Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC

United States Court of Appeals, Federal Circuit

June 24, 2016

OAKVILLE HILLS CELLAR, INC., dba DALLA VALLE VINEYARDS, Appellant
v.
GEORGALLIS HOLDINGS, LLC, Appellee

         Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 91211612.

          James Scott Gerien, Dickenson Peatman & Fogarty, Napa, CA, for appellant.

          Warren L. Dranit, Spaulding McCullough & Tansil LLP, Santa Rosa, CA, for appellee.

          Before Lourie, Moore, and Chen, Circuit Judges.

          LOURIE, CIRCUIT JUDGE.

         Oakville Hills Cellar, Inc. ("Oakville"), doing business as Dalla Valle Vineyards, appeals from the decision of the United States Patent and Trademark Office ("PTO") Trademark Trial and Appeal Board ("the Board") dismissing its opposition to an application filed by Georgallis Holdings, LLC ("Georgallis") to register a MAYARI mark for use on wine. See Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, No. 91211612, 2015 WL 4573202 (T.T.A.B. July 16, 2015) ("Opinion"). Because substantial evidence supports the Board's finding that Oakville's registered mark MAYA and Georgallis's applied-for mark MAYARI are sufficiently dissimilar, we affirm.

         Background

         Georgallis filed an application at the PTO, seeking to register the mark MAYARI in standard characters for use on wine in International Class 33. Oakville opposed the registration, alleging that Georgallis's mark would likely cause confusion with Oakville's previously registered and used mark MAYA in typed form, which is equivalent to standard characters, also for use on wine in International Class 33. Opinion at *1 & n.2.

         The parties argued, and the Board evaluated, the following DuPont factors: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression ("the first DuPont factor"); (2) the similarity or dissimilarity of the goods as described in an application or registration or in connection with which a prior mark is in use ("the second DuPont factor"); (3) the similarity or dissimilarity of trade channels ("the third DuPont factor"); (4) the conditions under which and buyers to whom sales are made ("the fourth DuPont factor"); (5) the fame of the prior mark; (6) similar marks in use on similar goods ("the sixth DuPont factor"); (7) the absence of actual confusion; (8) the right to exclude others from use; (9) the extent of potential confusion; and (10) other probative facts, here, federal labelling requirements applicable to wine. Id. at *2–8; see also In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (listing factors relevant to the likelihood of confusion determination).

         The Board found that the second, third, and fourth DuPont factors favored a finding of likelihood of confusion, Opinion at *2–3, but that the first DuPont factor favored a finding of no likelihood of confusion, id. at *3–6. The Board also found the remaining DuPont factors that it analyzed to be neutral. Id. at *6–8.

         Specifically, for the second DuPont factor, the Board found the goods at issue to be "identical, " despite "a substantial difference in price" and other "differences in the specific nature of the wines" sold by Oakville and Georgallis.[*] Id. at *2. The Board reasoned that "[i]n the context of an opposition proceeding, the question of registrability of an applicant's marks must be decided on the basis of the identifications of goods set forth in the application and registration at issue." Id. Because Georgallis "has requested a registration applicable to all kinds of wine in all price ranges, " and because Oakville's registration "covers use of its mark on all kinds of wine, " the Board found the second DuPont factor to weigh in favor of a finding of likelihood of confusion. Id. Likewise, the Board found the third and fourth DuPont factors, namely, the similarity of trade channels and the sophistication of buyers, to weigh in favor of a finding of likelihood of confusion. Id. at *3.

         Turning to the first DuPont factor, the similarity or dissimilarity of the marks in appearance, sound, connotation, and commercial impression, the Board found that the marks at issue, MAYA and MAYARI, "are visually similar only in part." Id. at *6. The Board noted that MAYA and MAYARI share the initial four letters. Id. at *4. But the Board found "no reason to perceive any separation, visual or otherwise, between the MAYA- and -RI portions" of MAYARI because "[t]he letters RI, alone, have no relevant meaning, providing no reason for a customer to view the mark logically as MAYA plus RI, rather than as a single unitary expression." Id. The Board also rejected Oakville's argument that "the bottle label [bearing the mark MAYARI] will inevitably appear to read 'MAYA' at certain orientation relative to an observer, " reasoning that "the likelihood of such a mistake remains a matter of speculation, absent evidence regarding the occurrence or regularity of mistakes of this sort." Id.

         As to sound, the Board found "nothing in the record to indicate how MAYARI would be pronounced." Id. While acknowledging that MAYA could be pronounced the same in those marks, the Board "consider[ed] the possibility that MAYARI might be pronounced with the emphasis on its second or third syllables, and that the -YAR- syllable might be salient." Id. The Board thus found that "no evidence show[ed] that [the marks] would be pronounced alike, and they may well be pronounced quite differently." Id. at *6.

         Regarding meaning, Oakville argued that both marks are female given names and the names of goddesses. Id. at *5. In particular, Oakville contended that Maya is a female name of Latin origin and the name of a Hindu goddess, whereas Mayari is a female name of Filipino origin and the name of a Filipino goddess. Id. Oakville also presented evidence to show that Mayari appears on an Internet list of Filipino names under the rubric of "Gods, Goddesses and Deities of the Philippines" and on certain websites that discuss Tagalog myths. Id.

         But the Board was not persuaded that "customers would be aware of the more esoteric meanings of the marks." Id. at *6. Rather, the Board agreed with Georgallis and found that "most customers would likely perceive MAYA as a female personal name or the name of the pre-Columbian civilization" and "perceive MAYARI as a coinage without meaning." Id. The Board reasoned that "customers would likely find the term MAYA to be somewhat familiar, while finding MAYARI unfamiliar." Id. Overall, the Board found that "the marks create significantly different commercial impressions." Id ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.