OAKVILLE HILLS CELLAR, INC., dba DALLA VALLE VINEYARDS, Appellant
GEORGALLIS HOLDINGS, LLC, Appellee
from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 91211612.
Scott Gerien, Dickenson Peatman & Fogarty, Napa, CA, for
L. Dranit, Spaulding McCullough & Tansil LLP, Santa Rosa,
CA, for appellee.
Lourie, Moore, and Chen, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
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.
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.
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).
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.
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.
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."
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.
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.
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 ...