Barriga

Trademark Trial and Appeal Board

Jul 25, 2008

No. 76624363 (T.T.A.B. Jul. 25, 2008)

Mailed: July 25, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Barriga
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Serial No. 76624363
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Pamela S. Burt of Weiner & Burt, P.C. for Cristian
Cremaschi Barriga.

Napoleon K. Sharma, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).1
_______

Before Quinn, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Cristian Cremaschi Barriga has filed an application to
register the mark ARAUCO (in standard character form) for
“wines originating in Chile” in International Class 33.2

1 A different examining attorney examined the application; the
application was assigned to the present examining for preparation
of the appeal brief.
2 Application Serial No. 76624363 was filed on December 9, 2004,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce (Section 1(b) of the Act) and under Section
44(e) of the Act, based upon Chilean Registration No. 701,748,
which issued on August 30, 2004. The application includes a
statement that “The English translation of ‘Arauco’ is ‘water
clay.’”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76624363
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s goods, so resembles the mark ARAUCANO, which is
registered for “wines,”3 as to be likely to cause confusion,
mistake or deception.
Applicant and the examining attorney have filed
briefs.
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., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any
likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See

3 Registration No. 3073723, issued March 28, 2006. The
registration includes a statement that “The English translation
of the mark is ‘ARAUCANIAN,’ a word to designate people who come
from Araucania, a part of Chile.”
Ser No. 76624363
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Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Considering first the goods, because registrant’s
“wines” encompass applicant’s “wines originating in Chile,”
the goods are legally identical. Applicant has not argued
to the contrary. Moreover, in the absence of any
limitations in the respective identifications of goods as
to channels of trade and classes of purchasers, we must
presume that the respective goods would move through the
same channels of trade (e.g., wine shops and grocery
stores) to the same classes of purchasers (e.g., wine
connoisseurs as well as ordinary purchasers). See In re
Elbaum, 211 USPQ 639 (TTAB 1981). Indeed some wines are
relatively inexpensive, and therefore, may be bought
without a great deal of purchasing care or deliberation.
Thus, the factors of the similarity of the goods, trade
channels, and conditions under which and purchasers to whom
sales are made favor a finding of likelihood of confusion.
Turning next to a consideration of the marks, we keep
in mind that when marks would appear on identical goods,
the degree of similarity in the marks 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).
Ser No. 76624363
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The trademark examining attorney contends that the
marks are similar in appearance and sound because each
begins with “ARAUC.” Further, it is the examining
attorney’s position that the marks are highly similar in
meaning and commercial impression because “Arauco”
identifies a province in Chile that once covered the
territory occupied by the “Araucano” people. In this
regard, the examining attorney submitted an excerpt from
the “Answers.com” web site (http://www.answers.com) which
states as follows:
Arauco Province
Arauco, a coastal province of southern Chile,
bounded N., E. and S. by the provinces of
Concepcion, Bio-Bio, Malleco and Cautin. Area,
2448 sq. mi.; pop. (est. 1902) 70,635. The
province originally covered the once independent
Indian territory of Araucania, but this was
afterwards divided into four provinces.

In addition, the examining attorney submitted an Internet
printout from applicant’s web site which states in
pertinent part, that:
The Viñedos Arauco winery comes with a strong
backing. Its name recalls the strength and
vitality of Chile’s original inhabitants, the
Araucanos, which means “men of the earth” and
reflects their concern with nature, forests,
mountains, the sun and the moon.

Applicant, in urging reversal of the refusal to
register, argues that the marks have different meanings.
Applicant contends that in the original language of the
Ser No. 76624363
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natives of Chile, applicant’s mark ARAUCO means “water
clay,” while the cited registered mark ARAUCANO means
“Araucanian,” which designates people who come from
Araucania, a part of Chile.
In terms of sound, applicant argues that its mark
ARAUCO has only three syllables, with the accent on the
second syllable, whereas the cited registered mark ARAUCANO
has four syllables, with the accent on the third syllable.
In terms of appearance, applicant argues that the marks
differ because they have different endings. Thus, it is
applicant’s position that on close inspection, the marks
are not similar in sound or appearance.
With respect to the marks, we must determine whether
applicant’s mark and the cited registered mark, when
compared in their entireties, are similar or dissimilar in
terms of sound, appearance, connotation and commercial
impression. Furthermore, 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 terms of their commercial impression 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.
Ser No. 76624363
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See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). This is particularly true for goods such as those
involved herein which can be inexpensive and may be
purchased without great care.
In this case, we find that the marks ARAUCO and
ARAUCANO are similar in appearance and sound. As the
examining attorney points out, both marks begin with
“ARAUC.” In our view, the differences in the endings of
the two marks ARAUCO and ARAUCANO are slight, and consumers
are not likely to note such differences. Further, if one
sounds out the marks ARAUCO and ARAUCANO, the aural
differences are not substantial. In this regard, it must
be remembered that there is no correct pronunciation of a
trademark. See In re Belgrade Shoe, 411 F.2d 1352, 162
USPQ 227 (CCPA 1969).
In terms of meaning, although applicant asserts that
the marks have different meanings when translated, we are
not persuaded that an appreciable number of American
consumers would be familiar with the meanings of either of
the marks. As applicant itself has noted, the translation
of ARAUCO as “water clay” is based on the original language
of the natives of Chile. Also, we note that applicant
submitted printouts from the Spanish Language Academy
dictionary and Random House Webster’s Unabridged Dictionary
Ser No. 76624363
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which show the absence of entries for the term “Arauco.”
Thus, consumers are not likely to be aware of the meaning
of applicant’s mark ARAUCO. With respect to the cited
registered mark, the translation statement in the
registration indicates that ARAUCANO designates people who
come from Araucania, a part of Chile. Again, however,
consumers are not likely to be aware of the part of Chile
known as Araucania, much less the name of its inhabitants.
Thus, we are not persuaded that consumers seeing ARAUCO for
wines from Chile will think of “water clay” or consumers
seeing ARAUCANO for wines will think of people from
Araucania, Chile. Rather, we believe most Americans would
perceive both ARAUCO and ARAUCANO as arbitrary terms, or
possibly as words from a foreign language, probably
Spanish, when used in connection with wines.
Thus, when considered in their entireties, we find
that the marks ARAUCO and ARAUCANO are similar in sound,
appearance and overall commercial impression. The factor
of the similarity of the marks favors a finding of
likelihood of confusion.
An additional argument made by applicant requires
comment. Applicant contends that both its mark and the
cited registered mark are the subject of Chilean and
European Community Trademark registrations and that the
Ser No. 76624363
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coexistence of such registrations is “strong proof” that
there is no likelihood of confusion between the respective
marks. (Brief at p. 11) Applicant submitted copies of
these registrations. Suffice it to say that the existence
of these foreign registrations does not obviate the
requirements under the Trademark Act that no likelihood of
confusion exist between applicant’s mark and a prior
registered mark.
In view of the foregoing, we conclude that purchasers
who are familiar with the cited registered mark ARAUCANO
for wines would be likely to believe, upon encountering the
similar mark ARAUCO for wines from Chile, that such legally
identical goods emanate from the same source.
To the extent we have any doubt, we resolve it as we
must, in favor of the registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988);
In re Pneumatiques, Caoutchouc Manufacture et Plastiques
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed.