P.J. Valckenberg GmbHv.Phicon Investment Holdings (Pty) Ltd.

Trademark Trial and Appeal Board

Sep 5, 2007

No. 91166355 (T.T.A.B. Sep. 5, 2007)

FC/PWC Mailed: September 5, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

P.J. Valckenberg GmbH

v.

Phicon Investment Holdings (Pty) Ltd.
_____

Opposition No. 91166355
to application Serial No. 78368528
filed on 2/16/2004
_____

Richard J. McKenna of Foley & Lardner LLP for P.J.
Valckenberg GmbH.

Brewster Taylor of Stites & Harbison PLLC for Phicon
Investment Holdings (Pty) Ltd.
______

Before Quinn, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Phicon Investment Holdings (Pty) Ltd., has
applied to register on the Principal Register the mark
MADONNA in standard character form based upon its allegation
of a bona fide intent to use the mark in commerce for
“Alcoholic beverages namely wines, distilled spirits,
liqueurs, and brandy” in International Class 33.1

1 Application Serial No. 78368528 was filed on February 16, 2004.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91166355
2
Registration has been opposed by P.J. Valckenberg GmbH.
As grounds for opposition, opposer asserts that it owns and
has made prior use of the mark MADONNA on “wine and wine
glasses.”2 Opposer argues that it has used its mark in
connection with wine since prior to any date on which
applicant may rely for purposes of priority of use of its
involved mark. Opposer further argues that applicant’s mark,
when used in connection with applicant’s goods, so resembles
opposer’s mark for its goods as to be likely to cause
confusion, to cause mistake, and to deceive; and that
opposer will be damaged thereby.
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition.3
The Record
The record in this case consists of the pleadings, and
the file of the involved application. In addition, during
its assigned testimony period, opposer submitted the

2 Because opposer is relying on common law rights in its MADONNA
mark, it is restricted to such rights for the goods on which it
has proven use. We note here that opposer’s testimony and
evidence is insufficient to establish use of the trademark
MADONNA on wine glasses. Accordingly, use of the MADONNA mark on
wine glasses will not be discussed further herein. We hasten to
add, however, that the absence of evidence of such use does not
have an impact on the outcome of this proceeding.
3 Additionally, applicant asserted as an “affirmative defense”
that the notice of opposition fails to state a claim upon which
relief can be granted. However, applicant did not file a motion
to dismiss under Fed. R. Civ. P. 12(b)(6) by means of which any
asserted insufficiency in opposer’s pleading might be addressed.
Accordingly, applicant’s “affirmative defense” will be given no
further consideration.

Opposition No. 91166355
3
deposition, with accompanying exhibits, of its president
Wilhelm G. Steifensand. Opposer also filed a notice of
reliance upon applicant’s responses to opposer’s
Interrogatory Nos. 1, 6, 7, 8, 10 and 11, under Trademark
Rule 2.120(j)(3)(i).
Applicant filed a notice of reliance upon opposer’s
responses to applicant’s Interrogatory Nos. 1, 2, 4 through
7, 10, 14, 16 through 19, 21 through 23 and 25, under
Trademark Rule 2.120(j)(3)(i).
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.
Evidentiary Objections
Applicant has raised various objections to the evidence
presented by opposer. These are discussed below.
First, applicant generally objected to all of the
documentary evidence provided during testimony, under
Trademark Rule 2.120(a), claiming that opposer failed to
comply with its discovery requests and therefore should be
estopped from relying on the evidence that was not furnished
to applicant during discovery. We note that opposer’s
responses to applicant’s interrogatories, submitted by
applicant under notice of reliance, included general and
specific objections, substantive answers and indications
Opposition No. 91166355
4
that relevant documents would be provided.4 We note that
opposer does not indicate in its interrogatory responses
that documents relevant to a particular request do not
exist. We further note that it does not appear from the
file history of this proceeding that applicant filed a
motion to compel or other discovery motion whereby the
asserted insufficiency of opposer’s discovery responses
could be addressed. See Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650, 1656 (TTAB 2002) (having failed to
file motion to compel, defendant will not later be heard to
complain that interrogatory responses were inadequate.) In
addition, applicant did not object to the introduction of
such documents during the testimony deposition of Mr.
Steifensand. Having failed to address the asserted
deficiencies in opposer’s discovery responses or object to
the introduction of the documents in question during
opposer’s testimony deposition, applicant will not now be
heard to argue for the first time in its brief on the merits
of the case that opposer should be estopped from relying
upon the exhibits to its testimony deposition due to its
asserted failure to produce those documents during

4 We further note opposer’s objection number 1 to applicant’s
interrogatories, reiterated in its reply brief, that applicant’s
discovery requests were untimely filed. Inasmuch as applicant’s
interrogatories are not of record, we cannot determine whether
they were in fact timely filed. The record also does not
indicate whether applicant served additional discovery upon
opposer.
Opposition No. 91166355
5
discovery. See, for example, Linville v. Rivard, 41 USPQ2d
1731, 1733 (TTAB 1996), aff’d, Rivard v. Linville, 133 F.3d
1446, 45 USPQ2d 1374 (Fed. Cir. 1998). Accordingly, we have
considered opposer’s testimony exhibits to the extent that
they are not otherwise subject to a different specific,
sustained objection.
Applicant also objected generally to the use of the
testimony of Mr. Steifensand to establish opposer’s priority
of use of the MADONNA mark on wine. Applicant asserted that
opposer did not establish sufficient knowledge of the
witness to testify as to the facts asserted in the
testimony. Applicant’s objections on the basis of lack of
foundation are overruled inasmuch as opposer has laid a
foundation sufficient to admit the testimony of its
president. Mr. Steifensand is competent to testify about
any knowledge of facts he acquired in the usual course of
his business responsibilities. The uncontroverted testimony
of Mr. Steifensand shows: he is the seventh-generation
president of a family-owned winery, he worked in a U.S. wine
retail store in 1981 where he sold MADONNA wine to
consumers, and he has acted as president of opposer since
1990. This established that Mr. Steifensand has the ability
to testify as to the sale of opposer’s MADONNA wine in the
U.S.
Opposition No. 91166355
6
We note however, that certain parts of the witness’
testimony were not based on personal knowledge, but on
company lore and family history, and not sufficiently
supported by documentary evidence or otherwise eligible for
an exception to the hearsay rule. Thus, it has not been
clearly shown that Mr. Steifensand had sufficient “personal
knowledge” on these topics to satisfy the requirements of
Fed. R. Evid. 602. We did not rely on such testimony to
reach a decision in this case. In coming to our
determination we have considered only that testimony based
on Mr. Steifensand’s personal knowledge. Accordingly, this
objection is sustained only as to the testimony not made on
personal knowledge of the witness.
Applicant specifically objected to Exhibits 3 through
36 on the basis that they are inadmissible as hearsay, and
not properly authenticated to qualify under the business
record exception under Fed. R. Civ. P. 803(6). We have
considered applicant’s arguments but find that Exhibits 3
through 27 were properly authenticated as records kept in
the course of a regularly conducted business activity, and
therefore admissible.5 Accordingly, this objection is
denied.

5 We note that applicant’s attorney stipulated to the
authenticity of opposer’s archived documents during the testimony
deposition of Mr. Steifensand, pages 45 and 46, lines 22 through
3. Nonetheless, Exhibit 17 is in German, and while the trademark
Opposition No. 91166355
7
With regard to Exhibit 28, opposer stipulated that this
Exhibit was incomplete and therefore it would not be relied
upon. Therefore Exhibit 28 has not been considered.
Turning to Exhibits 29 through 35, applicant objected
to these documents as Internet evidence that has not been
properly authenticated. We have reviewed this evidence and
sustain this objection. However, as to the photograph of
opposer’s labeled wine bottles, seen in Exhibit 35, the
witness established the proper foundation to admit this
photograph into evidence during cross-examination.
Accordingly, Exhibits 29 through 35 have not been
considered, with the exception of the photograph of
opposer’s labeled wine bottles, found in Exhibit 35, as
discussed further, below.
Opposer’s Standing
Opposer, through its testimony and related exhibits,
has established that it uses the mark MADONNA in connection
with wine. Opposer has asserted a likelihood of confusion
claim directed toward applicant’s intended use of a
virtually identical mark for goods that are identical in
part. Thus, opposer has demonstrated it possesses a real
interest in this proceeding beyond that of a mere
intermeddler, and a reasonable basis for its belief of

MADONNA clearly appears on it, we have not considered this
exhibit.

Opposition No. 91166355
8
damage. See Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d
1023 (Fed. Cir. 1999). See also Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
We find, therefore, that opposer has proven its standing to
bring the instant opposition proceeding.
Priority of Use
Because opposer has not pleaded ownership of any
registered trademark, opposer must rely on its common law
use of its MADONNA mark to prove priority. Inasmuch as
applicant has not established use of its mark in connection
with its goods prior to the filing date of its intent-to-use
application, the earliest date upon which applicant may rely
for priority purposes is February 16, 2004. See Levi
Strauss & Co. v. R. Josephs Sportswear Inc., 36 USPQ2d 1328,
1332 (TTAB 1998), quoting Alliance Manufacturing Co., Inc.
v. ABH Diversified Products, Inc., 226 UPSQ 348, 351 (TTAB
1985)(“an applicant is entitled to rely upon the filing date
of its application as a presumption of use of the mark
subject of the application as of that date”). Thus, in
order to establish priority, opposer must show that it used
its mark in connection with its goods prior to February 16,
2004.
Opposer’s witness Mr. Steifensand testified that the
MADONNA brand was adopted and used in Germany since 1908.
Based on personal knowledge, Mr. Steifensand testified as to
Opposition No. 91166355
9
sales of MADONNA branded wine in the U.S. as early as 1981.6
Regarding recent sales, on page 22 of his deposition, Mr.
Steifensand stated:
A: We still sell Madonna wines, in the range of maybe 70,000
bottles on average, let's say, during the past five years.
Q: So as I understand it, for about the past five years, the
sales volume has been on the order of 70,000 bottles of
MADONNA wine per year in the United States; is that correct?
A: Yeah, roughly. And not only to one customer but to many
different states.
An example of the label for opposer’s MADONNA branded
wine was provided as part of Exhibit 35, provided with the
Steifensand testimony deposition.7 The foundation for this
evidence is found in the cross-examination of Mr.
Steifensand, on deposition page 95, between lines 2 and 20,
which read, in part:
Q: If you look at Exhibit 35…third to the last page… Is that
the label you're referring to?
A: That is the Madonna label.
Q: With the old label, same label?
A: Same label.

6 In Mr. Steifensand’s deposition page 47, lines 3 – 6, the
witness stated, regarding sales of MADONNA wine at Premier
Liquors in Buffalo, NY: “I personally worked at that store in
1981, and I remember that I physically sold myself to consumers
on the floor a lot of cases of MADONNA.”
Opposition No. 91166355
10
Q: With the big statue on it?
A Same label we sell to the U.S. and the U.S. business…
We also note that opposer has provided representative
examples of price lists for wine sold for export from
Germany to the United States from as early as 1965. See,
Swingline, Inc. v. Ardco, Inc., 215 U.S.P.Q. 436 (TTAB 1982)
(Price lists accepted to establish priority of use).
Opposer has also provided invoices from as early as 1978,
with extensive examples of invoices provided for the years
after 1999 and continuing up to 2003.
Based on opposer’s uncontroverted testimony and the
exhibits provided with it, opposer has demonstrated use of
the mark MADONNA on wine sold in retail stores in the United
States since at least as early as 1981. We need not rule on
whether the MADONNA trademark was in use before the dates
for which Mr. Steifensand has testified based on personal
knowledge, because opposer has established that is has made
prior use before February 16, 2004, applicant’s filing date.
Applicant asserts in its brief that opposer’s evidence
fails to demonstrate that it has made continuous use of its
MADONNA mark. First, in order to establish priority,
opposer is required only to show prior use, not continuous
use of its mark. See West Florida Seafood Inc. v. Jet

7 We are not persuaded by applicant’s assertion that the label in
question is “illegible” or otherwise fails to display opposer’s
MADONNA mark on its goods.
Opposition No. 91166355
11
Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir.
1994). To the extent that applicant’s continuity argument
may be construed as an abandonment claim, we note that
applicant has not pleaded abandonment as an affirmative
defense. Further, there is no evidence of record showing
that opposer discontinued use of the MADONNA mark with
intent not to resume such use. We note that while opposer
has admitted that it may have stopped distributing wine to
the United States during the years of the Second World War,
it has clearly established use beginning at least as early
as 1981, and has testified to uninterrupted use for the five
years prior to the testimony period.
Based on the foregoing, opposer has shown priority of
use over applicant of its mark MADONNA on wine.
We now turn to the issue of likelihood of confusion
between opposer’s mark and applicant’s mark as used on their
respective goods.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the 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 &
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
Opposition No. 91166355
12
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
See Palm Bay Imports, Inc. v. Veuve Clicquot, supra. In
this case, applicant’s MADONNA mark in standard character
form is identical to opposer’s MADONNA mark in sound, and
nearly identical in appearance. There is nothing in the
record to suggest that the stylization, such as it is, in
opposer’s MADONNA mark, which appears on its labels in
rather ordinary block capital letters, conveys a different
connotation or commercial impression than applicant’s
MADONNA mark in standard characters. Further, there is
nothing in the record to suggest that MADONNA is anything
but a distinctive mark as applied to opposer’s goods. As a
result, we find that the marks are identical in sound and
meaning, and nearly identical in every other respect. This
du Pont factor heavily favors opposer.
The Goods
Next, we turn to our consideration of the similarities
or dissimilarities between the parties’ respective goods.
Opposition No. 91166355
13
In this case, applicant’s goods are “Alcoholic beverages
namely wines, distilled spirits, liqueurs, and brandy.”
Opposer has proven use of its mark on “wine.” Thus,
applicant’s goods include those of opposer and are identical
to them in part. Further, opposer has introduced testimony
and evidence that wine is distributed and encountered with
distilled spirits, liqueurs and brandy in retail stores and
restaurants. Finally, we note that applicant does not argue
that the parties’ goods are dissimilar. This du Pont factor
also heavily favors opposer.
Channels of Trade
Because applicant’s and opposer’s goods are identical
in part, and because there are no restrictions as to their
channels of trade or classes of purchasers, the goods are
presumed to be marketed in all the normal channels of trade
to all the usual purchasers for such goods, and that the
channels of trade and the purchasers for opposer’s goods as
well as applicant’s goods would be the same. See Interstate
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000). It is settled that in making our determination
regarding the relatedness of the parties’ goods, we must
look to the goods as identified in the involved application.
See Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76 (CCPA 1973) (Trademark cases involving the
issue of likelihood of confusion must be decided on the
Opposition No. 91166355
14
basis of the goods, as identified on the application).
Thus, this du Pont factor also favors opposer.
Conditions of Sale
The next du Pont factor discussed by the parties is that of
the conditions of sale. Applicant asserts that the
increased sophistication of wine buyers supports a finding
that the parties’ goods would be purchased by careful and
discriminating consumers. However, there is nothing in the
record to support a finding that opposer’s wines are
expensive or otherwise restricted to sophisticated
consumers. Rather, opposer’s wines appear to be moderately
priced and available to anyone. Inasmuch as applicant has
not yet made use of its mark, there is no evidence regarding
the pricing of its wines and other goods or the nature of
the consumers to whom they are intended to be marketed. As
such, the record in this case does not support a finding
that the consumers of opposer’s goods and the intended
consumers of applicant’s goods are necessarily sophisticated
purchasers. Furthermore, even if some degree of care were
exhibited in making the purchasing decision, because the
marks both consist of the identical term MADONNA, even
careful purchasers are not likely to distinguish between the
marks based only on the typestyle of the capital letters
comprising the parties’ marks. Thus, this du Pont factor
also slightly favors opposer.
Opposition No. 91166355
15
Summary
In view of the foregoing, we find that opposer has
established its standing to bring this proceeding; priority
of use; and that purchasers of opposer’s wine, upon
encountering applicant’s wines, distilled spirits, liqueurs,
and brandy under nearly identical MADONNA marks, are likely
to experience confusion as to the source of the parties’
respective goods.
DECISION: The opposition is sustained on the ground of
priority and likelihood of confusion, and registration to
applicant is refused.