S.A. Establecimientos Vitivinicolas Escorihuela

Trademark Trial and Appeal Board

Sep 19, 2008

No. 78967315 (T.T.A.B. Sep. 19, 2008)

Mailed:
September 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re S.A. Establecimientos Vitivinicolas Escorihuela
________

Serial No. 78967315
_______

Julie B. Seyler of Abelman, Frayne & Schwab for S.A.
Establecimientos Vitivinicolas Escorihuela.

Michael Litzau, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Rogers, Zervas and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On September 5, 2006, S.A. Establecimientos
Vitivinicolas Escorihuela (“applicant”) filed an
application under Trademark Act §§ 1(a) and 44(e), 15
U.S.C. §§ 1051(a) and 1126(e), to register the mark

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 78967315
2
on the Principal Register for “wine” in International Class
33. Applicant has claimed first use anywhere and first use
in commerce on July 1, 2007 and has entered the following
description of the mark: “The mark consists of the
stylized words ‘Don Miguel Gascon’ with an accent mark
above the ‘O’ in GASCON, and below GASCON the design
elements of circles and slashes in four horizontal rows."
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark HACIENDA DE DON MIGUEL (in
standard character form) for “wines” in International Class
33.1 The registration includes the following statement:
“HACIENDA can be translated as ‘estate.’ Thus a
translation of the mark is ‘Don Miguel Estate.’"
Registrant has entered a disclaimer of the term HACIENDA.
Additionally, the examining attorney has required
(i) that a true copy, photocopy, certification or certified
copy of the foreign registration on which applicant relies
under Section 44(e) of the Trademark Act be submitted in
order to satisfy the requirements of Section 44(e); and
(ii) that applicant submit a specimen of use supported by a
statement, verified with an affidavit or signed declaration

1 Registration No. 3098323, issued May 3, 2006.
Ser No. 78967315
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under Trademark Rule 2.20, 37 C.F.R. § 2.20, supporting the
specimen. The application does not now contain either a
specimen of use or copy of the foreign registration on
which applicant relies.
Applicant has appealed the final refusal and the
requirements of the examining attorney. Both applicant and
the examining attorney have filed briefs.2 As discussed
below, the refusal to register is affirmed.
We first address one preliminary matter. Applicant
sought to introduce into the record evidence with its
attorney’s brief, to which the examining attorney has
objected. The examining attorney’s objection is sustained.
As stated in Trademark Rule 2.142(d), 37 C.F.R. 2.142(d),
in countless Board decisions, in TMEP § 710.01(c) and in
TBMP § 1207.01 (2d. ed. rev. 2004), the record should be
complete prior to the filing of an appeal. Applicant could
have easily entered the evidence it seeks to enter through
its brief earlier in this proceeding; the issues which are
discussed in applicant's brief are the same as those
discussed in applicant's responses to the examining
attorney’s Office actions.3 We therefore do not further

2 Applicant's reply filed late because applicant did not receive
the examining attorney’s brief, is accepted.
3 At fn. 5 of its brief, applicant has offered another argument
in support of allowing its late-filed evidence into the record.
It maintains that “the third party registrations constitute
Ser No. 78967315
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consider any of applicant's evidence submitted with its
brief, which is the only evidence submitted in connection
with its application.
Turning next to the merits of the Section 2(d)
refusal, our 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 (the du Pont factors). 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 re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). Because applicant and the examining attorney have
focused their arguments on the similarity and dissimilarity
of the goods and marks, we also focus on these two du Pont
factors.
Applicant's and registrant’s goods are identical. The
du Pont factor regarding the similarity of the goods

official records and therefore should be admitted as evidence.”
Applicant provides no support for its argument, but ostensibly is
relying on Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), which
concerns the admission of official records at trial during an
inter partes proceeding pursuant to the notice of reliance
procedure. That rule has no applicability in this ex parte
proceeding.
Ser No. 78967315
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therefore weighs heavily in favor of finding a likelihood
of confusion.
We next consider the du Pont factor regarding the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under this du Pont factor, is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Finally, in cases
such as this, where the goods are identical, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Applicant, who points out that “the marks are to be
compared in their entireties and not dissected in to [sic]
Ser No. 78967315
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their individual components,” and who accuses the examining
attorney of “ignoring the basic precept that marks are to
be compared in their entireties,” nonetheless contends that
that “a consumer is much more likely to remember the GASCON
element rather than the [D]on [M]iguel element when
recalling the goods,” and that “the primary source-
identifier of Applicant's mark is GASCON.” Brief at p. 7.
Applicant also relies on Giant Food, Inc. v. Nation’s
Foodservice, Inc. 218 USPQ 390 (CAFC 1983) for the
proposition that “one feature of a mark may be more
significant than other features” and “it is proper to give
greater force and effect to that dominant feature,” i.e.,
GASCON.
The Federal Circuit has stated that there is nothing
improper in giving more weight, for rational reasons, to a
particular portion or feature of a mark. See In re
National Data Corp., 753 F.2d 1056 USPQ 749 (Fed. Cir.
1985). Turning first to registrant’s mark, we find that
the term DON MIGUEL is the dominant part of that mark. The
disclaimed term HACIENDA, translated as “estate,” serves
little in indicating the source of the goods because it is
a descriptive term that identifies a place where the goods
are produced. Rather, it is the DON MIGUEL portion of the
mark, translated as DON MIGUEL’s ESTATE or ESTATE OF DON
Ser No. 78967315
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MIGUEL, which largely serves as the source indicator of the
mark, and is entitled to more weight in our analysis than
the remaining terms in registrant’s mark.
The wording DON MIGUEL also appears in applicant’s
mark. Applicant has placed DON MIGUEL in lettering smaller
than the term GASCON, but by including DON MIGUEL in the
manner it has, applicant's mark still suggests an
association with or sponsorship by registrant. Those
familiar with registrant’s mark would likely believe that a
connection exists between applicant’s and registrant’s
identical goods.4
Applicant has also included design elements in its
mark. These design elements do not distance the mark from
registrant’s mark. Because of their simple shapes, the
design elements would be viewed merely as background for
the wording in applicant's mark. Additionally, if a mark
comprises both a word and a design, the word portion is
normally accorded greater weight because it would be used
by prospective consumers to order the services or be spoken
through word of mouth. See In re Appetito Provisions Co.,

4 Applicant, referring to the term “don” at p. 9 of its brief,
argues that it is a “title of respect [and it] cannot be viewed
as particularly strong.” Applicant's argument is not persuasive
because the common portion of the marks is DON MIGUEL, not DON.

Ser No. 78967315
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3 USPQ2d 1553 (TTAB 1987); Ceccato v. Manifattua Lane
Gaetano Marzotto & Figli, Spa., 32 USPQ2d 1192 (TTAB 1994).
Thus, when we consider the marks as a whole, we find
that applicant's mark is similar in sound and appearance to
registrant’s mark in view of applicant's inclusion of the
dominant portion of registrant’s mark, DON MIGUEL, in its
mark. We also find that the marks are similar in meaning;
Merriam-Webster’s Online Dictionary located at merriam-
webster.com defines “don” as “a Spanish nobleman or
gentleman — used as a title prefixed to the Christian
name,” and, of course, “Miguel” is a name. The meaning of
DON MIGUEL, i.e., a Spanish nobleman or gentleman named
Miguel, is the same in both marks; the addition of GASCON
and the design elements in applicant's mark do not change
the meaning of DON MIGUEL.5 As for the commercial
impression of the marks, the commercial impression is also
similar because DON MIGUEL is in both marks and has the
same meaning in both marks. The inclusion of GASCON in
applicant’s mark would not distinguish the marks because
registrant’s mark would be viewed as merely omitting the

5 We take judicial notice of this definition; the Board may take
judicial notice of dictionary definitions including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002); University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Ser No. 78967315
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surname of DON MIGUEL, while applicant’s mark would be
viewed as providing it. The du Pont factor regarding the
marks is resolved against applicant.
Applicant maintains that there have been no instances
of actual confusion between the marks. However, there is
nothing in the record to show that there has been a
meaningful opportunity for such confusion to have occurred.
More importantly, in the context of an ex parte proceeding,
“the lack of evidence of actual confusion carries little
weight.” Majestic Distilling, supra, 65 USPQ2d at 1205.
Applicant's argument regarding actual confusion therefore
is unpersuasive, and the seventh du Pont factor is neutral.
Another point applicant makes is that applicant has
alleged a date of use earlier than registrant's filing
date. However, this is not relevant since we do not
determine priority in an ex parte proceeding. In re Calgon
Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (“As the
board correctly pointed out, ‘the question of priority of
use is not germane to applicant's right to register’ in
this ex parte proceeding”). See also In re Kent-Gamebore
Corp., 59 USPQ2d 1373 (TTAB 2001).
In short, we find that the marks are similar, and that
the goods are identical. Based on these findings under the
relevant du Pont factors, we conclude that a likelihood of
Ser No. 78967315
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confusion exists. Applicant’s arguments to the contrary
are not persuasive.
As for the examining attorney’s requirements regarding
applicant’s foreign registration and specimen of use, which
the examining attorney has not addressed in its briefs,
they too are affirmed.
Decision: The refusal to register under Section 2(d)
is affirmed. The refusal to register for applicant’s
failure to comply with requirements to submit a specimen of
use and the relevant foreign registration also is affirmed.