Bodegas Portia, S.L.

Trademark Trial and Appeal Board

Nov 7, 2008

No. 79032493 (T.T.A.B. Nov. 7, 2008)

Mailed: November 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bodegas Portia, S.L.
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Serial No. 79032493
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Justin R. Young of Dineff Trademark Law Limited for Bodegas
Portia, S.L.

Daniel Brody, Trademark Examining Attorney, Law Office 115
(J. Brett Golden, Acting Managing Attorney).
_______

Before Holtzman, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Bodegas Portia, S.L. to
register on the Principal Register the mark shown below for
“alcoholic beverages, namely, wines.”1

1 Application Serial No. 79032493 was filed on October 20, 2006
seeking an extension of protection under Section 66(a) of the
Trademark Act as amended, based upon International Registration
No. 0907488, issued on October 20, 2006.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 79032493
2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s
goods, so resembles the mark SUMMA VINEYARD, previously
registered on the Principal Register in typed or standard
character form for “wine”2 as to be likely to result in
confusion as to the source of those goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed main briefs
and applicant filed a reply brief.
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., 476 F.2d

2 Registration No. 2222858 issued on February 9, 1999 with a
disclaimer of VINEYARD. Section 8 affidavit accepted; Section 15
affidavit acknowledged.

Ser No. 79032493
3
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). 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 Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., supra.
The Goods
First, we turn to the second du Pont factor, i.e., the
similarity or dissimilarity between the recited goods. In
making our determination, we look to the goods as
identified in the involved application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
Ser No. 79032493
4
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”)
In this case, applicant’s goods, identified as
“alcoholic beverages, namely, wines” are virtually
identical to registrant’s “wine.” We are not persuaded by
applicant’s argument that because its wine originates in
Spain and registrant’s wine originates in California,
consumers are likely to distinguish between them based upon
differences in their labeling, marketing, and relative
locations in retail outlets. Because there are no
restrictions recited either in applicant’s or registrant’s
identification of goods, the wine identified in both must
be considered to be identical; and we must therefore
presume that applicant’s and registrant’s wines are sold in
the same channels of trade to the same classes of
purchasers. See Octocom, supra; and Paula Payne, supra.
We note, in addition, that applicant “concedes that it may
be true that both [its] and Registrant’s goods are related
and may be sold through similar or same channels of
distribution” (brief, p. 4).
The Marks
We turn then to the first du Pont factor, i.e.,
whether applicant’s mark and the mark in the cited
registration are similar or dissimilar when compared in
Ser No. 79032493
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their entireties in terms of appearance, sound, connotation
and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under
this du Pont factor, 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 overall 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.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
In this case, we note that applicant’s mark,
Ser No. 79032493
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is similar to the cited mark, SUMMA VINEYARD, in appearance
to the extent that both contain the word SUMMA. However,
the marks are dissimilar in appearance in that applicant’s
mark prominently contains the word PORTIA in bold letters
in its center, surrounded by a circle and rectangle design,
with the word SUMMA in much smaller and fainter letters
beneath the right portion of the word PORTIA. A potential
consumer viewing applicant’s mark will be drawn first to
the word PORTIA, displayed in large size and bold
presentation, then to the large geometric design, prior to
noticing the small and faint word SUMMA. As such, the word
PORTIA is the dominant portion of applicant’s mark, and its
presence, as well as that of the distinctive design element
therein, renders applicant’s mark notably dissimilar from
that of registrant in appearance. The marks are further
dissimilar in appearance in that the mark in the cited
registration contains the word VINEYARD which, while
Ser No. 79032493
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disclaimed and obviously descriptive of registrant’s goods,
nonetheless is absent from applicant’s mark.
With regard to sound, we note that applicant’s mark is
similar to the mark in the cited registration in that there
is nothing in the record to suggest that SUMMA would not be
identical in pronunciation in both marks. However, the
marks are dissimilar in sound due to the presence of the
dominant word PORTIA in applicant’s mark and the word
VINEYARD in that of registrant. Thus, the word portion of
applicant’s mark, i.e., PORTIA SUMMA, differs in sound from
registrant’s mark, SUMMA VINEYARD.
With regard to the overall impression conveyed by the
marks, we note that the meaning or connotation of a mark
must be determined in relation to the recited goods. See
In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987);
and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
In this case, applicant’s mark is similar to that of
registrant in that the word SUMMA in both conveys the
notion of the highest part.3 However, the marks are
dissimilar in that the applicant’s mark also contains the
seemingly arbitrary woman’s name PORTIA, and thus conveys

3 In that regard, applicant made of record dictionary definitions
from archives.nd.edu and freedict.com, both of which define
“summa” as the highest part; whole; sum.

Ser No. 79032493
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the notion that Portia is the highest, whereas registrant’s
mark connotes the highest vineyard.
In addition, applicant relies upon evidence taken from
commercial Internet websites in which the term SUMMA
appears in the context of wine. The following examples are
illustrative:
2006 Sauvignon Blanc, Summa Quies Vineyard
(Okanagan Valley)
(appellationamerica.com/wine-reviews);

2002 Campus Oak Lodi Summa Cum Laude Old Vine
Zinfandel
(openbottles.com/wine);

Marques de Grinon Summa 2002
(wine.com);

A new edition of high profile Summa tasting took place
in picturesque Magre that is located in Alto Adige in
the north-east of Italy… .
(eleonorascholes.ru); and

Summa Vitis
Summa Vitis is dedicated to seeking out and
distributing the best examples of excellence in
Italian artisinal wine-making… .
(summavitis.com).

We note that the probative value of this evidence is
limited because applicant presented no evidence concerning
the extent to which these third-party designations
containing the word SUMMA are used in commerce. See Palm
Bay Imports, supra. Nonetheless, the evidence suggests
that the term SUMMA is not unique to registrant in the
Ser No. 79032493
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field of wine, and is used by others to identify their
wineries, wines, and wine tasting events.
Based upon the foregoing, we find that the
dissimilarities between applicant’s mark and the mark in
the cited registration outweigh the similarities,
particularly given presence of other dominant, distinctive
matter in applicant’s mark as well as the relative weakness
of SUMMA, the only element common to both. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 182 USPQ 108, 110 (CCPA
1974). See also Colgate-Palmolive Co. v. Carter-Wallace,
Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970); and Sure-fit
Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117
USPQ 295 (CCPA 1958). Thus, the first du Pont factor
regarding the dissimilarity of the marks strongly favors
applicant.
Thus, we find that despite the identity of the goods,
the marks are sufficiently dissimilar that confusion is not
likely between applicant’s mark and the mark in the cited
registration.
Decision: The refusal to register is reversed.