Fine Estates from Spain, Inc.

Trademark Trial and Appeal Board

Oct 10, 2008

No. 77226718 (T.T.A.B. Oct. 10, 2008)

Mailed:
October 10, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fine Estates from Spain, Inc.
________

Serial No. 77226718
_______

Gary E. Lambert of Lambert and Associates for Fine Estates
from Spain, Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Fine Estates from Spain, Inc. has applied to register
the mark PAZO SAN TELMO in standard characters on the
Principal Register for goods identified as “wine” in
International Class 33.1
The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.

1 Application Serial No. 77226718, filed July 11, 2007, based on
applicant’s statement of its bona fide intention to use the mark in
commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77226718
2
§ 1052(d), based on a likelihood of confusion with:
Registration No. 1176448 on the Principal
Register for the mark SAN TELMO in standard
characters for goods identified as “wine” in
International Class 33; the registration issued
on November 3, 1981 and has been renewed; the
registration includes the following statement:
“The mark ‘San Telmo’ can be translated as ‘Saint
Telmus.’"; and

Registration No. 3067203 on the Principal
Register for the mark shown below for goods
identified as “alcoholic beverages, namely,
wines”; the registration issued on February 28,
2006; the registration includes the following two
statements: “The mark consists of a label design
with stylized words SAN TELMO.”; and “The English
translation of the word SAN THELMO in the mark is
SAINT ELMO.”2

Diageo Argentina S.A. owns both cited registrations.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Before addressing the Section 2(d) refusal we must
address two procedural issues.

2 We recognize the apparent misspelling of the mark and the
inconsistency in the use of “San Telmo” and “San Thelmo” in these
statements, as well as the inconsistency in the translations between
the two registrations. There is no explanation for these
inconsistencies in the record. These inconsistencies have no bearing
on our decision here.

Serial No. 77226718
3
First, in the first Office action the Examining
Attorney required “… an English translation of all foreign
wording in the mark.” Office Action of October 15, 2007.
In its response applicant states that “… the term PAZO
translates to ‘the Stately Home,’ ‘the Palace,’ … or even
‘the Plaza…’” Applicant’s Response of November 28, 2007.
In the final Office action which followed that
response, the Examining Attorney did not acknowledge that
applicant had attempted to provide a translation but simply
repeated the same requirement for a translation and made it
final. Office Action of December 11, 2007. In its main
brief on appeal applicant once again translates “PAZO” as
either “the Stately Home” or ”the Palace.” In his brief,
the Examining Attorney states that the only issue on appeal
is the Section 2(d) refusal. The Examining Attorney
discusses the translation of “PAZO” as “stately home” or
“palace” but does not indicate whether this translation has
been accepted.
For the purpose of this appeal, we will assume that
“PAZO” means “stately home” or “palace.” We would reach
the same conclusions regarding the Section 2(d) refusal
whether “PAZO” is translated as either “stately home,”
“palace” or “plaza.”
Serial No. 77226718
4
Secondly, the Examining Attorney has objected to
certain evidence applicant submitted for the first time
with its brief, specifically, Internet evidence concerning
sites in Argentina and Spain and copies of two
registrations for “FUEGO” marks owned by applicant.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides, in
relevant part, “The record in the application should be
complete prior to the filing of an appeal.” Applicant did
not respond to this objection in its reply brief. The
submission of the evidence was untimely. Therefore, we
sustain the objection and we have not considered the
evidence. Furthermore, for reasons discussed below, if we
had considered the evidence, we would reach the same
conclusions in this case.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion …” 15 U.S.C. § 1052(d).
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977), the Court set forth the factors
to consider in determining likelihood of confusion. Here,
as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
Serial No. 77226718
5
applicant and registrant. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The 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.”).
The goods, as identified in the application and both
cited registrations, are identical, “wine[s].” Applicant
argues that its products are “fine wines” from Spain
whereas the registrant’s products are “fine wines” from
Argentina. There are no limitations in either the
application or the cited registrations, the goods are
simply identified as “wine[s].” Accordingly, we cannot and
do not assume, as applicant argues, that the goods of
applicant or registrant originate in a certain country, nor
do we assume that the goods of applicant and registrant are
“fine wines.” In re Bercut-Vandervoort & Co., 229 USPQ
763, 764-765 (TTAB 1986).
In the absence of any limitations in the
identifications of goods, we conclude that the goods may
include wines of varying quality and price, and that the
wine of applicant and registrant may originate from the
same country. Accordingly, the similarity of the goods is
Serial No. 77226718
6
a factor that strongly favors finding that there is a
likelihood of confusion.
In addition, because the goods in the application and
the cited registrations are identical, we must presume that
the channels of trade and classes of purchasers are the
same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). In view of the foregoing, we must presume
that the goods identified in the application and the cited
registrations that are legally identical move in the same
channels of trade and will be sold to the same classes of
consumers.
Turning to consideration of the marks, we first note
the following statement by the Court of Appeals for the
Federal Circuit: “When marks would appear on virtually
identical goods or services, the degree of similarity
Serial No. 77226718
7
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, 1701 (Fed. Cir.
1992).
More generally, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corporation v. Scott
Paper Company, 190 USPQ 106, 108 (TTAB 1975).
Applicant argues that PAZO is the dominant element of
its mark, stating: “The focal or dominant portion of
applicant’s mark is the term ‘Palace’, which defines the
Palace of Saint Telmus (San Telmo) which is located in
Serial No. 77226718
8
Seville, Spain – not coincidentally the country of origin
of the wines produced by applicant…” Applicant’s Brief at
4.
As to the cited marks, applicant argues: “Conversely,
‘SAN TELMO’ is the dominant portion of the cited SAN TELMO
marks, as these cited marks find basis (sic) in a city on a
differing continent, namely, San Telmo, Argentina, the
country of origin for the wines produced under the cited
marks.” Id.
Applicant argues further that there are specific
differences in appearance, sound and commercial impression
between its mark and the cited marks. Applicant also
argues that, “… in applicant’s mark … the term ‘SAN TELMO’
is a mere adjective, utilized to describe the dominant noun
‘PAZO’. Conversely, in the reference marks, the term ‘SAN
TELMO’ is the noun or subject of the mark.” Id. at 6
(emphasis in the original).
We find applicant’s arguments unpersuasive. First,
various translations notwithstanding, SAN TELMO, as it
appears in applicant’s mark and the cited marks, is
identical. Also, applicant’s arguments based on the
country of origin of the respective goods are misplaced.
As we stated, the goods, as identified in the application
and the cited registration, are not restricted to wine from
Serial No. 77226718
9
any particular country. Therefore, to the extent applicant
argues based on the country of origin of the respective
wines, we reject those arguments. We cannot consider
extraneous evidence offered to limit the goods identified
in the cited registration. Cf. In re Bercut-Vandervoort &
Co., 229 USPQ at 764. This prohibition applies equally to
arguments as to the perception of the marks based on the
restricted goods.
We also reject applicant’s arguments based on the
categorization of the terms within the marks based on parts
of speech. In fact, it is more accurate to categorize SAN
TELMO, the name of a saint or a place name derived from
that saint’s name, as a proper noun in applicant’s mark,
and in the cited marks. In applicant’s mark, SAN TELMO, is
the object of a preposition, a noun and not an adjective.
More importantly, SAN TELMO is the dominant element in
applicant’s mark. It is SAN TELMO, not PAZO, which creates
the dominant impression. It is SAN TELMO which identifies
the personage associated with the “palace,” “stately home”
or “plaza.” The personage is more significant than the
place, and therefore, SAN TELMO is dominant.
We also conclude that SAN TELMO, the most distinctive
word element, is dominant over the design element in cited
Registration No. 3067203. In re Dixie Restaurants Inc.,
Serial No. 77226718
10
105 F3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Words
are generally more important because they are used in
requesting or locating the goods.
Accordingly, while there are specific differences
between applicant’s mark and each of the cited marks, those
differences are not sufficient to distinguish the marks.
Therefore, we conclude that the marks are similar. Miguel
Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49
USPQ2d 2018, 2021 (TTAB 1998); Stabilisierungsfonds fur
Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB
1988).
Applicant also argues that the purchasers of “fine
wines” are sophisticated, and therefore, less likely to be
confused. As we indicated above, based on the relevant
identifications of goods, we conclude that the wine
identified in the application and the wine identified in
the cited registrations includes wines of varying quality
and cost. Also, applicant has not offered any evidence to
support its assertion that the purchasers of wine are
particularly sophisticated or careful. Accordingly, we
conclude that the potential purchasers of wine are not
necessarily sophisticated, and that these purchasers would
include ordinary consumers who would exercise nothing more
than ordinary care in purchasing wine. Palm Bay Imports
Serial No. 77226718
11
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1695 (Federal Circuit agrees with Board
conclusion that “… champagne and sparkling wines are not
necessarily expensive goods which are always purchased by
sophisticated purchasers who exercise a great deal of care
in making their purchases.”). Therefore, we conclude that
the level of sophistication of potential purchasers for the
relevant goods would not diminish the likelihood of
confusion in this case.
In its reply brief, applicant also argues that the SAN
TELMO marks in the cited registrations are primarily
geographically descriptive of the goods under Trademark Act
Section 2(e)(2), 15 U.S.C. § 1052(e)(2). We must and do
accord the cited registrations the presumption of validity
Trademark Act Section 7(b), 15 U.S.C. § 1057(b), affords
all registrants. We cannot consider an attack on the
validity of the registrations in this ex parte appeal
proceeding. In re Dixie Restaurants Inc., 105 F3d 1405, 41
USPQ2d 1531, 1535 (Fed. Cir. 1997). Applicant’s argument
asserting that SAN TELMO is primarily geographically
descriptive is such an attack. Therefore, we reject this
argument.
Again, in its reply brief, applicant also argues that
the Examining Attorney’s actions on its applications for
Serial No. 77226718
12
its FUEGO marks dictate that we reverse here. Applicant
claims that in those applications the Examining Attorney
withdrew Section 2(d) refusals similar to those at issue
here. We reject this argument. Each case is unique and
must be decided on its merits based on the particular
record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
Finally, after considering all of the evidence and
arguments presented, including those not specifically
discussed here, we conclude that there is a likelihood of
confusion between applicant’s PAZO SAN TELMO mark when used
in connection with wine and the cited, registered SAN TELMO
marks in Registration Nos. 1176448 and 3067203 when used in
connection with wine.
Decision: We affirm the refusal under Trademark Act
Section 2(d) as to both cited registrations.