Bodegas Eduardo Garrido, S.L.

Trademark Trial and Appeal Board

May 14, 2018

No. 87334693 (T.T.A.B. May. 14, 2018)

This Opinion is not a
Precedent of the TTAB
Mailed: May 14, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Bodegas Eduardo Garrido, S.L.
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Serial No. 87334693
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Jaime Rich Vining and David K. Friedland of Friedland Vining, P.A.
for Bodegas Eduardo Garrido, S.L.

Kim Teresa Moninghoff, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Wolfson, Lykos and Coggins,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Bodegas Eduardo Garrido, S.L. (“Applicant”) seeks registration on the Principal
Register of the mark depicted below for “wine,” in International Class 33.1

1 Application Serial No. 87334693 was filed on February 14, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.

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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles
the mark shown below, registered on the Principal Register for “wine, red wine” in
International Class 33,2 as to be likely to cause confusion, mistake or deception.

When the refusal was made final, Applicant appealed and requested
reconsideration. Upon the denial of the request for reconsideration, the appeal was
resumed. The appeal is now fully briefed. We affirm the refusal to register.
I. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Even within the du Pont list, only
factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark

2 Registration No. 3435079, issued on May 27, 2008, renewed. The phrase “TINTO
SUPERIOR” is disclaimed. “The mark consists of [t]he wording MANSION GARRIDO in
different stylized fonts, with a line below these words and the wording TINTO SUPERIOR
under the line.” Color is not claimed as a feature of the mark. “The foreign wording in the
mark translates into English as SUPERIOR RED.”
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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 the similarities between
the goods. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017); 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.”).
A. Similarity of the Goods/Channels of Trade/Consumers
We turn first to a comparison of the goods as identified in the application and cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s application is
for “wine” and the cited registration is for “wine, red wine.” Therefore, the goods are
identical. Because the goods are identical, we must presume that these goods travel
in the same channels of trade to the same classes of consumers. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of purchasers, the Board was
entitled to rely on the legal presumption that identical goods travel in the same
channels of trade to the same classes of purchasers in determining likelihood of
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confusion). Accordingly, the second and third du Pont factors weigh in favor of finding
a likelihood of confusion.
B. Similarity/Dissimilarity of the Marks
The crux of this appeal turns on the first du Pont likelihood of confusion factor,
under which we compare Applicant’s and Registrant’s marks “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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). It is well-settled that where the goods are identical, typically less similarity
between the marks is needed in order to find a likelihood of confusion. See, e.g.,
Viterra, 101 USPQ2d at 1908; Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). (“When marks would appear
on virtually identical goods or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.”). The proper focus is on the recollection of
the average customer, who retains a general rather than specific impression of the
marks. 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 1434, 1438 (TTAB 2012);
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
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Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the
goods are “wine” without any restrictions or limitations as to price point or classes of
consumers, the average customer is an ordinary adult consumer.
Applicant contends that the marks are so different in appearance, pronunciation,
connotation and commercial impression that the first factor “is dispositive of the issue
of likelihood of confusion.”3 Because the similarity or dissimilarity of the marks is
determined based on the marks in their entireties, the analysis cannot be predicated
on dissecting the marks into their various components; that is, the decision must be
based on the entire marks, not just part of the marks. See Stone Lion, 110 USPQ2d
at 1161; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Nonetheless, “in articulating reasons for reaching a conclusion on the issue of
confusion, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data,
224 USPQ at 751. Looking at the marks in their entireties, and considering
Registrant’s mark first in terms of appearance and pronunciation, we find the marks
are somewhat similar. The term GARRIDO stands out as the most dominant element,
conveying the strongest commercial impression, in Registrant’s mark. It is presented
in the largest letters, centered in position and depicted in a bold font. The term

3 Appeal Brief, 4 TTABVUE 5. All citations to the prosecution history for the application are
to the downloadable PDF versions of the documents in the TSDR (Trademark Status and
Document Retrieval) database. Citations to the appeal record are to TTABVUE. See, e.g.,
Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1203.01 (June 2017).

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MANSION is less significant, as it modifies GARRIDO and suggests wine that comes
from an estate or large house.4 The descriptive, disclaimed wording TINTO
SUPERIOR also does not serve to distinguish the marks, as it merely describes the
type of wine being sold, that is, a superior red wine.5 The stylization of the wording
of the mark, including the large “G” and “O” in GARRIDO and the underline
separating MANSION GARRIDO from TINTO SUPERIOR, do not overshadow or
detract from the prominence of Registrant’s surname GARRIDO. If anything, the
underline attracts the eye to the GARRIDO surname and as noted, the use of
MANSION evokes a wine-labeling practice whereby terms, such as “maison,”
“palacio,” and “chateau,” are used in connection with surnames and other words to
identify a particular winery and refer to the location where the wine is produced.6
As regards Applicant’s mark, looking at the mark in its entirety, it consists of a
large, bold letter “G” alongside the name EDUARDO GARRIDO GARCIA. To the
extent the marks share the term “Garrido,” they are similar in appearance and

4 The term “mansion” is defined as “a large imposing residence” or “manor house.” MERRIAM-
WEBSTER at https://www.merriam-webster.com, accessed May 10, 2018. The Board may take
judicial notice of dictionary definitions, including definitions or entries from references that
are the electronic equivalent of a print reference work. See Univ. of Notre Dame du Lac v. J.
C. Gourmet Food Imps. Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009).
5 Applicant does not challenge this translation, which appears on the cited registration.
6 The Examining Attorney submitted copies of 32 registrations for marks containing either
the term MAISON, PALACIO, or CHATEAU in combination with other terms to show that
it is common for wine trademarks to contain a word that refers to a winery as a “house,”
“palace,” or “castle,” similar in connotation to “mansion.” May 22, 2017 final Office Action at
50-129. Applicant also submitted four registrations for marks for wine that contain the term
MANSION, which further illustrate the use of the term as referring to a location where wine
is produced. July 5, 2017 Request for Reconsideration, Exhibit A, at 16-18; 20-21.
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pronunciation. Applicant argues that GARRIDO is not the dominant portion of its
mark because the letter “G” is equally large, and as prominent as, the “stacked”
words. In the alternative, Applicant argues that the term EDUARDO dominates,
because it is “the first term in Applicant’s stacked design” and because “there are no
registered or pending trademarks containing ‘EDUARDO’ in connection with wine.”7
To the contrary, the Examining Attorney submitted copies of four registrations of
wine marks that contain the term EDUARDO or its English variation EDWARD,8
along with copies of five registrations for marks for the term GARCIA that are also
for wine, and a USPTO XSearch report summary showing that the cited registration
is the only registration containing the term GARRIDO in International Class 33. This
evidence shows that “Garrido” appears less often in registrations than “Garcia” and
“Eduardo,” supporting the conclusion that GARRIDO will be a focus of Applicant’s
mark. Moreover, because the initial letter “G” and the final letter “O” of GARRIDO
are larger than the other letters in Registrant’s mark, this deepens the similarity in
appearance and pronunciation with Applicant’s mark, given that Applicant’s mark
also includes a large letter “G,” stacked initial letters “G,” and final letters “O.”
Continuing with the analysis, it is in connotation and overall commercial
impression that the marks share the greatest similarity. The literal portion of
Applicant’s mark is the Spanish-language name EDUARDO GARRIDO GARCIA. In

7 4 TTABVUE 15-16.
8 May 22, 2017 final Office Action at 10-35.
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the name, both GARRIDO and GARCIA are surnames.9 Personal names in Spanish
typically contain a given name, followed by two family names; “[t]he first surname is
usually the father’s first surname, and the second the mother’s first surname.”10 The
Examining Attorney argues that as the first surname, GARRIDO would be accorded
greater weight in Applicant’s mark. Based on the record, we agree. As explained by
the Wikipedia entry submitted by the Examining Attorney: “A man named Jose
Antonio Gomez Iglesias would normally be addressed as either señor Gomez or señor
Gomez Iglesias instead of señor Iglesias, because Gomez is his first surname.”11 Thus,
it would be more likely to refer to Eduardo Garrido Garcia as Sr. Garrido, and not as
Sr. Garcia. Because consumers are likely to perceive Applicant’s mark as identifying
a person whose primary surname is GARRIDO, the similarity between the marks is
increased. The Board has regularly affirmed Section 2(d) refusals where a mark
containing a person’s full name has been compared to a mark containing just the
surname. See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) (JOSE GASPAR GOLD confusingly similar to GASPAR’S ALE); In
re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1139 (TTAB 2015) (BRADLEY
HUGHES confusingly similar to H HUGHES FURNITURE MOTION EAZE

9 In a Lexis search, the Examining Attorney located 13,928 public record references for
persons with the surname GARRIDO and 1748457 surname entries for GARCIA. At
https://w3.lexis.com, attached to May 22, 2017 final Office Action at 136-37. Applicant
submitted a copy of a page from the Lexis Advance Public Records that located more than
3000 results for individuals in the U.S. with the surname GARRIDO. May 11, 2017 Response
at 18.
10 Wikipedia, Spanish Naming Customs, https://en.wikipedia.org, attached to May 11, 2017
Office Action at 10-11.
11 Id.
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RECLINERS and design); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111
USPQ2d 1419, 1446-47 (TTAB 2014) (BRUCE WINSTON confusingly similar to
WINSTON and also to HARRY WINSTON). “This is especially true given the legally
identical nature of goods at issue.” In re Hughes, 114 USPQ2d at 1139.
In addition, the Examining Attorney points to Applicant’s manner of use of its
mark to prove that consumers would focus on the surname GARRIDO. First, the
Examining Attorney points to a page from Applicant’s website,12 showing that in
other versions of the mark, Applicant emphasizes the GARRIDO surname:13

12 Material obtained from an applicant’s website is acceptable as competent evidence. See
Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (internet
printouts “on their face, show that the public may have been exposed to those internet
websites and therefore may be aware of the advertisements contained therein”);
Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240, 244 (TTAB 1985) (“Evidence of the
context in which a particular mark is used on labels, packaging, etc., or in advertising is
probative of the significance which the mark is likely to project to purchasers.”); cf. In re N.V.
Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006) (printouts from applicant’s website show
that applicant touts the taste of its product); In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB
2006) (using printouts as evidence that the mark is merely descriptive of applicant’s services);
In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1898 (TTAB 2001) (using printouts to show
a distinct commercial market for “Russian art”).
13 At http://www.bodegaeduardogarrido.es/index.html, attached to May 11, 2017 Office
Action at 9.
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14
Secondly, the Examining Attorney points to applicant’s trade name, Bodegas
Eduardo Garrido, S.L., and Applicant’s website address,
http://www.bodegaeduardogarrido.es/, as supporting the contention that consumers
will focus on the term GARRIDO in Applicant’s mark, because the second surname
GARCIA is omitted in each. As illustrated by the advertisement, and as supported by

14 The Examining Attorney states that the webpage “discusses three generations of wine
makers, all of which are identified with the surname Garrido: Vicente Garrido, Eduardo
Garrido, and Amelia Garrido.” 10 TTABVUE 9. While that may be, the webpage as submitted
is in Spanish. The Board does not take judicial notice of translations of text appearing in a
foreign language on a website, even in a common modern language such as Spanish. The
better practice would have been to download the English language version via the link
provided on the webpage.
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the trade name and address usage, it is likely that when recalling Applicant’s wine,
consumers will focus on the surname “Garrido.”
We find that overall Applicant’s mark is similar in sound and appearance, as well
as in connotation and commercial impression, to the cited registered mark.
Accordingly, the first du Pont factor weighs in favor of a finding of likelihood of
confusion.
C. Third-Party Use of Similar Marks
Under the sixth du Pont factor, we consider “[t]he number and nature of similar
marks in use on similar goods.” du Pont, 177 USPQ at 567. Evidence of third-party
use bears on the strength or weakness of a registrant’s mark. In re i.am.symbolic, llc
123 USPQ2d at 1751. If the evidence establishes that the consuming public is exposed
to third-party uses of similar marks for similar services, it “is relevant to show that
a mark is relatively weak and entitled to only a narrow scope of protection.” Palm
Bay v. Veuve Clicquot, 73 USPQ2d at 1693.
The Examining Attorney argues that Registrant’s mark is strong because there
are no other marks that use GARRIDO for wine. To show weakness, Applicant
submitted a copy of Registration No. 3724707 for the mark depicted below for
“wholesale distributorships of foods and beverages, including groceries and spirits.”15

15 Reg. No. 3724707 issued on December 15, 2009, Section 8/15 combined declaration accepted
and acknowledged. Attached to July 5, 2017 Request for Reconsideration at 25.
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Applicant contends that the existence of this registration “demonstrates that
consumers are exposed to marks containing the common surname ‘GARRIDO’ and
that they have come to recognize smaller differences.”16 Suffice it to say, the fact that
a single registration exists for services only tangentially, if at all, related to wine does
not support a finding that Registrant’s mark is weak. See Bond v. Taylor, 119
USPQ2d 1049, 1055 (TTAB 2016) (single use proffered by applicant insufficient to
establish that opposer’s mark is weak); American “76” Co. v. National Brewing Co.,
158 USPQ 417, 420 (TTAB 1968) (single registration insufficient). This factor is
neutral.
II. Balancing of Factors
When we consider that the goods, channels of trade and consumers are identical,
and the marks are overall similar based on the shared word GARRIDO, despite the
presence of other elements in Applicant’s and Registrant’s marks, we find that
confusion is likely.
Decision: The refusal to register Applicant’s mark under Trademark Act Section
2(d) is affirmed.

16 4 TTABVUE 25.