California Wineries & Vineyards LLC

Trademark Trial and Appeal Board

Jun 30, 2020

88144856 (T.T.A.B. Jun. 30, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re California Wineries & Vineyards LLC
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Serial No. 88144856
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Kayla Jimenez of US IP Attorneys, P.C.,
for California Wineries & Vineyards LLC.
Wendell S. Phillips III, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Mermelstein, Coggins, and Johnson,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
California Wineries & Vineyards LLC (“Applicant”) seeks registration on the
Principal Register of the mark for “wine” in International Class 33.1 The
Trademark Examining Attorney refused registration under Section 2(d) of the

1 Application Serial No. 88144856 filed October 5, 2018, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in
commerce since at least as early as February 13, 2018. Applicant describes its mark as
follows: The mark consists of the word “vivo” in lowercase font with a short bar above both
the letter “i” and the letter “o”; Color is not claimed as a feature of the mark; and The English
translation of VIVO in the mark is ALIVE.
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Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, so resembles the standard character mark
ROJO VIVO for “wine” in International Class 33,2 on the Principal Register as to be
likely to cause confusion, to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address evidentiary matters.
Applicant, for the first time in its main brief, attached printouts from three websites
purporting to show translations of the term “red wine” from English to Spanish.3 The
Examining Attorney objected to this material as untimely. 9 TTABVUE 3. Applicant
acknowledged the objection, argued “that the Board may take judicial notice of the
translations and dictionary definitions and therefore consider the evidence,” 10
TTABVUE 5, and for the first time in its reply brief, attached several additional
printouts from a website purporting to show translations of the words “playa,”
“escudo,” and “diablo,” from Spanish to English,4 and website printouts purporting to

2 Registration No. 3799751, issued June 8, 2010; Section 71 (ten-year) declaration accepted.
3 See main brief Exhibit A (7 TTABVUE 21-39). The printouts are from dictionary.cambridge.
org/dictionary/english-spanish, spanishdict.com, and collinsdictionary.com/us/dictionary/
english-spanish.
4 See reply brief Exhibit 1 (10 TTABVUE 8-18). The printouts are from collinsdictionary.com/
dictionary/spanish-english.
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show that “online versions of Cambridge Dictionary and Collins English-Spanish
Dictionary can be purchased in print form.”5 10 TTABVUE 6, n.11.
Applicant is correct that the Board may take judicial notice of dictionary
definitions. During an appeal, the Board may take judicial notice of dictionary
definitions retrieved from online sources when the definitions themselves are derived
from dictionaries that exist in printed form or have regular fixed editions, including
definitions in translation dictionaries and online dictionaries. See In re White
Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial
notice of online dictionaries that exist in printed format or have regular fixed
editions); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 n.3 (TTAB 2008) (judicial
notice taken of definition in CASSELL’S SPANISH-ENGLISH ENGLISH-SPANISH
DICTIONARY). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) § 1208.04 (2019). Accordingly, we have considered the translations from
the Collins and Cambridge resources, but not from Span¡shD!ct which was not shown
to exist in printed form or have a regular fixed edition. Nonetheless, we remain
mindful that the Examining Attorney had no opportunity to rebut or otherwise
comment on the translations of the words “playa,” “escudo,” and “diablo” submitted
with the reply. We have considered all of Applicant’s other evidence as originally filed.

5 See reply brief Exhibit 2 (10 TTABVUE 19-26). A printout from abebooks.com shows the
COLLINS SPANISH DICTIONARY, and a printout from amazon.com shows the DICCIONARIO
BILINGUE CAMBRIDGE SPANISH-ENGLISH.
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II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)
(“DuPont”). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). We consider each DuPont factor for which there is evidence and argument. See,
e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019). When analyzing the factors, the overriding concerns are not only to prevent
buyer confusion as to the source of the goods, but also to protect the registrant from
adverse commercial impact due to use of a similar mark by a newcomer. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
A. The Goods, Channels of Trade, and Classes of Consumers
We begin with the second and third DuPont factors. The second factor “considers
‘[t]he similarity or dissimilarity and nature of the goods or services as described in an
application or registration,”’ In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567), and the third factor
“considers ‘[t]he similarity or dissimilarity of established, likely-to-continue trade
channels.”’ Id. at 1052 (quoting DuPont, 177 USPQ at 567). Our analysis under these
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factors is based on the identifications of goods in the application and the cited
registration, not on any extrinsic evidence regarding how the marks are actually
used. Id.; In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir.
2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161-63 (Fed. Cir. 2014).
Notwithstanding Applicant’s argument and extrinsic evidence regarding the
actual scope of its own wine and Registrant’s wine, and the commercial use of the
respective marks, the goods at issue in this appeal are identical: “wine.” Applicant
seeks registration of its mark for “wine” and the cited registration is for “wine.” The
second DuPont factor thus strongly supports a finding of a likelihood of confusion.
Because the goods are identical and there are no limitations in the respective
identifications as to the channels of trade, we must also presume that the channels
of trade and classes of purchasers are identical. Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re FabFitFun, Inc., 127 USPQ2d
1670, 1672 (TTAB 2018) (citing In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012)); see Stawski v. Lawson, 129 USPQ2d 1036, 1054 (TTAB 2018);
Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011). The third DuPont factor thus also strongly
supports a finding of a likelihood of confusion.
B. Similarity of the Marks
The first DuPont factor considers the “similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression.” In
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re Detroit Athletic Co., 128 USPQ2d at 1048. “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Cai v. Diamond Hong,
127 USPQ2d at 1801 (quotation omitted). The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016)
(citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Where, as discussed above, goods are
identical, “the degree of similarity necessary to support a conclusion of likely
confusion declines.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012).
Applicant’s stylized mark is , and Registrant’s standard character mark is
ROJO VIVO. The marks are similar in appearance and sound to the extent each
contains the term VIVO.
Applicant argues that the “stylization” and “use of dashes over the ‘I’ and ‘O’” in
its mark create “a unique and memorable appearance,” while Registrant’s mark
“contains no similar design elements.” 7 TTABVUE 5. The “dashes” in Applicant’s
mark appear to be macrons, and the slight stylization of Applicant’s mark is
irrelevant because the cited mark is registered in standard characters and may be
displayed in any font style, size, or color, meaning that it can be presented in any
stylized format including a font identical to Applicant’s mark. See Trademark Rule
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2.52(a), 37 C.F.R. § 2.52(a). See also In re Viterra, 101 USPQ2d at 1909; In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (rejecting argument
that the specific style of a mark could serve as a basis for distinction from a mark in
standard character form); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983) (“[T]he argument concerning a difference in type style is not viable
where one party asserts rights in no particular display.”).
Applicant’s reliance on In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), is
inapposite because that case turned on a large design element, and, as discussed
above, applicant’s “unique design features,” 7 TTABVUE 9, are immaterial.
Specifically, in Covalinski, the composite word and design mark REDNECK
RACEGIRL, depicted as , was permitted to register over the mark
RACEGIRL, in standard characters, for legally identical goods. The design element
of that applicant’s mark was found to include “the very large, prominently displayed
letters RR,” which themselves included “a checkerboard pattern resembling a racing
flag,” as well as heart designs, while most of the literal elements of the mark were “in
relatively tiny typeface.” Id. at 1168 . We found that “[t]ogether, these graphic devices
serve not only to draw attention to the RR letters apart from the wording, but also
make the letters that form the ‘a-c-e’ of the word ‘RACEGIRL’ difficult to notice.” Id.
The present ex parte appeal, on the other hand, is nothing like Covalinski.
We recognize, as Applicant argues, 7 TTABVUE 8, that additions or deletions to
marks may be sufficient to avoid a likelihood of confusion if the marks in their
entireties convey significantly different commercial impressions. See, e.g., Shen Mfg.
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Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004)
(reversing Board’s holding that contemporaneous use of THE RITZ KIDS for clothing
items (including gloves) and RITZ for various kitchen textiles (including barbeque
mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a
different commercial impression). Applicant contends that its mark “translates
to the word ‘alive,’ which evokes a feeling of energy and liveliness,” while the cited
mark ROJO VIVO “is a phrase that means ‘red hot’ in English.” 7 TTABVUE 11. In
support of this argument, Applicant points to the translation statement in the cited
registration (which states “[t]he English translation of the foreign wording in the
mark is “RED HOT,” see January 23, 2019 Office Action, TSDR 4), and excerpts from
wikipedia.org, huffingtonpost.com, collinsdictionary.com, revolvy.com, reverso.net,
and wordmagicsoft.com (see March 22, 2019 Response to Office Action, TSDR 98-110).
Relying on this evidence, Applicant repeatedly argues that the addition of ROJO to
VIVO creates a “complete phrase” which means “red hot” in Spanish, and thus the
marks have different connotations and commercial impressions. 7 TTABVUE 6, 7,
14, 19; 10 TTABVUE 4. However, none of the website evidence adduced by Applicant
supports the assertion that “rojo vivo” is a complete phrase. The evidence reveals
that it is the three-word Spanish phrase “al rojo vivo” which is a known phrase, and
while standing on its own “al rojo vivo” translates as “red hot,” it may have other
similar meanings in different contexts.6 As to the translation statement in the

6 For example: “Al Rojo Vivo is a Spanish-language expression meaning red hot.”
(wikipedia.org) March 22, 2019 Response to Office Action, TSDR 98; and (revolvy.com) id. at
107. “Al rojo vivo, when a metal is very hot, has its English equivalent in ‘red hot’ . . . .”
(huffingtonpost.com) Id. at 101. “calentar al rojo vivo to make red hot; la atmósphera está al
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registration, we are not privy to any information that may have served as a basis for
its inclusion in the request for extension of protection underlying the cited
registration, and potential purchasers would not be aware of the translation
statement in the registration file. Cf. In re Franklin Press, Inc., 199 USPQ 819, 823
(TTAB 1978) (“disclaimers ‘slumber in the archives of the Patent Office’ because
purchasers are neither aware of them nor of their significance”).
The Examining Attorney made of record a page from Google Translate of “rojo
vivo” (i.e., Registrant’s mark – which does not contain the leading element “al”)
showing that the two words “rojo vivo” together translate from Spanish into English
as “red alive.” April 15, 2019 Office Action, TSDR 6. “[T]here is no question that
Spanish is a common, modern language.” In re La Peregrina Ltd., 86 USPQ2d at 1648.
See also In re Aquamar, Inc., 115 USPQ2d 1122, 1127 (TTAB 2015). We must
therefore assume that an appreciable segment of the U.S. marketplace understands
Spanish.7 However, on balance, given the totality of the evidence, we cannot say that
consumers familiar with the Spanish language will automatically understand ROJO
VIVO (without the leading “al”) to mean “red hot.” Even assuming they would, and
that they may indeed be capable of distinguishing the marks ROJO VIVO and
based solely on meaning and commercial impression, we must also consider those

rojo vivo the atmosphere is electric; la emoción está al rojo vivo excitement is at fever pitch.”
(collinsdictionary.com) Id. at 104. “Translate ‘al rojo vivo’ to English: red-hot . . . smoldering
. . . white-hot.” (wordmagicsoft.com) Id. at 110.
7 To this end, Applicant submitted an article which reveals that Spanish is the second most
spoken language in the United States, with more than 37 million speakers. “The Most Spoken
Languages in America” (worldatlas.com) March 22, 2019 Response to Office Action, TSDR
96.
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consumers unfamiliar with Spanish who may perceive Registrant’s brand name as a
coined or fanciful mark. Even if some Spanish speaking consumers would recognize
ROJO VIVO as “red hot,” non-Spanish speaking consumers would not. Instead, we
must note that the word VIVO in Applicant’s mark is entirely subsumed in
Registrant’s standard character mark, and “[l]ikelihood of confusion often has been
found where the entirety of one mark is incorporated within another.” Hunter Indus.,
Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2015) (finding PRECISION and
PRECISION DISTRIBUTION CONTROL to be similar). See also Stone Lion, 110
USPQ2d at 1160-61; TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
§ 1207.01(b)(iii) (Oct. 2018) (collecting such cases).
We also acknowledge the specific differences in sound pointed out by Applicant. 7
TTABVUE 7-8. However, keeping in mind that the identity of Applicant’s and
Registrant’s goods reduces the degree of similarity between the marks necessary to
find a likelihood of confusion, In re Viterra, 101 USPQ2d at 1908, and that we consider
the recollection of the average purchaser who normally retains a general rather than
a specific impression of trademarks, In re Bay State Brewing Co., 117 USPQ2d at
1960, we find that the overall similarities between the marks ROJO VIVO and
outweigh the differences. Accordingly, this DuPont factor weighs in favor of finding a
likelihood of confusion.
C. Degree of Consumer Care
The fourth DuPont factor concerns “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
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177 USPQ at 567. Although the classes of purchasers are identical, Applicant urges
us to consider the consumer sophistication and degree of purchaser care likely to be
exercised by consumers of wine. 7 TTABVUE 17-19. When considering this factor, we
are bound by the identifications of goods in the application and the cited registration,
which are not limited to sophisticated purchasers. See In re Guild Mortg. Co., 2020
USPQ2d 10279 (TTAB 2020).
Applicant argues “that a large majority of consumers (at least 68%) have
knowledge about wine and would thereby qualify as sophisticated purchasers,” 7
TTABVUE 19, and “that wine consumers simply do not make impulse decisions
before purchasing a bottle of wine.” Id. at 17. The record, however, suggests
otherwise. While approximately two-thirds of the 1,191 respondents to a survey of
the American wine consumer conducted by Sonoma State University’s Wine Business
Institute stated that they possess an intermediate, advanced, or connoisseur-level
knowledge of wine,8 “32 percent [of respondents] self-identified as knowing very little
about wine.” 4 TTABVUE 13 (A Snapshot of the American Wine Consumer in 2018).
The survey also revealed that 80 percent of respondents consider price in their wine
decision-making, id. at 14, with the most common price range for wine to drink at
home being $11 to $14.99, id. at 15. The article contains the following caveat: “Since
this survey is based on a representative sample of American wine consumers, and not
a random sample, it cannot be generalized to all wine consumers.” Id. at 16.

8 Fifty percent of consumers identified as “intermediate,” 15 percent as “advanced,” and three
percent as “connoissuers.” 4 TTABVUE 13. These percentages add up to the 68 percent that
Applicant cites.
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Nonetheless, taking the information in the article as true, the survey suggests that a
substantial number of consumers know little about wine. With a normal range of
drinking wine between $11 and $14.99, the record suggests that wine is inexpensive
and subject to impulse purchasing.
As identified, both Registrant’s goods and Applicant’s goods are “wine,” without
limitation as to purchasers, conditions of sale, or price. It therefore must be assumed
that the goods are available at all price points, including the least expensive wine,
and to all consumers of legal age to purchase wine, including ordinary consumers who
may buy inexpensive wine on impulse. See Packard Press, Inc. v. Hewlett-Packard
Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000) (must focus on
identifications, regardless of any actual marketplace evidence of “the particular
channels of trade, or the class of purchasers to which sales of the goods or services
are directed”); In re Bay State Brewing Co., 117 USPQ2d at 1960; see also Stone Lion,
110 USPQ2d at 1163-64 (recognizing Board precedent requiring consideration of the
“least sophisticated consumer in the class”). “When products are relatively low-priced
and subject to impulse buying, the risk of likelihood of confusion is increased because
purchasers of such products are held to a lesser standard of purchasing care.” Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (citations
omitted). While some wine drinkers may be discriminating purchasers, others
undoubtedly are not. We must base our decision “on the least sophisticated potential
purchasers.” Stone Lion, 110 USPQ2d at 1163 (quoting Gen. Mills, Inc. v. Fage Dairy
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Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other
grounds, 2014 WL 343267 (TTAB Jan. 22, 2014)).
Since there is no restriction in the subject application or cited registration as to
price or quality, there is no reason to infer that the consumers or purchasers of the
wine goods will be particularly discriminating or careful in distinguishing Applicant’s
wine from Registrant’s wine. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181,
1195 (TTAB 2018) (“Wine purchasers are not necessarily sophisticated or careful in
making their purchasing decisions . . . .”); Stawski v. Lawson, 129 USPQ2d at 1054;
Somerset Distilling Inc. v. Speymalt Whisky Dist. Ltd., 14 USPQ2d 1539, 1542 (TTAB
1989); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (evidence
that relevant goods are expensive, high-quality wines sold to sophisticated wine
connoisseurs must be disregarded given the absence of any such restrictions in the
application or registration). Even if we were to assume that wine drinkers are careful
purchasers, it is settled that even careful purchasers can be confused as to source
where similar marks are used on identical goods. See Weiss Assocs. v. HRL Assocs.,
902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods and
marks outweighed sophisticated purchasers, careful purchasing decision, and
expensive goods); In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970)) (“Human memories even of discriminating
purchasers … are not infallible.”). Accordingly, this DuPont factor is neutral.
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D. Summary
We find that the DuPont factors relating to the similarity of the goods, the trade
channels through which they travel, and the customers to whom they are offered, as
well as the similarity of marks all favor a finding of likelihood of confusion; and the
DuPont factor relating to the degree of consumer care is neutral.
III. Decision
The refusal to register Applicant’s mark is affirmed.