Tinazzi S.r.l.

Trademark Trial and Appeal Board

Jan 22, 2021

88305868 (T.T.A.B. Jan. 22, 2021)

This Opinion is not a
Precedent of the TTAB
Mailed: January 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tinazzi S.r.l.
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Serial No. 88305868
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Leo M. Loughlin of Rothwell Figg Ernst & Manbeck PC,
for Tinazzi S.r.l.

Karen K. Bush, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____

Before Cataldo, Taylor and Dunn,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Tinazzi S.r.l., seeks registration on the Principal Register of the mark
displayed below, identifying “wines” in International Class 33.1

1 Application Serial No. 88305868 was filed on February 18, 2019, based on Applicant’s
assertion of use of the mark in commerce under Section 1(a) of the Trademark Act. 15 U.S.C.
§ 1051(a), since February 27, 2008. The application includes the following description of the
mark and color statement:
The mark consists of a façade in beige outlined in black consisting of a bronze
and gold door flanked by two black and bronze columns whose top and bottom
portions are white; the letter “N” with a small circle on top the number “3” both
in black are superimposed on the door; an arch in beige appears on top of the
façade and is filled with a black outline of a decorative frieze in white; below
the arch, a black, gold and white line separate another frieze on a beige
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of a
likelihood of confusion with the following registered marks:

background consisting of a bronze and gold circle in the middle flanked on each
side by two decorative squares in white and outlined in black; below the façade
a beige line separates the words “VINUM ITALICUM” in black inside a bronze
rectangle; the word “OPERA” in gold sits below the bronze rectangle on a black
background which extends down in the middle above a horizontal green, white
and red stripe streak across.
The color(s) Black, bronze, gold, red, beige, white and green is/are claimed as
a feature of the mark.
In response to the Examining Attorney’s requirement, Applicant disclaimed “VINUM”
apart from the mark as shown.
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Reg. No. 37904632 for the mark identifying “spirits and liqueurs” in
International Class 33;3 and
Reg. No. 42484184 for the mark OPERA (in standard characters) identifying
“alcoholic beverages, namely, wines and sparkling wines” in International Class 33.
After the Trademark Examining Attorney made the refusal final, Applicant filed
a request for reconsideration and appealed to this Board.5 We affirm the refusal to
register as discussed below.
I. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,

2 Issued on May 18, 2010, based upon International Registration No. 1017508, issued on
September 29, 2009. Section 71 affidavit accepted; Section 15 affidavit acknowledged. Section
71 courtesy reminder mailed May 18, 2019. Because the grace period for filing the required
maintenance documents ended November 18, 2020, this registration appears to be on the
verge of cancellation.
3 The Examining Attorney also refused registration based upon a second registration owned
by the same owner as Reg. No. 3790463: Reg. No. 4493164 for the mark NO. 3 (in standard
characters) identifying “whisky, wines, spirits and liqueurs” in International Class 33.
However, this registration was cancelled under Section 71 of the Trademark Act on
November 9, 2020 and no longer serves as a basis for refusal of registration under Trademark
Act Section 2(d).
4 Issued on November 27, 2012. Section 8 affidavit accepted.
5 Page references to the application record are to the downloadable .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
on appeal are to the Board’s TTABVUE docket system.
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575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Guild Mortg. Co., 912
F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor for which there is evidence and argument
of record. See In re Guild Mortg. Co., 129 USPQ2d at 1162-63. Varying weights may
be assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)
(“[T]he various evidentiary factors may play more or less weighty roles in any
particular determination.”); see also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”)). Two key considerations are the similarities between the marks and
the relatedness of the goods. See 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.”); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672
(TTAB 2018).
A. Focus on Cited Reg. No. 4248418
For purposes of the DuPont factors that are relevant to this appeal we will
consider Applicant’s involved mark and the OPERA mark that is the subject of cited
Reg. No. 4248418. If likelihood of confusion is found as to that mark and identified
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goods, it is unnecessary to consider the other cited registration, which it appears will
be cancelled shortly.
B. The Goods and their Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In this case, Applicant’s “wines”
are identical to the “wines” identified in cited Reg. No. 4248418 and encompass the
more narrowly identified “sparkling wines” identified therein.
Where goods are broadly identified in an application or registration (i.e., wines),
“we must presume that the [goods or] services encompass all [goods or] services of the
type identified.” Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB
2015) (where the goods in an application or registration are broadly described, they
are deemed to encompass all the goods of the nature and type described therein),
quoted in In re Country Oven, Inc., 2019 USPQ2d 443903, * 4 (TTAB 2019) and cited
in In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, *11-12 (TTAB 2020).
Thus, Applicant’s broadly worded identification of “wines” necessarily encompasses
all types of wines, including sparkling wines. See In re Hughes Furniture Indus., Inc.,
114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
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‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”).
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1161 (quoting DuPont, 177 USPQ at 567). Inasmuch as the “wines” identified in
the application are identical to the “wines” and legally identical to the “sparkling
wines” identified in the cited Reg. No. 4248418, we must presume that the channels
of trade and classes of purchasers for these goods are the same. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); see also Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers through the same channels of
trade”); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel in the same channels of
trade, and be sold to the same class of purchasers”); Octocom Sys., 16 USPQ2d at
1787 (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of purchasers to which
the sales of goods are directed.”).
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We find that the identity and legal identity of the goods, and their presumed
overlapping channels of trade and consumers weigh heavily in favor of likelihood of
confusion.
C. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s mark and the OPERA mark in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). “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) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014));
accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone
is likely to cause confusion.”).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted); see also
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In
re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Consumers may not
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necessarily encounter the marks in close proximity and must rely upon their
recollections over time. In re Mucky Duck Mustard, 6 USPQ2d 1467, 1468 (TTAB
1988), aff’d mem., 864 F.2d 149 (Fed. Cir. 1988).
Applicant’s mark adopts the wording of the standard
character mark OPERA in its entirety, adding the terms No. 3 and VINUM
ITALICUM and façade design. “Marks have frequently been found to be similar
where one mark incorporates the entirety of another mark, as is the case here.” Coca-
Cola Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105,
106 (CCPA 1975) (BENGAL is similar to BENGAL LANCER); Johnson Publ’g Co. v.
Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY is similar to EBONY
DRUM); In re S. Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY
BUG is similar to LITTLE LADY); see also TiVo Brands LLC v. Tivoli, LLC, 129
USPQ2d 1097, 1115 (TTAB 2019). Thus, the term OPERA common to the marks is
identical in appearance, meaning and sound.
Applicant’s mark also includes the prominently-sized term No. 3 as well as the
wording VINUM ITALICUM. While no translation or meaning for the term
ITALICUM appears in the record, Applicant is an Italian company, and the record
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indicates that VINUM is the Latin term for wine. The wording VINUM ITALICUM
appears to suggest Applicant’s goods, i.e., Italian wine. The term No. 3 has no
recognized meaning on this record applied to the goods. We thus find these terms to
be as visually distinctive of the goods as the term OPERA.
Applicant’s mark also includes the design of a façade including
columns framing a doorway and a decorative frieze within an arch. This design
contains the mark’s wording and also appears to be distinctive as applied to
Applicant’s goods. However, it is settled that where, as here, a mark is comprised of
both words and a design, the words are normally accorded greater weight, in part
because consumers are likely to remember and use the words to request the goods. In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal
portion of a word and design mark likely will be the dominant portion”); In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (“if one of the marks
comprises both a word and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request the goods or services” and
“because applicant’s mark shares with registrant’s mark that element responsible for
creating its overall commercial impression, the marks are confusingly similar”).
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There is nothing in the record to suggest that consumers will utilize the design
portion of Applicant’s mark to request its goods rather than the more conventional
wording.
We recognize the differences between the marks, namely, the visually larger No.
3 and VINUM ITALICUM wording as well as the façade design that are not present
in the OPERA mark. Nonetheless, viewing the marks as a whole, we find purchasers
may reasonably assume, due to presence of the term OPERA in Applicant’s mark
which comprises the totality of Registrant’s mark that Applicant’s goods offered
under its mark emanate from the same source as the identical goods in the cited
registration. As a result, consumers encountering these marks could mistakenly
believe the two are a variation of each other used to identify different wines, but
nonetheless emanating from a common source. For example, NO.3 VINUM
ITALICUM OPERA may be perceived as the third variation of Italian wines from the
same source as OPERA wines. Compare China Healthways Inst. Inc. v Wang, 491
F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (“Applying the DuPont factors to
the marks viewed in their entirety, the addition of the word ‘PLUS’ in Wang’s mark
is unlikely to avoid the confusion for ‘Plus’ ordinarily connotes a related superior
product, not one from a different source.”)
This is especially the case because, “[w]hen marks would appear on virtually
identical good or services, the degree of similarity [of the marks] necessary to support
a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century
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Life of Am., 23 USPQ2d 1698, 1799 (Fed. Cir. 1992). See also ECI Division of E-
Systems, Inc. v. Environmental Commc’ns. Inc., 207 USPQ 443, 449 (TTAB 1980).
Upon evaluating Applicant’s mark and the OPERA mark, we find they are more
similar than dissimilar “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567).
This DuPont factor also weighs in favor of a finding of likelihood of confusion.
D. Conclusion
When we consider the record and the relevant likelihood of confusion factors, and
all of the evidence and arguments relating thereto, we conclude that consumers
familiar with the goods offered under the OPERA mark in cited Reg. No. 4248418
would be likely to believe, upon encountering the identical goods under Applicant’s
mark, that the goods originated with or are associated with or sponsored by the same
entity.
Decision: The refusal to register Applicant’s mark is affirmed under Section 2(d)
of the Trademark Act.