study wine guides or who are
interested in reviews of the latest wine releases.
We do find, however, that the evidence submitted is
sufficient to show that SIMI has achieved recognition as a
mark for wine. Thus, any surname significance or geographic
significance that might once have attached to the mark has
long since disappeared, and SIMI must now be considered a
distinctive mark for wine.17 Moreover, respondent has not
submitted any probative evidence of third-party use of SIMI
marks. In this connection, we note the testimony of George
Saati, respondent’s president, that he had to adopt the
domain name “www.mrsimi.com” because “simi” was taken. Mr.
Saati did not provide any details of uses of “simi” as a
domain name, let alone as a trademark, and in particular he
gave no information as to the goods or services with which
such domain names or marks might be used. Thus, the record
reflects no third-party use of SIMI as a trademark for goods
or services related to those of petitioner.
Accordingly, we find that the factor of the strength of
the mark favors petitioner, but not to the extent that it
would if SIMI were a famous mark.

17 We take judicial notice that “Simi Valley” is a suburb of Los
Angeles, located in Ventura County. See The Columbia Gazetteer
of North America © 2000. The Board may take judicial notice of
entries in dictionaries and other standard reference works. In
re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n. 4
(TTAB 2001).
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
25
With respect to the factor of the channels of trade,
all of respondent’s identified goods are ordinary grocery
items that may be sold in supermarkets and other retail
grocery stores. We recognize that respondent currently
exports all of its goods to Caribbean and Latin American
countries, and does not sell to consumers in the United
States. However, it is well established that the question
of likelihood of confusion in a proceeding such as this must
be determined based on an analysis of the mark as applied to
the goods and/or services recited in the respondent’s
registration vis-à-vis the goods and/or services recited in
the petitioner’s registration, rather than what the evidence
shows the goods and/or services to be. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus, we must
deem respondent’s goods to be sold in all appropriate
channels for such products, including supermarkets and other
grocery stores. As for petitioner’s wine, the record shows
that in a substantial number of states wine may also be sold
in supermarkets and grocery stores.
As a result, we must deem both petitioner’s identified
wine and respondent’s identified goods to be sold in the
same channels of trade. At the same time, however, we
recognize that a wide variety of goods are sold in
supermarkets and grocery stores, and the mere fact that food
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
26
products and wine may be sold in such stores does not
necessarily establish that such goods are related.
“Notwithstanding these common trade channels, it has often
been stated that there can be no ‘per se’ rule that all food
products are related goods by nature or by virtue of their
capability of being sold in the same food markets, (i.e.,
the modern supermarket environment with its enormous variety
of food, cleaning, paper and other products stocked and
offered for sale).” Hi-Country Foods Corp. v. Hi Country
Beef Jerky, 4 USPQ2d 1169, 1171-72 (TTAB 1987). Therefore,
unless, as discussed infra in connection with the specific
goods in each registration, petitioner can show more of a
connection in channels of trade than simply that the goods
are all sold in supermarkets/grocery stores, this factor of
the same trade channels favors petitioner only slightly.
As for conditions under which and buyers to whom sales
are made, the consumers for petitioner’s wine and
respondent’s various food products are the public at large.
Although some of the purchasers of wine may be
discriminating, wine is not such an expensive product that
the public in general must be considered to be careful
purchasers. Further, the grocery items identified in
respondent’s registrations are all rather inexpensive items
that may be purchased without great deliberation. Thus,
this factor favors petitioner.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
27
With respect to the factor of evidence of actual
confusion, and the related factor of length of
contemporaneous use without confusion, because respondent
exports all of its goods, there has clearly been no
opportunity for confusion to occur. Therefore, these
factors are neutral.
We now turn to the individual registrations/classes
that petitioner seeks to cancel. First we consider the
registration for SIMI in stylized form for a variety of
goods. We focus our analysis on the item “vinegar” which is
included in the identification in that registration because
likelihood of confusion must be found if the public is
likely to be confused by use of respondent’s mark on any of
the items in the identification of goods. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 209 USPQ 986
(CCPA 1981).
Respondent’s identification of “vinegar” would
encompass “wine vinegar,” which for several reasons must be
considered related to petitioner’s wine. First, because
wine vinegar is made from wine, consumers are likely to
believe that, if wine vinegar and wine are sold under the
same or confusingly similar marks, both products emanate
from the same source. Second, Melvin Dick, a witness called
by respondent, testified that olive oil and vinegar are both
part of the fine wine experience, thereby suggesting that
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
28
such goods are all related. Third, the fact that petitioner
itself has sold wine vinegar (and olive oil) under the mark
SIMI since prior to respondent’s first use of the mark for
these goods further supports Mr. Dick’s statement, and also
shows the relatedness of the goods. Fourth, petitioner has
made of record third-party registrations which also
establish that wine and vinegar are related goods. Third-
party registrations which individually cover a number of
different items and which are based on use in commerce serve
to suggest that the listed goods and/or services are of a
type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
At this point we must comment on the “approximately one
hundred” (petitioner’s main brief, p. 23) third-party
registrations submitted by petitioner. Although petitioner
quoted the language of Trostel in discussing these
registrations, it ignored the requirement that the
registrations must be based on use in commerce in order to
be probative. Our review of these registrations reveals
that the vast majority are based on Section 44 of the
Trademark Act, rather than on use in commerce. Of the
registrations that are based on use in commerce, however,
many do include both wine and vinegar in their
identifications of goods. See, for example, Registration
No. 2312053 for VIANSA, No. 2297290 for CARMEL’s CHOICE, No.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
29
2203786 for CANARIO and design; No. 2130614 for FELICITAS
and design, No. 2198757 for FATTORIA SAN LEONINO and design,
No. 1828418 for IL FORNAIO, No. 1401427 for BADIA A
COLTIBUONO and No. 1286155 for HONG MEI and design. These
registrations are sufficient to demonstrate the relatedness
of vinegar and wine.18
In addition to the relatedness of petitioner’s wine and
respondent’s vinegar, petitioner also has shown that it has
prior common law rights in SIMI for vinegar. Petitioner’s
vinegar and respondent’s identified vinegar must be deemed
to be legally identical goods. Although petitioner’s common
law rights in its mark for wine vinegar are limited to sales
at its winery, consumers who have been exposed to SIMI wine
vinegar at the SIMI winery visitor center and who then
encounter wine vinegar under respondent’s stylized SIMI mark
in a grocery store are likely to assume that petitioner has

18 We note that some of the use-based registrations are in the
nature of house marks or merchandising marks which cover a wide
range of goods. Because of this, such registrations are of no
probative value in demonstrating that all the goods listed
therein are related, and we have not considered them in reaching
our conclusion that vinegar and wine are related goods. See, for
example, Registration No. 2601490 for AIOLI for goods and
services in 8 classes, and including such varied goods as grass
seeds, animal feed, cigarette holders, deer meat, ice cream and
freight transportation of goods by means of train, truck, ship
and air; Registration No. 2344538 for SYSCO for goods and
services in 22 classes, including floor cleaner, insecticides,
neon signs, elastic back supports, toilet paper and financial
management services in the health care industry; and No. 1884513
for PEBBLE BEACH for goods and services in 9 classes, ranging
from shampoo to photograph albums to plaques to golf putters to
wine.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
30
expanded the trade channels for its goods, and is now
selling its vinegar in retail stores.
This factor of the similarity of the goods favors
petitioner.
As for the marks, although respondent’s registration is
for a stylized form of SIMI and petitioner’s mark appears in
standard character form, the words themselves are identical.
Further, the protection accorded to petitioner for its
standard character registration would include the slightly
stylized version of SIMI that is respondent’s mark.
Accordingly, we find that petitioner’s mark and respondent’s
mark are legally identical in appearance, and identical in
pronunciation, connotation and commercial impression. This
factor favors petitioner.
As noted previously, respondent has asserted laches in
connection with the du Pont factor of the market interface
between the parties, as being indicative of a lack of
confusion. Respondent bases this claim on the fact that,
when respondent’s then-application was published for
opposition, petitioner obtained extensions of time to
oppose, but did not actually file an opposition. Respondent
asserts that the failure to file an opposition indicates
that petitioner “surmised that no likelihood of confusion
between its trademark and the then applicant’s existed.”
Brief, p. 22. We disagree. Respondent has pointed to no
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
31
case law that stands for the proposition that the failure to
file an opposition, whether or not an extension to oppose
had been filed, demonstrates that the potential opposer
concluded that confusion was not likely. Moreover,
petitioner filed its first request for an extension of time
to oppose on October 14, 1999; the subject registration
issued on September 26, 2000; and petitioner filed its
petition to cancel on December 28, 2000. We cannot conclude
from the very short time that elapsed between these events
that petitioner’s decision to bring a cancellation
proceeding rather than file an opposition shows that
petitioner had previously determined that confusion was not
likely, nor can we find that this decision by petitioner
indicates a lack of confusion.
As for the remaining du Pont factors, to the extent
that the parties have discussed them, they have merely
reiterated the arguments that they made in connection with
those du Pont factors we have previously discussed, and we
will therefore not repeat them here.
The fundamental inquiry in the likelihood of confusion
analysis goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks. See Interstate Brands Corporation v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
32
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). Here, we find that the factors of the similarities
of the marks and the similarities of the goods strongly
favor petitioner. When we also consider the other du Pont
factors that favor petitioner, we have no doubt that
respondent’s use of its stylized SIMI mark for vinegar is
likely to cause confusion with petitioner’s SIMI mark for
wine, as well as with its SIMI mark for wine vinegar.
Accordingly, the petition to cancel Registration No. 2389146
is granted.
This brings us to a consideration of the petition to
cancel Class 29 of respondent’s registration for SIMI, in
standard character form, for the goods identified as “food
seasonings, namely, bouillon cubes containing
meat/poultry/vegetable extracts.”
As we have previously stated, there is no per se rule
that all food products are related. There are clear
differences between wine and bouillon cubes. They are made
from different products and have different purposes.
Petitioner asserts that petitioner’s and respondent’s goods
are related because wine may be served with and/or paired
with food, and may be used “as an ingredient in food recipes
(as are condiments and seasonings)” brief, p. 14; and
because condiments and seasonings are ingredients in mixed
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
33
drinks, including wine-based mixed drinks. In making these
arguments, petitioner has discussed respondent’s goods in
general, using terms such as “condiments” and seasonings” to
refer to them, rather than analyzing this factor in terms of
the specific (and different) goods that are recited in the
different registrations that petitioner seeks to cancel.
Thus, petitioner has not pointed to any specific evidence
regarding bouillon cubes and wine to support its argument
that these goods are related.
Moreover, in our review of the extensive evidence
submitted by petitioner, we have found nothing that
discusses the pairing of wine and bouillon. Although there
are menus from various wine dinners that show, for each
course, the particular wine that goes with the dish for that
course, the food items listed are for the prepared food, and
they do not indicate that bouillon is an ingredient in the
dish, let alone a featured ingredient. See, for example,
the listing of The Bounty of Harvest dinner, scheduled for
October 6, 2001, which describes the menu as including
“roasted beef tenderloin with a mushroom-cabernet sauce and
a terrine of autumn vegetables.” The Vintner’s Table
Cookbook, written by petitioner’s former executive chef Mary
Evely, contains an exhaustive listing of food affinities for
particular wines. For example, the Sauvignon Blanc Profile
lists herbs and spices such as cilantro, oregano and cumin;
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
34
sauces such as citrus and vinaigrettes; cheese and nuts such
as fresh goat cheese; seafood such as scallops and smoked
fish; meat such as chicken; and vegetables and fruits such
as artichokes and lettuces. It also has an equally detailed
list of food/wine conflicts. However, in none of these
pairings or conflicts does bouillon or bouillon cubes
appear.
The best we can say is that some of the recipes
appearing in The Vintner’s Table Cookbook list broth or
stock as an ingredient in a dish and also suggest the wine
that may be served with it. For example, a recipe for white
bean and sweet red pepper salad with fennel includes “5 cups
vegetable stock or 1 can vegetable broth” (along with, inter
alia, red onion, basil, bay leaf and lemon juice), and
states that it matches with the texture of Chardonnay.
We also note that some recipes in The Vintner’s Table
Cookbook and on petitioner’s sister company’s website
include, as ingredients, wine and broth or stock. For
example, a recipe for risi e bisi lists “fresh chicken broth
or canned low-salt chicken broth” and Sauvignon Blanc (along
with, inter alia, chopped onion, unsalted butter, prosciutto
and green peas); a recipe for salmon steaks with saffron-
onion sauce includes “unsalted chicken stock or reduced-salt
chicken stock” and Chardonnay (along with, inter alia,
bacon, chervil leaves and saffron).
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
35
Aside from the fact that these recipes do not call for
the actual goods, bouillon cubes, that are identified in
respondent’s registration, the inclusion of broth or stock
as a minor ingredient in a recipe that also calls for wine,
or in a dish that may be served with wine, is not a
sufficient basis to show that bouillon cubes and wine are
related goods. Certainly petitioner has not shown that
bouillon cubes and wine are complementary goods, or have
complementary uses. See In re Mars, Inc., 741 F.2d 395, 222
USPQ 938 (Fed. Cir. 1984) (no confusion found between CANYON
for candy bars and CANYON for fresh citrus fruit).
Petitioner has also submitted recipes for 118 mixed
drinks, taken from The New American Bartender’s Guide.
After an exhaustive review of these recipes, we could find
none that includes wine and bouillon as ingredients for the
same drink. In fact, there are only a few drink recipes
that contain bouillon, namely, the Bull Roar, which contains
beef bouillon, beef consomme or beef broth, along with
vodka, Bovril beef extract, Tabasco sauce, A-1 sauce,
Worcestershire sauce, and white pepper; the Bull Shot, which
contains, inter alia, beef consomme or beef bouillon and
vodka; the Gazpacho Macho, which contains, inter alia, beef
bouillon, vodka or tequila, and gazpacho soup; the Creole
Cup, which contains, inter alia, rum and beef bouillon or
consomme; the Beef and Bourbon, with bourbon and beef
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
36
consomme or bouillon; the Celtic Bull, with Irish whiskey
and beef consomme or bouillon; El Toro Sangriento, with
tequila and beef consomme or bouillon; the Steaming Bull,
with tequila and beef consomme or bouillon; and two
variations of the Bloody Mary (Bloody Bull with beef
bouillon; Cock ‘n’ Bull Shot with chicken consomme and beef
bouillon). Many of these drinks appear to have the same
recipe, with the exception of the primary liquor ingredient.
Petitioner argues that “any person making mixed drinks
at home and any bartender will necessarily require many of
the same ingredients as those recited in the registrations
which are the subject of this proceeding.” Brief, p. 18.
We disagree. The guide from which these recipes are taken
appears to contain any recipe that one might think of for a
mixed drink, including many that are quite exotic. It is
not evident to us that ordinary consumers making mixed
drinks at home, and even most bartenders, would be aware of
these oddly named drinks and their ingredients. More
importantly, the fact that a particular ingredient might be
used in an alcoholic drink that does not contain wine does
not demonstrate that the ingredient and wine are related
goods, any more than two different ingredients, used for
different recipes, would be related simply because they both
might be found in the same kitchen.
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
37
Petitioner has also submitted evidence from various
food-oriented magazines to show that different food items
and wine are advertised in the same magazines. However,
petitioner has not pointed to any advertisements in these
submissions for bouillon or bouillon cubes. Similarly, the
evidence regarding gift baskets that contain wine along with
other ingredients (thereby showing that the goods are sold
not just in the same channels of trade, but together), does
not indicate that bouillon is included among the contents.
See summary of ingredients at p. 21 of petitioner’s brief.
Finally, after thoroughly reviewing the third-party
registrations, of those that we consider probative (see
discussion, supra), the only ones that include both wine and
broth are Registration No. 2203786 for CANARIO and design
(beef broth, chicken broth and vegetable broth) and
Registration No. 2648516 for a stylized D (broths, chowders,
soups, vegetable and beef stocks). However, the latter
registration is owned by Draeger’s Super Markets and may be
a house mark; the identification also includes “cooking
schools.”
There are five registrations that list “beef extract,”
and respondent’s bouillon cubes are identified, in part, as
containing meat extracts. Of these registrations, two are
owned by a single entity (Cipriani Group, Inc.). The
remaining three registrations were all filed by foreign
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
38
companies. One of the registrations, No. 2273272 for SEREGO
ALIGHIERI in Classes 29, 30 and 33, appears to identify the
goods by class headings.19 Two registrations, No. 2104535
for MARCHESI INCISA DELLA ROCCHETTA and No. 2237004 for
DEMEL and design, were originally filed under Section 44 of
the Act, and subsequently amended to claim use in commerce.
The MARCHESI registration, in particular, appears to use
class headings as the identification of goods, and includes,
inter alia, grass seeds, dried plants, animals and animal
food stuffs, meat, fish, poultry, game, meat extracts,
jellies, tea, cocoa and treacle. Such registrations, which
cover such a wide range of goods, are of little probative
value in demonstrating that all the goods listed therein are
related.
In short, there are too few third-party registrations
which have probative value for us to conclude that wine and
bouillon cubes are likely to emanate from a single source
under a single mark.
Thus, after a thorough review of the evidence submitted
by petitioner to show that wine and bouillon cubes are
related, we find that petitioner has failed to establish
this point. There is simply no basis on which we can

19 For example, the goods in Class 29 are identified as “meat,
fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs,
milk and dairy products excluding ice cream, ice milk and frozen
yogurt; edible oils and fats.”
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
39
conclude that consumers would expect that bouillon cubes
would emanate from the same source as wine, even if they
were sold under the same or confusingly similar marks. The
factor of the similarity or dissimilarity of the goods
strongly favors respondent.
As previously noted, in the likelihood of confusion
analysis two key considerations are the similarities between
the marks and the similarities between the goods and/or
services. Because petitioner has failed to show that the
goods are related, it cannot prevail, despite the fact that
the marks are identical, and despite the other du Pont
factors that favor petitioner. The petition to cancel Class
29 of Registration No. 2219750 (Cancellation action No.
92031877) is dismissed.
Petitioner is also attempting to cancel Class 32 of
Registration No. 2219750 for SIMI in standard character
form, for goods identified as “beverages, namely, powdered
soft drink mix.” However, again we find the evidence
submitted by petitioner woefully lacking in terms of
demonstrating that wine and powdered soft drink mix are
related. Petitioner has pointed to no alcoholic beverage
recipes which include both wine and powdered soft drink mix.
Indeed, we have found no beverage recipes whatsoever that
call for powdered soft drink mix. (We point out that
respondent’s identification is limited to powdered soft
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
40
drink mix; therefore, the use of carbonated soft drinks,
such as mixers, in alcoholic beverages has no relevance
here.) Nor has petitioner identified any recipes for food
in which wine and powdered soft drink mix are ingredients,
or any reference to pairing wine with powdered soft drink
mix or with foods or drinks containing powdered soft drink
mix. Further, we have not found, in the materials
submitted, any evidence that powdered soft drink mix is
included in gift baskets that also contain wine.
Of the probative third-party registrations, we have
found two (for SUN MAID and for a design mark), both owned
by Sun-Maid Growers of California, that originally listed,
inter alia, wines and soft drinks. USPTO records show that,
as a result of that registrant’s filing its Section 8
affidavits of use, wines and soft drinks have been deleted
from those registrations. There is also a registration, No.
1553878 for SPORTSERVICE, that includes “soft drinks” and
wines. However, this registration also is for, inter alia,
hamburger sandwiches, french fries, management services
rendered to owners of bowling alleys, race tracks, theaters
and baseball stadia, and retail store services in the fields
of bait, tackle, fuel, groceries and animal feed. It
appears from the identification that the registrant offers
soft drinks in the context of snack bar food services. In
any event, “soft drinks” is not the same as powdered soft
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
41
drink mix, and even if we were to consider all three
registrations as being for substantially the same goods as
respondent’s, the limited number, representing only two
entities, is not sufficient to demonstrate that wine and
powdered soft drink mix emanate from the same source.20
Petitioner has pointed to certain cases which it
contends support its position that wine and powdered soft
drink mix are related goods. In its discussion of Bongrain
International (American) Corporation v. Moquet Ltd., 230
USPQ 626 (TTAB 1986), petitioner states that “it is a matter
of common knowledge that wine and soft drinks and coffee
(often served with sugar) and tea (often served with honey)
are served at many of the same social occasions and at the
same meal, and that desert [sic] wines are often served with
deserts [sic] such as pastries.” Brief, p. 24. This quote
appears to be petitioner’s; all that was said in Bongrain
was “it is a matter of common knowledge that wine and cheese
are often served together at parties.”

20 There is one other use-based registration that includes non-
carbonated soft drinks, Registration No. 2250314 for INSTA-HEAT.
However, this registration does not include “wines” per se.
Although it includes sake, which is a rice wine, and hard cider,
which is alcoholic, we do not view this registration as
demonstrating that wine and powdered soft drink mix emanate from
a single source. The registration covers not only food items,
but also cold and flu medicines and infant formula. Further, we
note that the mark suggests something that is heated, and all of
the goods listed in the registration are products that can or
should be served warm.

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
42
We find it somewhat ironic that petitioner essentially
asks us to take judicial notice that wine and soft drinks
are served at the same social occasions and at the same
meal, when petitioner objected to respondent’s reference,
without evidentiary support, to Simi Valley, California,
even though the existence of a geographic place is a
suitable subject for judicial notice. Whether or not wine
and soft drinks might be served at the same social
occasions, there is no evidence that either powdered soft
drink mix or soft drinks made from such a mix and wine are
served at the same social occasions or meals. Nor do we
think that this is a matter of common knowledge, such that
we can take judicial notice of it.21
Petitioner also relies on General Foods Corporation v.
Monarch Wine Company of Georgia, 142 USPQ 521 (TTAB 1964).
However, this case has no precedential value. It was
published only in digest form, and does not indicate the
facts on which the determination was based. See General
Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, n. 9

21 See Bongrain, supra at 628, n. 4, “Opposer, in addition to
relying on its affidavit, has also requested that we take
judicial notice of the facts that wine and cheese are both sold
through gourmet stores and supermarkets; that they are often
purchased in the same shopping trip by consumers; and that they
are often consumed at the same social event. We agree with
applicant, who has objected to the request, that the shopping
patterns of purchasers and the channels of trade of particular
goods are factual questions which are appropriately established
through the introduction of evidence rather than by judicial
notice.”

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
43
(TTAB 1992); In re American Olean Tile Co., 1 USPQ2d 1823
(TTAB 1986); and TBMP § 101.03 (2d ed. rev. 2004).
As for the other cases cited by petitioner in which
confusion was found between wine and sodas or fruit juice
and wine because sodas and fruit juices could be used as
mixers, these cases are distinguishable because there is no
evidence that powdered soft drink mix is used as a “mixer”
with wine or other alcoholic beverages. Moreover, in the
case of In re Jakob Demmer KG, 219 USPQ 1199 (TTAB 1983), in
which confusion was found between GOLDEN HARVEST for apple
cider and for wine, there are the additional distinguishable
factors that apple cider can be sold in alcoholic as well as
non-alcoholic form, and apple juice can be used to make
wine.
However, one point made in Jakob Demmer is applicable
here, and that is the principle that “there is and should be
no per se rule that alcoholic and non-alcoholic beverages
are related products.” Id. at 1201. We add that the mere
fact that both petitioner’s and respondent’s goods can
loosely be described as beverages is not a sufficient basis
on which to find that they are related. See UMC Industries,
Inc. v. UMC Electronics Co., 207 USPQ 861 (TTAB 1980), and
cases cited therein.
In view of petitioner’s failure to demonstrate the
relatedness of wine and soft drink beverage mix, as with the
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
44
petition to cancel Class 29 of Registration No. 2219750, we
find that there is no likelihood of confusion with respect
to respondent’s use of SIMI for its Class 32 goods, despite
the fact that the marks are identical, and despite the other
du Pont factors that favor petitioner. Consequently,
Cancellation action No. 92030168 is dismissed.
The next registration which petitioner seeks to cancel
is Registration No. 2220628 for SIMI DOCTOR for baking soda.
Here, again, petitioner has utterly failed to show that the
parties’ goods are related. In fact, petitioner has pointed
to no recipes in which baking soda is even used as an
ingredient, or to any third-party registrations which even
include baking soda and wine, or any gift baskets which
contain baking soda as well as wine. Nor is there any other
evidence from which we can conclude that baking soda and
wine are complementary products, or that consumers would
expect them to emanate from a single source. Petitioner has
not even argued in its brief how baking soda might be
related to wine.
Petitioner has, however, asked that the Board take
“judicial notice of the fact that baking soda has long been
used and prescribed for many matters, perhaps best known
being, cleansing, odor removal, and protection from chaffing
[sic] and rash.” Brief, p. 11. Again, we find it ironic
that petitioner would ask us to take judicial notice of
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
45
this, when it objected to respondent’s mention of Simi
Valley in its brief. We decline to take judicial notice of
this so-called fact; we do not believe that it is a matter
of common knowledge that baking soda is prescribed or used
in these manners. Even if we were to take such notice,
however, non-food uses of baking soda such as cleansing and
rash protection make the product even more dissimilar to
wine.
Because on this record we must find that the goods are
not related, even use of the same or a confusingly similar
mark for both products would not be likely to cause
confusion. But here the marks are not confusingly similar.
Petitioner’s mark is SIMI; respondent’s mark is SIMI DOCTOR.
The word DOCTOR in respondent’s mark is a somewhat strange
element and therefore noticeable and eye-catching, and its
presence creates a mark that is distinctively different from
SIMI in appearance, pronunciation, connotation and
commercial impression.22

22 Petitioner had argued that, because baking soda has health
care uses, the additional element DOCTOR in respondent’s mark is
suggestive and entitled to less weight in the comparison of the
marks. Even if we were to accept petitioner’s contention that
baking soda has cleansing and anti-chafing applications, the term
DOCTOR in respondent’s mark actually emphasizes the differences
in the goods, in that DOCTOR suggests the non-food uses of baking
soda. Moreover, this suggestive meaning of DOCTOR (a connotation
that is totally lacking in SIMI per se) causes SIMI DOCTOR to
differ significantly from SIMI in connotation and commercial
impression.

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
46
After weighing all the relevant du Pont factors, we
find that petitioner has failed to prove that SIMI DOCTOR
for baking soda is likely to cause confusion with SIMI for
wine (or for any of the goods for which petitioner has
common law rights). The petition to cancel Registration No.
2220628 is dismissed.
The final registration that petitioner seeks to cancel
is Registration No. 2226361 for SIMI TI MOTO for seasonings.
Turning first to the goods, respondent’s goods are broadly
identified as “seasonings.” According to the testimony of
Mr. Saati and the exhibits introduced therewith, the actual
item on which respondent uses the mark is MSG. However,
because the identification is not so limited, we must view
the registration as encompassing spices, including salt and
pepper.
A review of the evidence shows that spices may be used
in the same recipes in which wine is used, or may be used to
make meals with which wine is served. The “food affinities”
section of The Vintner’s Table Cookbook even lists spices
that go well with particular types of wine, e.g., white
pepper is a food affinity of chardonnay; cinnamon is a food
affinity of rosé and blush wines. Clearly, spices and wine
may be used in cooking the same recipes, and wine may be
served at a meal in which spices are ingredients of the
food. However, spices are used so universally in cooking
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
47
that we cannot conclude the goods are related simply because
of this.
As noted previously, petitioner has made of record
excerpts from magazines that show advertisements for food
items and advertisements for wine appear in the same
publication. The only advertisement that we have found that
is arguably for a seasoning is one for Tabasco sauce in the
May 2003 issue of “Food & Wine” magazine, Exhibit 5 to
petitioner’s third notice of reliance. (The term
"seasonings," as that identification is interpreted, does
not include sauces or condiments.) A single advertisement
for Tabasco sauce that appears in a magazine in which
advertisements for wine appear elsewhere is not sufficient
to demonstrate that seasonings and wine are related goods.23
There is also an article entitled “What Do You Drink
with Curry?” from the September 2001 issue of “Bon Appetit”
(Exhibit 3 to petitioner’s third notice of reliance); it
discusses wine pairings with dishes from non-European
cuisines, as well as from Greek cuisine. Two pages of the
article are missing, but the portion that is available
discusses such things as a particular restaurant’s

23 On the other hand, a single advertisement in which two
products are advertised together, such as the one in the May 2003
issue of “The Soul of Mexico” (Exhibit 9 to petitioner’s third
notice of reliance), in which Dannon yogurt and Dole pineapple
chunks are advertised together, would have some probative value
to show relatedness of goods.

Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
48
“signature dressing, a lively combination of lemon, olive
oil, oregano, garlic, salt and pepper” and mentions a
“crisp, lemon-and-mineral-tinged white wine from Boutari”
that the restaurant’s general manager would recommend with
it. Again, the mere fact that wine may be chosen so that it
would work well with a food that is made with particular
spices is not sufficient to show that consumers would assume
that wine and seasoning would emanate from the same source.
With respect to the third-party registrations, we have
already pointed out that most do not have any or have very
little probative value.24 The registrations that include
both wine and spices or seasoning are quite limited:
Registration No. 2672670 for VILLA PANDOLFELLI and design
(inter alia, wine and seasonings); Registration No. 2203786
for CANARIO and design (inter alia, wine, seasoning and
minced garlic); Registration No. 1286155 for HONG MEI and
design (inter alia, wines, table salt and MSG) and two
registrations, discussed supra, owned by Cipriani Group,
Inc., for CIPRIANI FOOD and for a design mark and covering a
range of food products, including, inter alia, “meat
extracts; preserved dried and cooked fruits and vegetables;

24 See footnote 18; the discussion supra at p. 38 regarding
Registration Nos. 2273272 for SEREGO ALIGHIERI, 2104535 for
MARCHESI INCISA DELLA ROCCHETTA and 2237004 for DEMEL and design;
the discussion supra at 40 regarding Registration No. 1553878 for
SPORTSERVICE (which includes salt and pepper in addition to,
inter alia, hamburger sandwiches, managing food, beverage,
program distribution, and vending machine rental services and
photographic services).
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
49
jellies; jams; eggs, milk, and other dairy products
(excluding ice cream, ice milk and frozen yogurt), edible
oils and fats; fruit preserves, pickles” in addition to
pepper and spices. There is also a registration, No.
1383865 for LA TASTE, but it covers, in addition to food
items including spices and wine, bath oil, toilet water and
shampoo. Because of the range of goods in the latter
registration, it is of little probative value in
demonstrating that all the goods listed therein are related.
All in all, we cannot conclude from the limited number of
third-party registrations that it is common for parties to
sell both wine and spices, and to sell them under a single
mark.
Petitioner has submitted 38 pages from Internet
websites (exhibit 4 to Fondiller dep.) with
advertising/ordering information for a large number of gift
baskets that contain wine, along with other goods such as
cheese, wine glasses, crackers, candy, cookies and smoked
almonds. After a thorough review of all of the items listed
in the various gift baskets, we have found only two that
include what can be characterized as wine and seasonings:
“The Chef’s Bowl” lists sherry, garlic paste and “Flavor
Bank Pepper Royale” along with, inter alia, pasta sauce,
olive oil, tomato paste, romano cheese and a chocolate bar;
“That’s a Italian!” contains Italian wine and a jar of
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
50
minced garlic along with, inter alia, marinara sauce, olive
oil and candy. This very limited number of baskets in which
spices are included along with wine is not sufficient for us
to conclude that spices and wine would be viewed as
complementary products.
Thus, after reviewing all the evidence of record, we
are hard pressed to find that wine and seasonings are
related. Moreover, to the extent that this factor slightly
favors petitioner, it is far outweighed by the differences
in the marks, as discussed below.
As previously noted, the registration includes a
statement that “The English translation of the Patois term
‘ti’ is ‘little.’ The English translation of the Indonesian
term ‘moto’ is ‘seasoning.’” Our analysis of the similarity
of the marks must therefore take into consideration the
doctrine of foreign equivalents, in which foreign words from
common languages are translated into English to determine
their degree of confusing similarity to English word marks.
See In re Ness & Co., 18 USPQ2d 1815 (TTAB 1991).
Respondent’s mark presents a somewhat unusual situation,
however, because it consists of words in two different
“languages,” Indonesian and Patois. We take judicial notice
that “patois” is defined both as “any subliterate regional
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
51
French dialect” and “any regional dialect.”25 If we view TI
as being a word in a French dialect, someone who speaks
Indonesian is not likely to understand the TI portion of the
mark, and would view the mark as the arbitrary words SIMI TI
with the generic term for “seasoning” appended to it. For
such Indonesian-speaking consumers, such a mark has a very
different connotation and commercial impression from SIMI
per se. However, if the “any regional dialect” definition
of Patois applies, TI could be considered a word in a
regional Indonesian dialect. If such consumers did not also
speak Indonesian, they would see the mark as composed of the
arbitrary terms SIMI and MOTO, and perhaps would view TI as
meaning “little” or, more likely, would not ascribe any
meaning to TI because it is in the middle of, to them, two
“nonsense” words. Only a consumer who speaks both
Indonesian and this Indonesian Patois is likely to
understand the mark as meaning SIMI LITTLE SEASONING, and
even this is somewhat questionable, since it is unclear
whether such a consumer would realize that two words from
different languages/dialects were being combined in a single
mark.

25 The American Heritage Dictionary of the English Language,
© 1970. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
52
The difficulty in assessing the connotation or
commercial impression of respondent’s mark is that, based on
this record, we do not know whether Indonesian speakers in
the United States would be aware of the Patois term TI or,
for that matter, whether Patois speakers in the United
States would be aware of the Indonesian word MOTO, or
whether those who understand both languages would treat the
mark as being a combination of languages and view it as
“SIMI LITTLE SEASONING.”
In view of this uncertainty, we cannot say that SIMI
and SIMI TI MOTO convey the same connotations and commercial
impressions. Certainly the marks are different in
appearance and pronunciation, with the TI portion of
respondent’s mark presenting a rhyming aspect with the SIMI
portion that is totally absent in SIMI per se.
Moreover, the du Pont factor of “the extent of
potential confusion, i.e., whether de minimis or
substantial” is applicable to this situation, in that it
would appear that a very small number of consumers in the
United States would be familiar with both the Indonesian
language and the Patois dialect in which TI is a word. This
factor favors respondent.
As for consumers in the United States who are
unfamiliar with either the Indonesian word “MOTO” or the
Patois term “TI,” SIMI TI MOTO differs significantly from
Cancellation Nos. 92030168; 92031424; 92031728; 92031786 and
92031877
53
SIMI in appearance, sound, connotation and commercial
impression. Although respondent’s mark does contain the
element SIMI, the terms TI and MOTO change the impression of
the mark. Not only does the element TI add a rhyming
component to SIMI, but MOTO, with its two consonants each
followed by the same vowel, mimics the structure of the
initial element SIMI. As a result, SIMI TI MOTO will be
viewed as a unitary mark, rather than as SIMI with other
elements added to it. Thus, the factor of the similarity or
dissimilarity of the marks favors respondent.
Accordingly, after considering all of the applicable du
Pont factors, we find that petitioner has failed to prove
that SIMI TI MOTO for seasoning is likely to cause confusion
with petitioner’s mark SIMI for wine.
Decision: The petition for cancellation with respect
to Registration No 2389146 for SIMI in stylized form for,
inter alia, wine vinegar (Cancellation No. 92031424), is
granted; the petitions for cancellation of Registration No.
2219750 for the mark SIMI in Class 29 (Cancellation No.
92031877) and in Class 32 (Cancellation No. 92030168) and
for cancellation of Registration No. 2220628 for SIMI DOCTOR
(Cancellation No. 92031786) and Registration No. 2226361 for
SIMI TI MOTO (Cancellation No. 92031728) are dismissed.