Folino Estate, LLC

Trademark Trial and Appeal Board

Aug 19, 2016

No. 86356824 (T.T.A.B. Aug. 19, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 19, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Folino Estate, LLC
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Serial No. 86356824
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Frank J. Bonini Jr. of Harding, Earley, Follmer & Frailey PC,
for Folino Estate, LLC.
April Roach Trademark Examining Attorney, Law Office 115,
Dan Brody, Managing Attorney.
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Before Lykos, Adlin and Lynch,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Folino Estate, LLC (“Applicant”) seeks registration on the Principal Register of
the mark displayed below

Serial No. 86356824
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for the following goods and services, as amended:1
Wine; beverages, namely, wine and liquor in International Class 33;

Weddings, namely, hosting of events, namely, entertainment services in the
nature of planning and coordinating wedding receptions in International Class
41;

Bar and restaurant services, namely, providing food and beverages in the
nature of wine, beer and liquor; wine bar services; cocktail lounge services in
International Class 43; and

Catering services; weddings, namely, rental of banquet facilities for wedding
receptions in International Class 45.

The description of the mark is as follows:

The mark consists of the following: the wording “FOLINO ESTATE” in brown,
the wording “WINERY NEL VINO C'E LA VERITA” in black, and a design of
green grapes, green leaves, and green decorative scrolls, all within a tan
rectangle.

The colors tan, brown, green and black are claimed as a feature of the mark. The
application includes a disclaimer of ETATE WINERY and the following translation
statement:
The English translation of “Nel Vino C’e la Verita” in the mark is “In Wine
There is Truth”.

Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d) as to the goods and services in International Classes 33, 43 and 45, on the
ground that Applicant’s applied-for mark so resembles the registered mark displayed
below for “grape wine; red wine; table wines; white wine; wine; wines” in

1 Application Serial No. 86356824, filed August 4, 2014, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
Serial No. 86356824
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International Class 33 that, when used on or in connection with Applicant’s identified
goods and services, it is likely to cause confusion or mistake or to deceive:2

The description of the cited mark is as follows: “The mark consists in part of a stylized
letter ‘F’.” The stippling in the stylized letter ‘F’ is for shading purposes.” Color is not
claimed as a feature of the mark, and CELLARS is disclaimed.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the Request for
Reconsideration, the appeal resumed and is now briefed.
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).

2 Registration No. 3293230, registered September 18, 2007 on the Principal Register; Section
8 affidavit accepted.
Serial No. 86356824
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We turn first to a comparison of the goods and services as identified in the
application and cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Both the application and cited registration include “wine.”3
Because the goods are identical in part, we must presume that these goods travel in
the same channels of trade to the same classes of consumers. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). In addition, the Examining
Attorney introduced evidence showing that it is not uncommon for restaurants and
bars to sell wine under the same mark and for wedding reception facilities to offer
wine under the same brand name. See excerpts from the third-party web sites
https://coopershawkwinery.com, www.taborhill.com, www.castelgrisch.com,
www.littlehillswinery.com, www.lavendercrest.com, www.callawaywinery.com
attached to November 13, 2014 and June 8, 2015 Office Actions. This evidence suffices
to show that Applicant’s International Class 43 and 45 services are related to
Registrant’s goods. Thus, the second and third du Pont factors weigh in favor of
finding a likelihood of confusion as to each refused international class of goods and
services.

3 Applicant did not address the second and third du Pont factors in its brief. Nonetheless, it
is still the Examining Attorney’s burden to establish that the goods and services are related
to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92
USPQ2d 1282, 1285 (TTAB 2009).

Serial No. 86356824
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That being said, a single du Pont factor may be dispositive, and we find that to be
the case here, where the marks are so dissimilar that confusion is unlikely. See
Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991). The first du Pont factor involves an analysis of the similarity or dissimilarity
of the marks in their entireties as to 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 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.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012). Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, the analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. See Stone Lion, 110 USPQ2d at 1161; In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin
Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion”).
The Examining Attorney argues that the disclaimed wording and design elements
of the marks are of lesser significance, focusing on the fact that the first term in both
Applicant’s and Registrant’s mark share the same initial letter string F-O-L-I-N.
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However, the similarities stop there. When we compare the marks as a whole, we find
them to be dissimilar in sound, appearance, connotation and commercial impression.
The terms FOLIN and FOLINO project different connotations and commercial
impressions. The “O” at the end of FOLINO gives it more of an Italian look and sound,
particularly given that FOLINO is accompanied by the tag line in Italian “NEL VINO
C’E LA VERITA.” The use of other Italian wording contributes to FOLINO having
the impression of an Italian word or name, suggesting to the consumer some
connection to Italy. By contrast, the cited mark is devoid of any such connotation.
The Examining Attorney, relying on the principles that “there is no correct
pronunciation of a mark” and because “it is impossible to predict how the public will
pronounce a particular mark,” asserts that we must assume that the “marks” could
be pronounced in the same manner by consumers. See Embarcadero Techs., Inc. v.
RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 101
USPQ2d at 1912). We agree that FOLIN and FOLINO could both be pronounced with
a long letter “o” vowel sound and /ee/ sound for the letter “i.” However, FOLINO
includes the “O” at the end, creating an additional syllable and a different sound. In
addition, these words do not form the entirety of either Applicant’s or Registrant’s
marks. While we are mindful of the often cited principles that disclaimed matter and
design elements are generally considered subordinate, we are also guided by the anti-
dissection rule. The prominent design of the green grapes, leaves, and decorative
scrolls overlaying the words FOLINO ESTATE in Applicant’s mark “catches the eye.”
See Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1016 (TTAB 2007) (“…the
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design is very noticeable and has the effect of catching the eye and engaging the
viewer before the viewer looks at the word BODYMAN.”). Likewise, the stylized
darker letter “F” superimposed over the entirety of the cited mark is the largest
component of the mark and makes a significant impression. These distinct design
features contribute to the different appearances and impressions of the marks.
In summary, we have carefully considered all of the evidence of record and
arguments pertaining to the du Pont likelihood of confusion factors, including any
evidence and arguments not specifically addressed in this opinion. We treat as
neutral any du Pont factors for which there is no evidence or argument of record.4

4 Applicant maintains that term FOLIN in the cited mark is diluted and weak in the wine
industry. In support thereof, Applicant has made of record various third-party registrations
purportedly to show that the cited mark is entitled to only a narrow scope of protection. Many
of these registrations have been cancelled. The remaining third-party registrations are for
the following marks FOLIE BOX, FOLIE A DEUX, DOLIN, and FOLONARI to identify wine
These registrations are of minimal, if any, probative value due to the obvious differences with
the cited mark. Furthermore, while third-party registrations may be used to show that a term
has a meaning or significance in the same way that dictionaries are used, we cannot
determine from the face of the registrations whether the term FOLIN is descriptive or
geographically descriptive of the identified goods and services and therefore weak or
deserving of a lesser degree of protection. See Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976)). See also The Institut National des
Appellations D'Origine v. Vintners International Co. Inc., 22 USPQ2d 1190, 1196 (Fed. Cir.
1992) (“third party registrations show the sense in which the word is used in ordinary
parlance and may show that a particular term has descriptive significance as applied to
certain goods or services.”) (internal citations omitted). Finally, because third-party
registrations of marks are not evidence that the registered marks are in use, they are of
limited probative value for demonstrating weakness of the marks. See In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). In view thereof, the sixth du Pont
factor, the number and nature of similar marks in use on similar goods and services, is
neutral.
In addition, Applicant argues that because the USPTO permitted the registration of various
marks sharing the same term to identify wines or related goods and services, consumers are
unlikely to confuse Applicant’s and Registrant’s marks. In support thereof, Applicant relies
solely on listings and copies of applications and registrations obtained from the USPTO
database. See December 8, 2015 Request for Reconsideration. We are unable to determine,
Serial No. 86356824
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“No mechanical rule determines likelihood of confusion, and each case requires
weighing of the facts and circumstances of the particular mark.” Mighty Leaf, 94
USPQ2d at 1259. In this case, the record evidence shows that the dissimilarity of the
marks in appearance, sound, connotation and commercial impression is so great as
to outweigh the other du Pont factors. See Champagne Louis Roederer S.A. v.
Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir. 1998)
(Federal Circuit affirmed Board finding of no likelihood of confusion between mark
CRYSTAL CREEK for wine and marks CRISTAL for wine and CRISTAL
CHAMPAGNE for champagne, where Board relied solely on dissimilarity of marks).
For these reasons, we find confusion to be unlikely and reverse the Trademark
Examining Attorney’s Section 2(d) refusal.
Decision: The Section 2(d) refusal to register Applicant’s mark is reversed.

however, from the face of the listings and registration certificates the context under which
these third-party registrations were permitted. Cf. In re Nett Designs, Inc., 263 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to Nett Design’s application, the PTO’s allowance of such registrations
does not bind the Board or this court.”). Furthermore, none of the marks referenced by
Applicant are for marks that are similar to the applied-for mark or the cited mark. (i.e., TEN
ACRE, ONE ACRE, LONE ACRE, HUNDRED ACRE, and SECRET ACRE). And lastly,
copies of third-party applications have no evidentiary value other than to show that the
applications were filed. Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1494
(TTAB 2007). For these reasons, Applicant’s evidence is of limited utility.

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