Cielo S.p.A.v.Austin House of Prayer

Trademark Trial and Appeal Board

Sep 14, 2007

No. 91166590 (T.T.A.B. Sep. 14, 2007)

Mailed: September 14, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Cielo S.p.A.
v.
Austin House of Prayer
_______

Opposition No. 91166590
to Application No. 78493020
filed on October 1, 2004
_______

Paulette R. Carey of Buchman Law Firm for Cielo S.p.A.

Susan J. Hightower of Pirkey Barber for Austin House of
Prayer.
_______

Before Hairston, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Cielo S.p.A. filed its opposition to the application of
Austin House of Prayer to register the mark CIELO in
standard character format for “drinking water,” in
International Class 32.1 The application includes the

1 Application Serial No. 78493020, filed October 1, 2004, based upon use
in commerce, alleging first use as of September 2, 2004 and use in
commerce as of September 28, 2004.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91166590
2
statement that the foreign wording in the mark translates
into English as sky or heaven.
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered mark
CIELO for “wine”2 as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of the claim.
The Record
The record consists of the pleadings; the file of the
involved application; and a certified status and title copy
of opposer’s Registration No. 2384406 and opposer’s requests
for admissions,3 made of record by opposer’s notice of
reliance. The record also includes the testimony affidavit4
by opposer of Pierpaolo Cielo, opposer’s marketing and sales
manager, and the testimony affidavit by applicant of Tom
Jones, a member of applicant’s board of directors, both with

2 Registration No. 2384406, issued September 12, 2000, in International
Class 33. The registration includes the statement that the English
translation of "CIELO" is "sky" or "heaven." [Sections 8 and 15
affidavits have been accepted and acknowledged, respectively.]

3 Opposer submitted its requests for admissions by notice of reliance
and noted in its brief that the admissions should be deemed admitted in
view of applicant’s failure to respond thereto. Applicant acknowledges
that it did not respond to the requests for admissions and that they are
deemed admitted (brief, p. 1). Therefore, we deem the admissions to be
admitted by applicant.

4 The parties filed a written stipulation to the submission of testimony
by affidavit.

Opposition No. 91166590
3
accompanying exhibits. Both parties filed briefs on the
case.
Factual Findings
The following admissions, deemed admitted by applicant,
are particularly relevant facts:
3. The applied-for mark … is identical to the
registered mark ….

4. The respective products, bottled water and
wine, are sold through the same retail outlets
in some jurisdictions.

5. Consumers who purchase bottled water may also
purchase wine.

6. Bottled water and wine may be served together.

Based on Mr. Cielo’s affidavit, we find that opposer
sells its wines in the United States through restaurants and
retail stores. In the absence of additional evidence, we
decline to make factual findings, based only on Mr. Cielo’s
conclusory statement, about the purchasers and trade
channels of bottled water and the extent to which such might
be the same as the purchasers and trade channels of wine.
Based on Mr. Jones’ affidavit, we find that applicant
sells its drinking water through, at least, Whole Foods
Market in Texas; and that applicant’s annual sales, at the
time of the affidavit, were approximately 33,000 gallons of
water sold in various-sized bottles.
Opposition No. 91166590
4
Analysis
Because opposer has properly made its pleaded
registration of record, and because opposer’s likelihood of
confusion claim is not frivolous, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registration is of record, Section 2(d) priority is not an
issue in this case as to the mark and goods covered by said
registration. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We add that
applicant in its answer admitted opposer’s priority of use
and registration.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
Opposition No. 91166590
5
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
Turning, first, to the marks, there is no question that
the marks are identical, which applicant has admitted.
However, applicant argues in its brief that applicant’s
admission must be construed as pertaining only to the visual
appearance of the marks and that the connotations and
pronunciations of the marks are different. Applicant’s
position is not well taken. It is well established that, in
considering the similarities of the marks, we consider all
of the relevant factors, i.e., sight, sound, connotation and
commercial impression. Therefore, the admission that the
marks are identical encompasses these relevant factors.
Further, we find the marks identical even if we
consider applicant’s admission to be limited to the visual
appearance of the marks. The marks are identical in
connotation in view of the identical translations noted in
Opposition No. 91166590
6
both the application and the registration. The fact that
opposer’s mark may appear on a label that includes the word
“famiglia” is not relevant in this case because the
registered mark does not include the term “famiglia,”
opposer is not limited to using the registered mark with the
term “famiglia,” and opposer has not pleaded or established
its use of the unitary mark “Famiglia Cielo.” Regarding the
pronunciation of the respective marks, applicant correctly
admits in its brief (p.8) that there is “no correct
pronunciation of any particular mark.” See Centraz
Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698,
1701 (TTAB 2006) (There “is no correct pronunciation of a
trademark, and it obviously is not possible for a trademark
owner to control how purchasers will vocalize its mark”).
Applicant argues that the additional Italian wording on
opposer’s wine label, which is in the record, will suggest
the Italian pronunciation to consumers, while the references
to Austin, Texas, on applicant’s bottled water label, which
is in the record, will suggest the Spanish pronunciation to
consumers due to Austin’s proximity to Mexico. Even if
applicant could establish, which it has not, that the
parties promote their respective marks with different
pronunciations and that the word “cielo” is pronounced
differently in Spanish and Italian, these facts would be
legally insignificant. We find it likely that relevant
Opposition No. 91166590
7
consumers in the United States will use either the Spanish
or Italian pronunciations if they are different, or
altogether different pronunciations, in equal measure with
respect to the marks for both products. The factor of the
identity of the marks weighs heavily in opposer’s favor.
We consider, next, the respective goods of the parties.
It is a general rule that goods or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that goods
or services are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. Recot, Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
Opposer argues that “the Board has consistently held
that alcoholic beverages and non-alcoholic beverages may be
so related as to be likely to generate confusion when
similar marks are used thereon” (brief, p. 4), citing In re
Rola Weinbrennerei und Likofabrik GmbH & Co. KC, 223 USPQ 57
Opposition No. 91166590
8
(TTAB 1984). Opposer contends, further, that the trade
channels of the respective goods are unlimited and likely to
overlap; and that, in view of applicant’s admissions, the
record establishes that “both products are sold to the same
class of purchasers under similar circumstances” (brief, p.
4), citing Kraft, Inc. v. Country Club Food Industries,
Inc., 230 USPQ 549 (TTAB 1986).
Citing numerous cases in which no likelihood of
confusion was found, applicant argues that there is no per
se rule that alcoholic and non-alcoholic beverages are
related. Applicant also contends that there is no evidence
that drinking water and wine are complementary goods; that
it is unlikely that these goods are mixed together or served
together; and that, if these goods are sold in some of the
same stores, there is no evidence that they are sold in
proximity to each other within the stores. Applicant notes
three marks referenced by Mr. Jones in his affidavit in
support of its contention that identical marks for wine and
drinking water, owned by different parties, may co-exist on
the Principal Register.5 Applicant also argues that wine
and bottled water are dissimilar because they are classified

5 Applicant did not properly make these registrations of record.
Therefore, this statement is of little probative value as we have no
evidence of the ownership or status of the registrations, the identified
goods, or other pertinent facts, such as the strength of the respective
marks.

Opposition No. 91166590
9
in different international classes.6 Regarding the trade
channels, applicant contends that the parties sell their
respective goods in different geographic areas; that there
is no evidence that opposer sells its wines in grocery
stores, which is the only trade channel in evidence with
respect to applicant’s goods; and that there is no evidence
that applicant’s goods are sold in restaurants.
We find the noted admissions by applicant sufficient to
warrant the conclusion that the trade channels and
purchasers of drinking water and wine are, at least,
overlapping. The fact that the parties may not presently
sell their respective goods in the same geographic areas is
not relevant to the issue of registrability, which is
national in scope. For the same reason, it is immaterial
that the parties’ products “are sold through the same retail
outlets” in only some jurisdictions (admission no. 4). The
record shows that applicant sells its product in a grocery
store, and this type of store is encompassed within the
designation “retail outlets,” in which opposer sells its
product. The fact that applicant may not sell its drinking
water in restaurants is, likewise, immaterial in view of the
other overlapping areas of sale. The factors of the trade

6 The International Classification system is used by the USPTO for the
purpose of administrative ease. It is not relevant and is legally
insignificant as a factor in determining what, if any, relationship
exists between goods.

Opposition No. 91166590
10
channels and classes of purchasers, thus, weigh in opposer’s
favor.
However, there is little evidence in the record from
which the Board can draw conclusions about whether, or the
extent to which, there is a relationship between the
identified goods. The mere fact that both products are
consumable liquids that are sold to some of the same
purchasers through some of the same retail outlets is
insufficient to reach the conclusion that the goods are
sufficiently related such that, as identified by identical
marks, confusion as to source is likely. There is no
evidence that, in the marketplace, wine and drinking water
ever emanate from the same source, or that they are marketed
under the same marks, or that the circumstances surrounding
the sales of wine and drinking water are such that consumers
would believe that they come from the same source. While
both wine and water may be consumed at a meal, there is no
evidence that they are complementary products. Nor is there
evidence that these products are sold in proximity to each
other in retail outlets. We agree with applicant that there
is no per se rule regarding the relationship between
drinking water and wine. In the Rola case, supra, cited by
opposer, the Board emphasized that, while there is precedent
finding a relationship between alcoholic and non-alcoholic
beverages, it is dependent on the factual circumstances.
Opposition No. 91166590
11
The Board, in Rola, supra at 58, made the following
statement:
Decisions of this Board and its reviewing courts
have made clear that, in appropriate factual
contexts, alcoholic beverages and non-alcoholic
beverages or non-alcoholic drink mixes may be so
related as to be likely to generate confusion when
similar marks are used thereon. [citations
omitted; emphasis added.]

. . . The critical question, however, is not
whether these products may be used or mixed
together (although that is a factor to be
considered) but rather whether, as beverages and
beverage derivatives, they bear such a
relationship that purchasers would be led to
believe that they emanated from or were connected
with a common source. Here, the striking
similarity of the SUNAPPLE marks plus their common
identification with drinks having apple flavoring
generates substantial doubt in the Board's mind
that likelihood of confusion could be avoided for
purchasers confronted with the marks (hyphenated
or otherwise) on these products. Under existing
case precedent, we are required to resolve such
doubt in favor of the prior registrant.

In the case before us, the factual circumstances
surrounding the marketing and sale of the respective
products are insufficiently developed. We find the lack of
an established relationship between the goods to be the
determinative factor in this case, despite the identity of
the marks and the overlapping channels of trade and common
purchasers.7 Therefore, we conclude that opposer has not
established a likelihood of confusion.
Decision: The opposition is dismissed.

7 Applicant argues that certain du Pont factors about which there is no
evidence in this record weigh in applicants favor. We note, however,
that these factors not relevant herein are, instead, neutral.