Opus One, Inc.

Trademark Trial and Appeal Board

Sep 25, 2001

No. 75722593 (T.T.A.B. Sep. 25, 2001)

9/25/01

Hearing: Paper No. 12
April 5, 2001 Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Opus One, Inc.
________

Serial No. 75/722,593
_______

Marc A. Bergsman of Dickinson Wright PLLC for Opus One, Inc.

Kenneth Dale Battle, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney)
_______

Before Cissel, Bottorff and Rogers, Administrative Trademark
Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark OPUS ONE, in typed form, for “restaurant
services.”1 The Trademark Examining Attorney has issued a
final refusal of registration, on the ground that
applicant’s mark, as used in connection with applicant’s
services, so resembles the mark OPUS ONE, previously

1 Serial No. 75/722,593, filed June 9, 1999. The application is
based on use in commerce, and alleges August 24, 1987 as the date
of first use and first use in commerce.

THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/722,593
2
registered (in typed form) for “wine,”2 as to be likely to
cause confusion, to cause mistake, or to deceive. See
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal of
registration. The appeal has been fully briefed, and an
oral hearing was held at applicant’s request. The arguments
made by applicant and by the Trademark Examining Attorney
may be summarized as follows.
In support of his Section 2(d) refusal, the Trademark
Examining Attorney essentially argues that confusion is
likely because applicant’s mark is identical to the cited
registered mark, and because applicant’s “restaurant
services” are related to registrant’s “wine” in that wine is
served in restaurants and because a restaurant may offer,
under a single mark, both restaurant services and “private
label” wine named after the restaurant.
Applicant contests the Section 2(d) refusal, arguing
that the evidence submitted by the Trademark Examining
Attorney fails to establish the requisite relationship
between applicant’s services and registrant’s goods; that
applicant’s services and registrant’s goods are expensive
and that the purchasers thereof are discriminating,

2 Registration No. 1,341,372, issued June 11, 1985. Affidavits
under Trademark Act Sections 8 and 15 accepted and acknowledged.
Ser. No. 75/722,593
3
sophisticated purchasers who exercise great care in
purchasing the goods and services; that there has been no
reported actual confusion despite contemporaneous use of the
marks in the same trade channels for thirteen years; and
that the owner of the cited registration has long been aware
of, has acquiesced in, and has encouraged applicant’s use of
the mark in connection with its restaurant services, thereby
implicitly consenting to and authorizing such use.
Our likelihood of confusion determination under Section
2(d) is 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. See In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
§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).
We find, under the first du Pont factor, that
applicant’s mark OPUS ONE is identical to the cited
registered mark in terms of appearance, sound and
connotation, and that applicant’s and registrant’s marks
Ser. No. 75/722,593
4
present identical overall commercial impressions. Applicant
does not contend otherwise.
However, there is no per se rule that confusion is
likely to result from use of similar or even identical marks
for food or beverage items and restaurant services;
“something more” is required to support a finding of
likelihood of confusion in such cases. Jacobs v.
International Multifoods Corporation, 668 F.2d 1234, 212
USPQ 641, 642 (CCPA 1982). In this case, though, we find
that the requisite “something more” exists, both in the
strong and arbitrary character of registrant’s OPUS ONE mark
and the resulting broad scope of protection to which the
mark is entitled, see, e.g., In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467, 1469 (TTAB 1988),3 and in the nature of
the specific commercial relationship between wine and
restaurant services. See, e.g., In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999); In re Golden
Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990); In
re Mucky Duck Mustard Co., Inc., supra; and In re Appetito
Provisions Co., Inc., 3 USPQ2d 1553 (TTAB 1987).

3 Compare cases in which the weakness of the prior mark weighed
against a finding of likelihood of confusion, such as Jacobs v.
International Multifoods Corporation, supra (BOSTON TEA PARTY for
tea); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477
(TTAB 1987)(STEVE’S for ice cream); and In re Central Soya
Company, Inc., 220 USPQ 914 (TTAB 1984)(LA POSADA for lodging and
restaurant services).
Ser. No. 75/722,593
5
We find that OPUS ONE is arbitrary as applied to wine
(or as applied to restaurant services). Applicant does not
contend otherwise. We further find, under the sixth du Pont
factor, that the evidence of record pertaining to “the
number and nature of similar marks in use on similar goods”
is insufficient to support any conclusion other than that
registrant’s OPUS ONE mark for wine is a strong mark which
is entitled to a broad scope of protection.
Further with respect to the sixth du Pont factor, we
note that applicant, with its November 8, 1999 response to
the first Office action, submitted (as Exhibit No. 6)
printouts of the following third-party registrations: Reg.
No. 1,699,273, of the mark OPUS for “chocolates, pralines”;
Reg. No. 1,853,268, of the mark OPUS ONE for “manufactured
tobacco”;4 Reg. No. 2,201,921, of the mark KAFFE MAGNUM OPUS
(KAFFE disclaimed) for “coffee”; and Reg. No. 1,989,060, of
the mark FUENTE OPUS X FOR “cigars.” Applicant also
submitted, as Exhibit 5 to its November 8, 1999 response, a
printout of an article from Wine Spectator magazine which
reported on the 1998 dismissal of a trademark infringement

4 Review of the Office’s automated records reveals that the
Section 8 affidavit for Registration No. 1,853,268 was due on
September 6, 2000; the six-month grace period for filing the
affidavit expired on March 6, 2001. It appears that no Section 8
affidavit has been filed, and that the registration will be
cancelled in due course.

Ser. No. 75/722,593
6
action which had been brought by Opus One winery (presumably
the registrant herein) against the use by Fuente, a
Dominican Republic cigar-maker, of the mark OPUS X for
cigars (presumably the mark referenced in the third-party
registration applicant has made of record; see supra). The
article states that, as a result of the decision, “Fuente
can continue selling its cigars.”5
It is settled that third-party registrations are not
evidence that the marks depicted therein are in use or that
the public is aware of them, and they are thus of no
probative value under the sixth du Pont factor. See Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542 (Fed. Cir. 1992). As for the Wine Spectator article,
if we assume that it can be deemed to be evidence of
Fuente’s use of OPUS X as a mark for cigars, we find that it

5 Applicant submitted these exhibits to its November 8, 1999
response in order to rebut the Trademark Examining Attorney’s
argument, made in the first Office action, that wine and
restaurant services are related because wine is served at
restaurants. Applicant argued that if candy, nuts, coffee,
tobacco and cigars, all of which can be served or enjoyed at
restaurants, can coexist on the Register with OPUS ONE wine,
“then there is no reason to believe that OPUS ONE restaurant
services is likely to cause confusion.” Applicant concluded by
arguing that, “[a]ccordingly, [the] number and nature of similar
marks in use is a du Pont factor that weighs against a likelihood
of confusion.” (November 8, 1999 response, at 8.) After this
November 8, 1999 response, applicant never again referred to or
offered any argument concerning these exhibits, either in its
March 10, 2000 Request for Reconsideration or in its opening or
reply briefs on appeal. However, inasmuch as the exhibits are of
record, we have considered them for whatever probative value they
might have.
Ser. No. 75/722,593
7
is not particularly probative evidence under the sixth du
Pont factor. We cannot conclude from this article that
Fuente’s use of the mark OPUS X (or, as registered, FUENTE
OPUS X) has been so extensive as to affect the scope of
protection to be afforded to registrant’s mark. More
importantly for purposes of the sixth du Pont factor, it
appears from the court’s decision dismissing the
infringement action that OPUS X and OPUS ONE are not similar
marks, and/or that cigars and wine are not similar goods.
Having found that registrant’s mark is a strong,
arbitrary mark and that applicant’s mark is identical
thereto, we turn next to a consideration, under the second
du Pont factor, of the similarity or dissimilarity between
applicant’s “restaurant services” and registrant’s “wine.”
It is not necessary that these respective goods and services
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the goods and services are related in some
manner, or that the circumstances surrounding their
marketing are such, that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
Ser. No. 75/722,593
8
association or connection between the sources of the
respective goods or services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In
re International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
Moreover, the greater the degree of similarity between
the applicant’s mark and the cited registered mark, the
lesser the degree of similarity between the applicant’s
goods or services and the registrant’s goods or services
that is required to support a finding of likelihood of
confusion. Where the applicant’s mark is identical to the
registrant’s mark, as it is in this case, there need be only
a viable relationship between the respective goods or
services in order to find that a likelihood of confusion
exists. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983).
However, as noted above, the requisite “viable”
relationship between registrant’s goods and applicant’s
services, even if they are sold under identical marks, must
consist of “something more” than the fact that registrant
uses the mark on a food or beverage item (wine) and
applicant uses the mark in connection with restaurant
Ser. No. 75/722,593
9
services. In addition to the “something more” derived from
the arbitrary, strong nature of registrant’s mark, we also
find the requisite “something more” to exist in the nature
of the commercial relationship between wine and restaurant
services.
It is undisputed that restaurants commonly serve wines
by the bottle, and that patrons of a restaurant are exposed
to both the restaurant’s service mark and to the trademarks
with which the wines are labeled and by which they are
listed on the restaurant’s wine list. To that extent,
applicant’s “restaurant services” and registrant’s “wine”
clearly are complementary goods and services which may be
encountered together by the same purchasers.6 Indeed, the
record in this case reveals that registrant’s OPUS ONE wine
is offered and served by applicant at its OPUS ONE
restaurant. The fact that applicant’s restaurant serves the
type of goods (indeed the actual goods) identified in the
cited registration is certainly probative evidence which

6 This complementary relationship also is evident in the well-
known expression “wine and dine,” which is defined as “to
entertain lavishly” (The Random House College Dictionary, 1509
(Rev. Ed. 1982); see also the references to the expression in the
verb definition of “wine” in Webster’s Third New International
Dictionary (1993): “vt : to treat to wine : provide with wine
esp. at a dinner < would ∼ and dine the … members of Congress -
American > ∼ vi : to drink wine esp. with a dinner < wined and
dined with the leading citizens of each country during his tour
of Europe >.”

Ser. No. 75/722,593
10
supports a finding under the second du Pont factor that
applicant’s services and opposer’s goods are related. See,
e.g., In re Azteca Restaurant Enterprises Inc., supra; In re
Golden Griddle Pancake House Ltd., supra; In re Mucky Duck
Mustard Co., Inc., supra; and In re Appetito Provisions Co.,
Inc., supra.
The Trademark Examining Attorney further contends that
purchasers who encounter the same or a similar mark used in
connection with both wine and restaurant services are likely
to assume that a source connection between the two exists,
because, according to the Trademark Examining Attorney, it
is an increasingly common practice in the industry for
restaurants to offer and serve to their patrons “private
label” wines which are named after the restaurant, i.e.,
wine which is specially-made for the restaurant and served
in bottles labeled with the restaurant’s service mark. In
support of this contention, he has submitted excerpts of
thirty-five articles obtained from the NEXIS automated
database.7

7 The Trademark Examining Attorney’s search request was “private
label wines w/10 restaurants” in the NEWS library, ALLNWS file.
The search retrieved thirty-five articles, all of which the
Trademark Examining Attorney printed out in KWIC format. Eight
of the excerpts (nos. 4, 14, 16, 17, 21, 24, 26 and 33) have not
been considered herein, inasmuch as they are either newswire
stories (presumably unpublished), stories from foreign
publications, or duplicates (of excerpts retrieved from the same
edition of the same publication).
Ser. No. 75/722,593
11
Applicant argues that this NEXIS evidence does not
prove the Trademark Examining Attorney’s contention that it
is common in the industry for restaurants to serve private
label wines named after the restaurants themselves, or that
consumers are aware of such a practice and would accordingly
assume the existence of a source connection between wines
and restaurant services offered under the same mark.
Applicant notes that in several of the stories the private
label wine in fact is not named after the restaurant, citing
the Chateau de Beaupre 1995 private label wine served by
Chicago’s Le Colonial (story no. 1), the Kiawah private
label wine served by the Jasmine Porch Restaurant (story no.
3), the Wycliffe private label wine served by various
restaurants (story no. 18), “a Merlot del Vento and a Pinot
del Vento” served as private label wines by Sfuzzi
restaurants (story no. 29), and the Proprietors’ Selection
Chardonnay and the Beaujolais Villages private label wines
served by Bistro 110 (story no. 31).
We note, however, that story no. 9 suggests by its
headline, “Branding your own at Harris Ranch,” that Harris
Ranch’s private label wine is sold under “Harris Ranch”
brand name. Story no. 19 states, right in its headline,
that “restauranteurs use their names on fine wines.” Story
no. 27 states that “a private label wine means both prestige
Ser. No. 75/722,593
12
and profit for the restaurant offering it. Moreover, the
bottle has souvenir value.” The “souvenir value” of the
bottle would undoubtedly be derived from the appearance of
the restaurant’s name on the label, which would serve to
remind the restaurant patron of his presumably pleasurable
dining experience. Story nos. 32 and 34 inform readers that
a restaurant can contract for production of, and offer to
its patrons, a custom-designed wine labeled with the
restaurant’s name or logo; story no. 34 further notes that
such private label wine “has the image appeal that many
customers want when they go out to dine.”8
These articles inform their readers, who may include
potential purchasers of wine and of restaurant services,
that a restaurant may in fact have a private-label wine
named after itself. Being aware of that possibility,
purchasers are more likely to assume, upon encountering a
wine and a restaurant bearing the same mark, that the wine
is the restaurant’s private label wine or that some other
source connection between the wine and the restaurant
exists, and they are less likely to assume that it is a mere

8 With respect to the remaining NEXIS excerpts which make
reference to restaurants offering private label wines, it is not
clear from the excerpts themselves that those private label wines
are named after the restaurants which offer them, but neither is
it clear that they are not so named.
Ser. No. 75/722,593
13
coincidence that the restaurant and the wine use the same
mark.
Furthermore, the NEXIS evidence made of record by the
Trademark Examining Attorney informs readers that a
restaurant’s private label wines may also be made available
for separate retail sale. Story no. 6 refers to a
restaurant which, under two separate liquor licenses, both
serves alcohol and sells packaged liquor in the form of
private-label wines. Story no. 28 refers to the California
Culinary Academy’s plans for retail distribution of the
private label wines it serves at its public restaurants. It
has been held that the requisite relationship between
restaurant services and food items exists where a restaurant
separately packages and sells food items under the
restaurant’s mark. See, e.g., In re Azteca Restaurant
Enterprises Inc., supra (Mexican restaurant selling jars of
salsa bearing restaurant’s mark).
Finally, purchasers encountering wine and restaurant
services offered under a single mark may reasonably assume
that the winery which produces the wine has some source or
sponsorship connection with the restaurant. The NEXIS
evidence includes articles from The Indianapolis Star (story
no. 11) and the Greater Cincinnati Business Record (story
no. 20) which refer to the “Chateau Pomije Winery and
Ser. No. 75/722,593
14
Restaurant” which, readers might reasonably assume, offers
both its wine and its restaurant services under a single
mark. Additionally, the evidence of record with respect to
applicant’s relationship to registrant’s winery, discussed
in further detail infra, supports a finding that purchasers
might reasonably assume that a source connection exists
where, as here, a restaurant is touted as being “named
after” a particular wine.
In summary, we find that in addition to the “something
more” which is to be found in the strength of registrant’s
mark and the broad scope of protection to which it is
entitled, the requisite “something more” required by Jacobs
v. International Multifoods Corporation, supra, may also be
found in this case in the nature of the relationship between
restaurant services and wine, especially those involved in
the present case.
Applicant argues that the evidence of record with
respect to several other of the du Pont factors weighs in
its favor in this case, namely, the high cost of the
applicant’s and registrant’s respective goods and services
and the resulting care and sophistication with which they
are purchased (the fourth du Pont factor); the absence of
actual confusion, despite the opportunity therefor (the
seventh and eighth du Pont factors); and the market
Ser. No. 75/722,593
15
interface between applicant and registrant (the tenth du
Pont factor). We shall address each of these issues in
turn.
Applicant is correct in noting that if the goods and/or
services at issue are expensive, such that purchasers may be
expected to be more careful and sophisticated in making
their purchasing decisions, the likelihood of confusion is
decreased. See Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Applicant has offered evidence to show that registrant’s
OPUS ONE wine is an expensive wine; press reports indicate
that the 1996 vintage of the wine retails for $125 a bottle
and is served by restaurants for $220 a bottle.9 Applicant
contends that its restaurant services likewise are upscale
and expensive, with a dinner for two (without drinks) said
to cost approximately $150.10 The Trademark Examining
Attorney has conceded that registrant’s wine and applicant’s
restaurant services are expensive. (Brief, at 8.)
However, applicant’s evidence concerning the expensive
nature of applicant’s restaurant services and of

9 See applicant’s November 8, 1999 Response to the first office
action, at Exhibit 1 (The Washington Post, October 26, 1999), and
Exhibit 4 (The San Jose Mercury News, October 20, 1999).

10 See applicant’s November 8, 1999 Response to the first office
action, at Exhibit 2 (applicant’s menu).

Ser. No. 75/722,593
16
registrant’s wine, as well as the Trademark Examining
Attorney’s concession that applicant’s and registrant’s
respective goods and services are expensive, are legally
irrelevant and cannot be considered in our likelihood of
confusion analysis. That analysis must be made on the basis
of the goods and services as they are identified in
applicant’s application, i.e., “restaurant services,” and in
registrant’s registration, i.e., “wine,” regardless of what
the evidence might show as to the nature of applicant’s and
registrant’s actual goods and services. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Applicant’s
“restaurant services” therefore must be presumed to
encompass inexpensive or moderately-priced restaurant
services, and registrant’s “wine” must be presumed to
encompass inexpensive or moderately-priced wine. In view
thereof, applicant’s arguments regarding the high cost of
its actual restaurant services and of registrant’s actual
wine, and the resulting carefulness and sophistication of
the purchasers, miss the mark. See In re Bercut-Vandervoort
& Co., 229 USPQ2d 763 (TTAB 1986)(rejecting the applicant’s
arguments regarding the high cost and quality of its wine
and the sophistication of its purchasers, where application
identified goods merely as “wine”).
Ser. No. 75/722,593
17
There is no evidence in the record from which we might
conclude that wine and restaurant services, in general, are
necessarily expensive, or that purchasers thereof are
necessarily sophisticated and careful in making their
purchasing decisions. Accordingly, this du Pont factor does
not weigh in applicant’s favor in this case.
Applicant next argues that the evidence of record,
especially the declaration of applicant’s president James E.
Kokas and the exhibits thereto, establishes that there has
been no actual confusion between applicant’s mark and
registrant’s mark despite substantial opportunity for such
confusion to have arisen, and that the seventh and eighth du
Pont factors accordingly weigh heavily in favor of a finding
of no likelihood of confusion.11
The fact that an applicant in an ex parte case is
unaware of any instances of actual confusion is generally
entitled to little probative weight in the likelihood of
confusion analysis, inasmuch as the Board in such cases
generally has no way to know whether the registrant likewise
is unaware of any instances of actual confusion, nor is it
usually possible to determine that there has been any

11 The seventh and eighth du Pont factors are “the nature and
extent of any actual confusion,” and “the length of time and
conditions under which there has been concurrent use without
evidence of actual confusion.” 177 USPQ at 567.

Ser. No. 75/722,593
18
significant opportunity for actual confusion to have
occurred. See, e.g., In re Jeep Corporation, 222 USPQ 333
(TTAB 1984); In re Barbizon International, Inc., 217 USPQ
735 (TTAB 1983).
Applicant argues, however, that in the case of In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992), the Board
“identified three factors in an ex parte setting which
allows it to assess the probative value of the absence of
actual confusion,” i.e., “a long period of marketing
success,” “marketing expensive products and services,” and
“no reported instances of confusion.” (Reply brief, at 7.)
Applicant contends that, as in General Motors, there exists
in this case a “confluence of facts” which justifies giving
significant probative weight to the absence of any evidence
of actual confusion.
Specifically, applicant contends that it has enjoyed a
long period of marketing success, inasmuch as it has been
rendering restaurant services under the OPUS ONE mark for
thirteen years and has received many national awards,
including the Wine Spectator Award of Excellence every year
since 1988. Applicant also contends, as noted above, that
its restaurant services are expensive, with dinner for two
costing approximately $150 (without drinks). Applicant
argues that, in fact, there has been substantial opportunity
Ser. No. 75/722,593
19
for actual confusion between applicant’s mark and
registrant’s mark to have occurred, inasmuch as the
respective goods and services are offered together to the
same purchasers, as evidenced by the fact that applicant’s
OPUS ONE restaurant sells six hundred bottles of
registrant’s OPUS ONE wine every year. (Kokas Decl., ¶¶4-
5.) Despite this opportunity for actual confusion to have
occurred, applicant argues, no instances of actual confusion
have been reported, as evidenced by paragraphs 6-7 of Mr.
Kokas’ declaration, in which he states that he “would be
aware of virtually any inquiry about the relationship of
OPUS ONE wine and OPUS ONE restaurant services because of my
availability to customers” and that “there have been no
reported instances of confusion between OPUS ONE wine and
OPUS ONE restaurant services.” Finally, applicant argues
that it is not dispositive that we have not heard from
registrant in this ex parte case on the issue of actual
confusion: “… because of the relationship between Opus One
and registrant and because the registrant has not reported
any instances of confusion to Opus One, it may be logically
deduced that the registrant has not received any reasonable
instances of confusion.” (Reply brief, at 6.)
We have carefully considered applicant’s arguments, but
we are not persuaded that the apparent absence of actual
Ser. No. 75/722,593
20
confusion is entitled to significant weight in this case.
Initially, we are not persuaded by applicant’s argument that
a “confluence of facts” of the type that was found in
General Motors is present in this case. Indeed, General
Motors is readily distinguishable on its facts in several
important respects. First, in General Motors, the applicant
had been selling goods under its mark nationwide for nearly
thirty years without any reported instances of actual
confusion; by contrast, applicant herein has used its mark
for thirteen years, operating a single restaurant in a
single city. Second, and relatedly, the General Motors
applicant’s GRAND PRIX mark for automobiles had achieved
nationwide renown and prominence, as evidenced by the
national scope of the applicant’s advertising and the
applicant’s sale of 2.7 million such automobiles nationwide
over approximately thirty years; we cannot conclude on this
record that applicant’s OPUS ONE restaurant services have
achieved the same degree of national renown and prominence.
Third, even assuming that applicant’s restaurant services
are expensive for restaurant services, they clearly are not
of the same cost magnitude as were the goods involved in
General Motors, i.e., automobiles, which the Board found to
be “a major and expensive purchase” for most consumers.
Finally, and most importantly, the GRAND PRIX mark involved
Ser. No. 75/722,593
21
in General Motors was found to be highly suggestive as
applied to the prior registrant’s automobile parts, and
therefore entitled to only a narrow scope of protection. By
contrast, registrant’s OPUS ONE mark for wine is, as
discussed above, a strong mark entitled to a broad scope of
protection. Thus, to the extent that General Motors sets
forth an exception to the general rule that the absence of
evidence of actual confusion is entitled to little probative
weight in an ex parte case, we find that applicant does not
fall within that exception.
We also are not persuaded by applicant’s argument that,
due to the close relationship between applicant and
registrant, registrant would have informed applicant of any
instances of actual confusion of which registrant had been
made aware. “It should also be noted that competent
evidence of actual confusion is difficult to come by where
as here both applicant and registrant may be performing
their respective activities in a commendable or exemplary
fashion.” In re Richard Bertram & Co., 203 USPQ 286, 291
(TTAB 1979).
Finally, we are not persuaded on this record that the
absence of any reported instances of actual confusion on the
part of applicant’s restaurant customers is necessarily
attributable to any assumption or understanding by those
Ser. No. 75/722,593
22
customers that there is no source connection between
applicant and registrant, or to any belief on their part
that it is a mere coincidence that applicant’s restaurant
and registrant’s wine have the same name. Rather, we find
it to be equally plausible that if applicant’s restaurant
customers have not inquired as to the existence of any
source relationship between applicant and registrant, it is
because they already assume that applicant is using the OPUS
ONE mark pursuant to an agreement or arrangement with
registrant, and with registrant’s permission and consent.
Such an assumption on the part of applicant’s customers
certainly would be reasonable in light of the publicity
surrounding the opening of applicant’s restaurant in 1988.
The Detroit News of January 11, 1988 (Kokas Decl., Exh. 1)
reported that the Mondavi family “approved the restaurant’s
use of the name of winery’s famous Opus One wine…” and that
“[s]uch a request has never before been granted, [Tim]
Mondavi explained. After much study, he said, the winery
felt the restaurant would have the same mark of quality as
the wine.” Applicant’s customers and potential customers
reasonably could and would gather from this article that
applicant had specifically requested permission from Mondavi
to use the OPUS ONE name, that Mondavi had approved that
request, and that such approval is the reason applicant is
Ser. No. 75/722,593
23
entitled to use the name. We further note that other
contemporary reports in the Detroit press about the opening
of the OPUS ONE restaurant included specific references to
“the Napa Valley winery of the same name,” and to OPUS ONE
wine as the restaurant’s “namesake.” (Id.)
Similarly, applicant’s own February 1991 newsletter to
its customers (Kokas Decl., Exh. 2) makes specific reference
to registrant’s “Opus One label, for which our restaurant is
named.” In its September 1997 newsletter (Kokas Decl., Exh.
3), applicant promoted its sponsorship of two 1997 fund-
raiser benefits for the Detroit Opera House by informing
customers that the events “will be held in conjunction with
Robert Mondavi Winery, and will showcase a range of Mondavi
wines exclusively,” and that the events would include a
Grand Prize drawing for a trip to Napa Valley featuring a
stay at Michael Mondavi’s guest house and a tour of the Opus
One winery. Finally, we note that applicant’s newsletters
and the news articles applicant has made of record inform
their readers, who are or include applicant’s customers,
that representatives from registrant’s winery were present
and prominently honored at major events in the restaurant’s
history, such as the restaurant’s opening in 1988, the
restaurant’s special “Winemaker Dinner” in 1991, and the
restaurant’s tenth anniversary celebration in 1997.
Ser. No. 75/722,593
24
In light of this evidence, it is plausible that
applicant’s restaurant customers, instead of assuming that
it is a mere coincidence that both the restaurant and the
winery use the arbitrary mark OPUS ONE, rather would assume
that there is a source, sponsorship, or license-type
arrangement between applicant and registrant which allows
for, and accounts for, applicant’s use of registrant’s mark.
Similarly, if Mr. Kokas and other restaurant personnel, in
responding to inquiries from customers as to why the
restaurant bears the same name as the wine, were to reply
(as applicant has stated in its customer newsletters) that
the restaurant is “named after the wine,” it is plausible to
assume that this response would satisfy the customer and
that no further inquiry would ensue.
We hasten to add that we are not saying that the
evidence of record establishes with certainty that
applicant’s customers are, in fact, actually confused as to
the nature of the relationship between applicant and
registrant as a result of applicant’s use of registrant’s
mark. We are merely saying that we cannot conclude on this
record, as applicant would have us conclude, that there in
fact has been no actual confusion.
In summary, we are not persuaded that the absence of
any evidence of actual confusion is entitled to significant
Ser. No. 75/722,593
25
weight in our likelihood of confusion analysis, and we
therefore find that the seventh and eighth du Pont factors
to be essentially neutral in this case.
We turn next to applicant’s arguments regarding the
“market interface” between applicant and registrant, under
the tenth du Pont factor.12 Applicant argues that
registrant is and has long been aware of applicant’s use of
the OPUS ONE mark in connection with its restaurant
services, and that registrant has not complained of or
objected to such use by applicant, but rather has
affirmatively encouraged it. Applicant argues that
registrant accordingly has authorized, consented to and/or
acquiesced in applicant’s use of the mark, a fact which
should weigh heavily in favor of a finding under the tenth
du Pont factor that confusion is not likely.
In support of this argument, applicant relies on Mr.
Kokas’ declaration and the exhibits thereto, which show,
applicant contends, that registrant has made and continues
to make substantial sales of its OPUS ONE wine to applicant

12 The tenth du Pont factor is “the market interface between
applicant and the owner of a prior mark: (a) a mere “consent” to
register or use; (b) agreement provisions designed to preclude
confusion, i.e., limitations on continued use of the marks by
each party; (c) assignment of mark, application, registration and
good will of the related business; (d) laches and estoppel
attributable to owner of prior mark and indicative of lack of
confusion.” 177 USPQ at 567.

Ser. No. 75/722,593
26
(Kokas Decl. ¶¶4-5); that prior to the opening of
applicant’s restaurant, Marci Mondavi (Robert Mondavi’s
daughter) learned and “was thrilled to hear” that applicant
planned to name its restaurant OPUS ONE (Kokas Decl. ¶8);
that shortly after the opening of the restaurant, Robert
Mondavi himself congratulated applicant by sending applicant
six bottles of the original vintage of OPUS ONE wine from
his personal cellar (Kokas Decl. ¶9); that, since the
opening of the restaurant, Robert Mondavi Winery
representatives have attended and participated in numerous
winetasting events at the restaurant and have made numerous
sales calls at the restaurant (Kokas Decl. ¶10); that, as
noted above, Tim Mondavi, managing partner of Robert Mondavi
Winery, was the featured guest at applicant’s grand opening
celebration in 1988, at a 1991 “Winemaker Dinner” special
event at the restaurant, and at the restaurant’s tenth
anniversary celebration in 1997 (Kokas Decl. ¶¶11-12); and
that, as also noted above, the restaurant’s tenth
anniversary celebration included a Grand Prize drawing for a
trip to Napa Valley featuring a stay at Michael Mondavi’s
guest house and a tour of the Opus One winery (applicant’s
September 1997 newsletter, in Exhibit 3 to the Kokas
declaration).
Ser. No. 75/722,593
27
Finally, applicant places special emphasis on (and
apparently cites for its factual accuracy) the above-
referenced January 11, 1988 article from The Detroit News
which reported, apparently based on an interview with Tim
Mondavi at applicant’s grand opening celebration, that the
Mondavi family had “approved the restaurant’s use of the
name of the winery’s famous Opus One wine” and that,
although “such a request has never before been granted,” the
winery, “after much study, … felt the restaurant would have
the same mark of quality as the wine.” (Kokas declaration,
Exhibit 1.)
Based on this evidence, applicant argues that
“[r]egistrant’s conduct, through its managing partner and
winemaker Tim Mondavi[,] constitutes affirmative acts of
encouragement. It implicitly, if not explicitly authorized
Opus One to use the OPUS ONE service mark in connection with
restaurant services” (Brief, at 7); that “[t]he market
interface between Opus One and registrant evidences
registrant’s consent to the use of OPUS ONE for restaurant
services” (id., at 17); that “[t]hrough its actions or
inaction, registrant implicitly, if not explicitly,
authorized Opus One to use the OPUS ONE service mark in
connection with its restaurant services” (Reply Brief, at
6); and that “registrant has implicitly, if not explicitly,
Ser. No. 75/722,593
28
consented to [applicant’s] use of OPUS ONE for restaurant
services by virtue of its acquiescence in the use of OPUS
ONE for restaurant services and its attendance at events
sponsored by Opus One” (id., at 11).
Nearly all of the reported decisions involving the
tenth du Pont factor, which deals generally with “the market
interface between applicant and the owner of a prior mark,”
have focused on factor 10(a), “a mere ‘consent’ to register
or use,” and on factor 10(b), “agreement provisions designed
to preclude confusion, i.e., limitations on continued use of
the marks by each party.” These cases teach that a “naked”
consent to register or use is entitled to little probative
weight in the likelihood of confusion analysis, but that if
the applicant and the prior user have entered into an
agreement which evidences their business-driven conclusion
and belief that there is no likelihood of confusion, and
which includes provisions designed to avoid any potential
confusion, the existence of such an agreement weighs heavily
in favor of a finding that confusion is not likely. See,
e.g., In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26
USPQ2d 1071 (Fed. Cir. 1993); Bongrain Int’l (Am.) Corp. v.
Delice De France, Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed.
Cir. 1987); and In re du Pont, supra.
Ser. No. 75/722,593
29
In the present case, however, we have neither a consent
from registrant (as contemplated by du Pont factor 10(a)),
nor an agreement between applicant and registrant (as
contemplated by du Pont factor 10(b)).13 Instead, the
“market interface” asserted by applicant in this case is the
alleged “laches and estoppel attributable to owner of prior
mark and indicative of lack of confusion,” under du Pont
factor 10(d).
It is settled that the equitable defenses of laches,
acquiescence and estoppel are not applicable in ex parte
proceedings. That is, notwithstanding the language of du
Pont factor 10(d), the applicant in an ex parte appeal of a
Section 2(d) refusal may not rely on “laches and estoppel
attributable to the owner” of the prior registration as
affirmative “defenses” to the refusal. The owner of the
prior registration is not a party to the applicant’s ex

13 As noted above, applicant has strenuously argued, based on its
evidence of the long-standing amicable relationship between
applicant and registrant, that registrant has “implicitly, if not
explicitly” authorized and consented to applicant’s use of the
OPUS ONE mark. However, to the extent that applicant is arguing
that registrant’s alleged “implicit consent” to applicant’s use
of the mark constitutes a “consent” under du Pont factor 10(a) or
an “agreement” under du Pont factor 10(b), we reject the
argument. We will not impute such a consent or agreement to
registrant in the absence of explicit documentary evidence
thereof. There is no indication in the record that applicant
ever sought to obtain a consent or agreement from registrant, nor
is it apparent that registrant is even aware that applicant has
applied to register the mark.

Ser. No. 75/722,593
30
parte appeal; accordingly, any equitable defenses, including
laches and acquiescence, which the applicant might be able
to assert against the registrant in an inter partes case are
unavailable to the applicant in an ex parte proceeding. See
In re National Distillers and Chemical Corporation, 132 USPQ
271 (CCPA 1962); and In re Collegian Sportswear Inc., 224
USPQ 174 (TTAB 1984).14
However, under du Pont factor 10(d), evidence which
would support an applicant’s affirmative defenses of laches
or acquiescence in an inter partes proceeding between the
applicant and the prior registrant might also be entitled to
some probative value in the applicant’s ex parte appeal, at
least to the extent that it “is indicative of a lack of
confusion,” i.e., to the extent that it shows that the prior
registrant believes that confusion is not likely to result
from applicant’s use of the mark it seeks to register. See
In re Collegian Sportswear Inc., supra.15

14 Regarding the availability of laches, estoppel and acquiescence
as defenses in inter partes proceedings, see generally National
Cable Television Ass’n v. American Cinema Editors, Inc., 937 F.2d
1572, 19 USPQ2d 1424 (Fed. Cir. 1991).

15 However, any such evidence upon which an applicant in an ex
parte appeal might rely under du Pont factor 10(d) must pertain
to the “market interface” between the applicant and the prior
registrant; applicant may not rely, jus tertii, on laches or
estoppel which could be asserted against the prior registrant
Ser. No. 75/722,593
31
It appears from the evidence submitted by applicant
that registrant is and has always been aware of applicant’s
use of OPUS ONE as the name of its restaurant in Detroit,
Michigan; that registrant and applicant have had ongoing
commercial dealings with each other, in that registrant’s
representatives make regular sales calls to applicant’s
restaurant, and applicant purchases from registrant and
sells to its restaurant patrons approximately six hundred
bottles of registrant’s OPUS ONE wine per year; that
representatives of registrant’s winery were active
participants in, and featured guests at, the grand opening
of applicant’s restaurant in 1988, at a restaurant
“Winemaker Dinner” special event in 1991, and at the tenth
anniversary celebration of applicant’s restaurant in 1997;
and that, on this record, registrant apparently has never
complained of or objected to applicant’s use of the OPUS ONE
mark in connection with its restaurant.
We cannot conclude, however, that registrant’s actions
and/or inaction with respect to applicant’s use of the OPUS
ONE mark, as detailed by applicant, are necessarily
attributable to, and necessarily evidence of, a business-
driven belief on the part of registrant that there is no

only by a third party with whom applicant is not in privity. See
In re Wilson, 57 USPQ2d 1863, 1868-69, n.13 (TTAB 2001).
Ser. No. 75/722,593
32
likelihood of confusion. Rather, registrant’s conduct,
particularly the fact that registrant has not objected to
applicant’s use of the mark, reasonably might also be
attributable to a belief on registrant’s part that applicant
is using the mark pursuant to registrant’s approval and
permission, and that registrant has the right to require
applicant to cease using the mark in the event that the
quality, nature or extent of applicant’s restaurant services
were to change in a way detrimental to registrant’s
interests. Indeed, the most direct evidence in the record
as to registrant’s belief or opinion with respect to
applicant’s use of the OPUS ONE mark supports such a
conclusion. The January 11, 1998 article from The Detroit
News, which applicant has cited and relied upon for its
factual accuracy, reveals that, according to Tim Mondavi,
the Mondavi family approved applicant’s request to use the
OPUS ONE name because, after much study, “the winery felt
the restaurant would have the same mark of quality as the
wine.” Implicit in this statement is Mr. Mondavi’s belief
that, if applicant’s restaurant were to no longer have the
same mark of quality as the wine, the winery would no longer
approve of the restaurant’s use of the OPUS ONE name.
Again, we are not saying that registrant in fact holds
this belief as to the nature of applicant’s rights in the
Ser. No. 75/722,593
33
OPUS ONE mark. We find merely that, on this record,
registrant’s lack of objection to applicant’s use of the
mark, which applicant attributes to registrant’s belief that
there is no likelihood of confusion, may be equally
attributable to registrant’s belief that applicant’s use of
the OPUS ONE mark is at registrant’s sufferance and is
currently unobjectionable, given the apparently high quality
and geographically limited scope of applicant’s restaurant
services. Because that reasonable possibility exists, we
cannot conclude that registrant’s conduct necessarily is
“indicative of a lack of confusion,” within the meaning of
du Pont factor 10(d). Just as we will not infer from this
record that registrant has consented or agreed to
applicant’s registration of the mark, see supra at footnote
13, so also we will not impute to registrant, for purposes
of du Pont factor 10(d), a belief that confusion is
unlikely.
Likewise, even if registrant has to date voiced no
objection to applicant’s use of the OPUS ONE mark in
connection with a single, high quality restaurant in
Detroit, Michigan, we will not assume, on this record, that
registrant has no objection to the issuance of a federal
registration to applicant. If registrant in fact has no
such objection, there is available to applicant in a future
Ser. No. 75/722,593
34
application a type of evidence which, under du Pont and
subsequent case law, is entitled to great weight in the
likelihood of confusion analysis, i.e., a valid consent
agreement between applicant and registrant. The evidence of
record applicant relies on in the present case simply does
not suffice as a substitute for such an agreement. We have
given that evidence due consideration, but conclude that the
tenth du Pont evidentiary factor, i.e., the “market
interface” between applicant and registrant, does not weigh
in applicant’s favor to any significant degree in this case.
In summary, we have carefully considered all of the
evidence of record pertaining to the du Pont evidentiary
factors, as well as applicant’s arguments with respect
thereto. For the reasons discussed above, we conclude that
a likelihood of confusion exists, and that registration of
applicant’s mark is barred under Trademark Act Section 2(d).
Any doubts as to this conclusion must be resolved against
applicant. In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).

Decision: The refusal to register is affirmed.