Sensi Vigne & Vini SRL

Trademark Trial and Appeal Board

Feb 21, 2020

79201501 (T.T.A.B. Feb. 21, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sensi Vigne & Vini SRL
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Serial No. 79201501
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Kathleen A. Costigan of Hedman & Costigan PC,
for Sensi Vigne & Vini SRL.
Darryl M. Spruill, Trademark Examining Attorney, Law Office 112,
Renee Servance, Managing Attorney.
_____

Before Wolfson, Pologeorgis and English,
Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:
Sensi Vigne & Vini SRL (“Applicant”) seeks registration on the Principal Register
of the mark set forth below for “wines; sparkling wines” in International Class 33.1

1 Application Serial No. 79201501; filed July 7, 2016 under Section 66(a) of the Trademark
Act, 15 U.S.C. § 1141f(a) based on International Registration 1330957; “FAMILY OF
WINEMAKERS SINCE 1890” disclaimed. The application includes the following description
of the mark: “The mark consists of a design of a bottle label with a border and bearing a
design of a rose and branch with an oval with the stylized wording ‘DOLCE VITA’ above the
stylized wording ‘DEI SENSI FAMILY OF WINEMAKERS SINCE 1890’ where the wording
‘WINEMAKERS’ is superimposed over ‘1890’.” Color is not claimed as a feature of the mark.
The application also includes the following translation statement: “The English translation
of ‘DOLCEVITA’ in the mark is ‘sweet life’ and the English translation of ‘DEI SENSI’ is ‘of
the senses’.”
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The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the standard
character mark DULCE VIDA for “distilled spirits” in International Class 33.2 When
the refusal was made final, Applicant appealed and requested reconsideration. The
Examining Attorney denied Applicant’s request for reconsideration, and the appeal
was resumed. We affirm the refusal to register.
I. Analysis

Our 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 likelihood of
confusion. In re E. I. DuPont de Nemours & Co, 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S.
138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co. Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont

2 Registration No. 3615462; issued May 5, 2009. Section 8 declaration accepted; Section 15
declaration acknowledged. The registration includes the following translation statement:
“The English translation of DULCE VIDA is SWEET LIFE.”
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factor that is relevant or for which there is evidence of record. See In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v.
M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and between the goods or services. See In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
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.”); see also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Similarity or Dissimilarity of the Goods and Trade Channels

We first address the similarity or dissimilarity of the goods. The respective goods
need not be identical or directly competitive for there to be a likelihood of confusion,
but the evidence must establish that the goods are related in some manner, or the
conditions surrounding their marketing are such, that they could be encountered by
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the same purchasers under circumstances that could give rise to the mistaken belief
that the goods come from a common source. Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003-04 (Fed. Cir. 2002); see also In re Rexel,
Inc., 223 USPQ 830, 831 (TTAB 1984).
The Examining Attorney has introduced: (1) web pages showing thirteen entities
each operating as a combined winery and distillery producing and selling both wine
and distilled spirits;3 five of the entities sell wine and distilled spirts under the same
mark: BARTLETT, CEDAR RIDGE, MOUNTAIN VIEW, KOENIG, and RANSOME;4
(2) 20 active third-party, use-based registrations showing that different entities have
registered the same marks for both wine and distilled spirits5; and (3) web pages
showing three retailers selling both wine and spirits.6 This evidence is sufficient to
establish that wine and distilled spirts are related. In re Country Oven, Inc., 2019
USPQ2d 443903 *5 (TTAB 2019); L’Oreal S.A. v. Macron, 102 USPQ2d 1434, 1440
(TTAB 2012) (third-party websites and registrations showed that a single entity may
offer both parties’ products under the same mark); In re G.B.I. Tile and Stone, 92
USPQ2d 1366, 1369 (TTAB 2009) (finding goods related based on third-party

3 September 17, 2017 Office Action at TSDR 44-49; March 30, 2018 Final Office Action at
TSDR 12-28; Denial of Request for Reconsideration, 5 TTABVUE 8-19.
Citations to the prosecution record are to the Trademark Status & Document Retrieval
(“TSDR”) system by page number in the downloadable .pdf versions of the documents. All
other citations are to TTABVUE, the Board’s online docketing system.
4 September 17, 2017 Office Action at TSDR 44-45 and 48-49; March 30, 2018 Final Office
Action at TSDR 20-24; Denial of Request for Reconsideration, 5 TTABVUE 10-11.
5 September 17, 2017 Office Action at TSDR 9-40; March 30, 2018 Final Office Action at TSDR
37-59.
6 March 30, 2018 Final Office Action at TSDR 29-36.
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registrations and Internet evidence showing the goods originating from a common
source); In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (finding
goods related based on third-party Internet evidence showing applicant’s and
registrant’s goods sold by a single source and twenty-one third-party use-based
registrations covering both applicant’s and registrant’s goods). Applicant has not
attempted to refute this evidence.
Because neither the application nor the cited registration includes limitations as
to trade channels or classes of purchasers we presume that the goods move in all the
normal channels of trade for such goods – liquor stores, bars, and restaurants – and
flow to the same classes of purchasers.7 See Schieffelin & Co. v. Molson Cos., Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989) (“[S]ince there are no restrictions with respect to
channels of trade in either applicant’s application or opposer’s registrations, we must
assume that the respective products travel in all normal channels of trade for those
alcoholic beverages” including “bars, restaurants, and liquor stores”); see also In re

7 Applicant makes a passing argument in its Appeal Brief that purchasers of Applicant’s and
Registrant’s alcoholic beverages are likely to exercise a “level of care” that will make
confusion unlikely. Appeal Brief, 17 TTABVUE 10. There is, however, nothing in the record
showing that purchasers of wine or distilled spirits are particularly sophisticated, or would
exercise a greater degree of care in making a purchase than the general public. In re Opus
One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001) (no evidence that wine, in general, is
expensive, or that purchasers are sophisticated and careful in making purchasing decisions).
Because the identifications of goods do not include restrictions on the classes of consumers or
conditions of sale, we must presume that the purchasers of Applicant’s wine and Registrant’s
distilled spirits include casual consumers of inexpensive or moderately-priced wine and
distilled spirits. In re Bercut-Vandervoort & Co., 229 USPQ 763, 765 (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”); In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1195 (TTAB 2018) (“The relevant purchasers
are ordinary consumers in the United States who purchase wine[.]”).
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Chatam Int’l Inc., 71 USPQ2d at 1947-48 (tequila and beer and ale sold in similar
trade channels); In re Majestic Distilling Co., 65 USPQ2d at 1204 (malt liquor and
tequila “similar by virtue of the fact that both are alcoholic beverages that are
marketed in many of the same channels of trade to many of the same consumers”);
Monarch Wine Co. v. Hood River Dist., Inc., 196 USPQ 855, 857 (TTAB 1977) (whisky,
vodka, rum, brandy, wine and champagne travel in same channels of trade to the
same classes of purchasers); In re AGE Bodegas Unidas, S.A., 192 USPQ 326 (TTAB
1976) (“[T]here is clearly a relationship between wine and whiskey, both of which
alcoholic beverages are sold through the same specialized retail outlets to the same
purchasers, and are frequently bought at the same time[.]”).
Accordingly, the relatedness of the goods, trade channels, and classes of
purchasers weigh in favor of finding a likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
We now consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014); DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014)).
The issue 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
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their overall commercial impression that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning LLC, 688 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than specific impression of trademarks. Geigy Chem. Corp. v. Atlas Chem. Indus.,
Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102
USPQ2d at 1438; Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). We do not predicate our analysis on a dissection of the involved marks; we
consider the marks in their entireties. Stone Lion, 110 USPQ2d at 1160; 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.”). But one
feature of a mark may be more significant than another, and it is not improper, for
rational reasons, to give more weight to a dominant feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. In re
Chatam Int’l Inc., 71 USPQ2d at 1946; Packard Press, Inc. v. Hewlett-Packard Co.,
227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000).
Applicant disputes that “Dolcevita” is the dominant element of its mark, arguing
that its “stylized presentation of ‘Dolcevita’ as one word and the additional wording
dei SENSI, ‘of the senses’, along with the distinctive floral elements and the [wording
‘FAMILY OF WINEMAKERS SINCE 1890’] is very likely to make a significant and
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lasting impression on the purchaser’s memory.”8 In arguing the differences between
the marks, Applicant cites In re White Rock Distilleries, Inc., 92 USPQ2d 1282, 1284
(TTAB 2009) where the Board found that the standard character mark VOLTA for
energy vodka infused with caffeine was not confusingly similar to the registered mark
for “wines.” In that case, the term common to both marks
(“VOLTA”) was displayed in the registered mark in substantially smaller font than
the term “TERZA” and below a prominent design element. Id. at 1284 (describing the
term TERZA as “dominant” and the design feature as “prominent”).
Here, the “Dolcevita” part of Applicant’s mark is dominant because it is the first
word to appear on Applicant’s bottle label, and it is prominently displayed in the top
center of the design, in large font, against a blank oval background with a double
outline. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (first word in the mark
and on the label “remains a ‘prominent feature’”). The term “SENSI” is also displayed

8 Appeal Brief, 17 TTABVUE 12.
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in large font and in bold, but it is less prominent because it is displayed at the bottom
of the design and the letters “NSI” blend into the floral background design. The
wording “FAMILY OF WINEMAKERS SINCE 1890” is merely descriptive or
informational and has been disclaimed so it is entitled to less weight in the likelihood
of confusion analysis. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.”’) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 985)); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”). Similarly, the floral design serves as a decorative
background and does little to distinguish Applicant’s mark from the cited mark.
The dominant part of Applicant’s mark “Dolcevita” is similar in both appearance
and sound to the cited mark DULCE VIDA. The terms are spelled similarly with the
difference of only the second vowel, “o” vs. “u,” the last consonant “t” vs. “d,” and the
addition of a space in the cited mark. The letters “t” and “d” are often pronounced
similarly,9 the space in the cited mark is inconsequential, and the different
pronunciation of the initial vowels “o” and “u” is minor. Accordingly, it is foreseeable

9 The letters “d” and “t” produce similar sounds because both letters are “alveolar stops.”
Encyclopedia Britannica, https://www.britannica.com/topic/stop-speech-sound (last visited
February 20, 2020). The Board may take judicial notice of information from online
encyclopedias that are available in printed format. See, e.g., In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1087 n.3 (TTAB 2016); In re White Jasmine LLC, 106 USPQ2d 1385, 1392
n.24 (TTAB 2013).

Serial No. 79201501
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that consumers will pronounce the dominant portion of Applicant’s mark similarly to
the cited mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir.)
(“[T]here is no correct pronunciation of a trademark, and consumers may pronounce
a mark differently than intended by the brand owner.”); Schieffelin & Co., 9 USPQ2d
at 2073 (recognizing that the marks BRADOR for malt liquor beer and ale and BARS
D’OR for Cognac brandy “can be pronounced in different ways” but that “they are
susceptible of being pronounced in the identical manner”).
The similarity in sound between the “Dolcevita” portion of Applicant’s mark and
the cited mark DULCE VIDA is significant. Restaurant and bar patrons are likely to
place verbal orders for Applicant’s and Registrant’s alcoholic beverages, and because
customers have a propensity to shorten marks when referring to them, it is forseeable
that consumers will use the dominant term “Dolcevita” to request or refer to
Applicant’s wine. In re Aquitaine Wine, 126 USPQ2d at 1188 (“[C]onsumers often
have a propensity to shorten marks when ordering [goods] orally[.]”); In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (finding ML likely
to be perceived as a shortened version of ML MARK LEES when used on the same or
closely related skin care products); Big M Inc. v. U.S. Shoe Co., 228 USPQ 614, 616
(TTAB 1985) (“[W]e cannot ignore the propensity of consumers to often shorten
trademarks and[.]”); see also In re Viterra Inc., 101 USPQ2d at 1908 (“In the case of
a composite mark containing both words and a design, ‘the verbal portion of the mark
is the one most likely to indicate the origin of the goods to which it is affixed.’”). Bar
and restaurant patrons also are unlikely to see Applicant’s label before ordering, and
Serial No. 79201501
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may never see the label if Applicant’s wine is served by the glass, as wine often is
served in bars and restaurants. In re Bay State Brewing Co., 117 USPQ2d 1958, 1961
(TTAB 2016).
The marks also engender similar connotations and commercial impressions based
on the dominance of the term “Dolcevita” in Applicant’s mark. “Dolce vita” (two
words) is defined in an American English dictionary as meaning “sweet life.”10
Consumers are likely to attribute this meaning to the term “Dolcevita” in Applicant’s
mark even though it is displayed as one word. Applicant has added a translation
statement to its mark description, stating that the term DOLCEVITA means “sweet
life.” Because of the similarity in spelling, the cited mark DULCE VIDA conveys a
similar meaning and commercial impression; likewise, Registrant has indicated in its
registration that the English translation of DULCE VIDA is “sweet life.” Moreover,
because distilled spirits and wine are related, when consumers familiar with the cited
mark encounter Applicant’s mark, they are likely to perceive Applicant’s mark as
denoting an extension of Registrant’s brand from distilled spirits to wine. See, e.g.,
Schieffelin & Co., 9 USPQ2d at 2073 (“Those consumers who do recognize the
differences in the marks may believe that applicant’s mark is a variation of opposer’s
mark that opposer has adopted for use on a different product.”); cf. In re Toshiba
Medical Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN “more
likely to be considered another product from the previously anonymous source of
TITAN medical diagnostic apparatus, namely, medical ultrasound devices”); In re

10 February 22, 2017 Office Action at TSDR 7.
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Fiesta Palms, LLC, 85 USPQ2d 1360, 1367 (TTAB 2007) (affirming refusal to register
CLUB PALMS MVP based on prior registration for MVP, finding consumers “likely
to believe that the CLUB PALMS MVP casino services is simply the now identified
source of the previously anonymous MVP casino services”).
Lastly, we keep in mind that although Applicant’s mark is a word and design
mark, the cited mark is a standard character mark without limitation on the manner
of display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983); In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy
Prods. Corp., 8 USPQ2d 1012, 2015 (TTAB 1998). Accordingly, we must assume that
Registrant could display its mark in a stylization identical or similar to the literal
portions of Applicant’s mark. In re Aquitaine Wine, 126 USPQ2d at 1186 (“Since
Registrant’s mark is a standard character mark, we must consider that the literal
elements of the mark (the words and the letters) may be presented in any font style,
size or color, including the same font, size and color as the literal portions of
Applicant’s mark. This is because the rights associated with a standard character
mark reside in the wording per se and not in any particular font style, size, or color.”)
(citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1259 (Fed. Cir. 2011).
When the marks are compared in their entireties, the additional words and design
elements in Applicant’s mark create some differences in appearance and commercial
impression and the additional words somewhat distinguish Applicant’s mark in
sound. But “Dolcevita” is the dominant portion of Applicant’s mark and for the
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reasons discussed above, it weighs more heavily in the overall appearance, sound,
connotation and commercial impression of Applicant’s mark. Accordingly, we find
that the marks, when considered in their entireties, are more similar than dissimilar
and this weighs in favor of finding a likelihood of confusion.
C. Applicant’s Prior Registration
The thirteenth DuPont factor relates to “any other established fact probative of
the effect of use.” DuPont, 177 USPQ at 567. It is under this factor that we consider
Applicant’s argument that its mark should be allowed to register because Applicant
owned Registration No. 4582150 for “a similar mark” that coexisted on the register
with the cited mark.11
As an initial matter, Applicant never made its prior registration of record. The
Board does not take judicial notice of registrations in Office records, but because both
Applicant and the Examining Attorney treat the registration as if it is of record, we
do too. In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017).
Registration No. 4582150 issued August 12, 2014 for the mark set forth below for
“wine” and was cancelled September 26, 2016 because the underlying International
Registration was cancelled.

11 Appeal Brief, 17 TTABVUE 13-14.
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Applicant argues that the coexistence of the marks on the register “even for a few
years is a relevant consideration as it clearly indicates that the United States Patent
and Trademark Office has determined that such marks can co-exist without buyer
confusion as to source of the goods.”12 In support of this assertion, Applicant cites to
In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). In that case, the
applicant owned a subsisting registration for a “substantially similar mark for the
identical goods” that had “coexisted with the cited mark for over five years.” Id. at
1399 (“Purchasers are unlikely to perceive any distinction in overall commercial
impression between ANYWEARS and ANYWEAR”). Because the applicant’s prior
registration was over five years old, it was not vulnerable to attack by the owner of
the cited registration based on a claim of priority and likelihood of confusion under
Section 2(d) of the Trademark Act. Id. The Board found that this “unique situation”
outweighed the other DuPont factors and led to a conclusion that confusion was not
likely. Id. at 1400.

12 Id.
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The circumstances here are entirely different. Applicant’s prior registration is
cancelled. Cancellation of a registration “destroys the Section [7(b)] presumptions and
makes the question of registrability ‘a new ball game’ which must be predicated on
current thought” and the current record. In re Hunter Publ’g Co., 204 USPQ 957, 963
(TTAB 1979); see also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635
(Fed. Cir. 2016) (“[The Federal Circuit], like the Board must evaluate the evidence in
the present record to determine whether there is sufficient evidence ….”); In re
Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009)
(“[E]ach application must be considered on its own merits.”); In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (same).
Accordingly, we treat the thirteenth DuPont factor as neutral.
II. Conclusion

The goods are highly related, the trade channels and classes of purchasers are the
same, and the marks are more similar than different in appearance, sound,
connotation and commercial impression. It is foreseeable that consumers will
perceive Applicant’s mark as identifying an extension of Registrant’s product line
from distilled spirits to wine. Accordingly, we find that confusion is likely between
Applicant’s mark and the cited mark.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.