Cooperativa Vitivinicola Del Ribeirov.Bacio Divino Cellars, LLC

Trademark Trial and Appeal Board

Feb 28, 2007

No. 91162697 (T.T.A.B. Feb. 28, 2007)

Mailed:
Feb. 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Cooperativa Vitivinicola Del Ribeiro
v.
Bacio Divino Cellars, LLC
_____

Opposition No. 91162697
to application Serial No. 76521453
filed on June 9, 2003
_____

Melanie Bradley of Kirkpatrick & Lockhart LLP for
Cooperativa Vitivinicola Del Ribeiro.

Scott W. Petersen of Holland & Knight LLP for Bacio Divino
Cellars, LLC.
______

Before Grendel, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Bacio Divino Cellars, LLC (applicant) seeks
registration on the Principal Register of the mark PAZZO (in
standard character form) for goods identified in the
application as “wine.”1 The application includes the

1 Serial No. 76521453, filed June 9, 2003. The application is
based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and November 24, 2002 is alleged to be the date
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91162697
2
following translation statement: “The word ‘PAZZO’ is an
Italian word meaning ‘mad,’ ‘insane’ or ‘crazy.’”
Cooperativa Vitivinicola Del Ribeiro (opposer) has
opposed registration of applicant’s mark on the ground that
applicant’s mark, as applied to applicant’s goods, so
resembles opposer’s mark PAZO, previously registered (in
standard character form) for goods identified as “wines,”2
as to be likely to cause confusion, to cause mistake or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Opposer’s pleaded registration includes the following
translation statement: “The term ‘PAZO’ is Spanish for
‘Galician country house.’”
The evidence of record includes the file of the
involved application, the pleadings herein, and a status and
title copy of opposer’s pleaded registration, submitted by
opposer via notice of reliance.3 The case is fully briefed.
We sustain the opposition.
Because opposer has properly made its pleaded
registration of record, and because opposer’s likelihood of

of first use of the mark anywhere and the date of first use of
the mark in commerce.

2 Registration No. 2683616, issued February 4, 2003.

3 We sustain opposer’s objection to applicant’s notice of
reliance on certain of applicant’s marketing materials; such
materials may not be made of record by notice of reliance. See,
e.g., Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017
(TTAB 2003). We have given these materials no consideration.
(We note in any event that even if we had considered these
materials, they would not have affected our decision herein.)
Opposition No. 91162697
3
confusion claim is not wholly without merit, we find that
opposer has established its standing to oppose registration
of applicant’s mark. See Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); see
also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000).
Moreover, because opposer’s pleaded registration is of
record, Section 2(d) priority is not an issue in this case
as to the mark and goods covered by said registration. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We find, first, that applicant’s goods as identified in
the application, i.e., “wine,” are identical to the goods
identified in opposer’s registration, i.e., “wines.” We
Opposition No. 91162697
4
further find that these identical goods are or would be
marketed in identical trade channels to identical classes of
purchasers. Neither applicant’s nor opposer’s
identification of goods includes any limitations or
restrictions as to the nature, trade channels or purchasers
for the goods, and we therefore presume that the identified
goods include all types of wine, and that they are marketed
in all normal trade channels and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639 (TTAB
1981). For these reasons, we find that the second and third
du Pont factors (similarity of goods, similarity of trade
channels) weigh in favor of a finding of likelihood of
confusion.
We also find that the fourth du Pont factor (conditions
of purchase) likewise favors opposer in this case. Wines
are ordinary consumer goods, often inexpensive, that are
purchased by ordinary purchasers without a great deal of
care.
We turn next to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. The test, under
the first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
Opposition No. 91162697
5
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the recollection
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Moreover, in cases such as this, where the applicant’s goods
are identical to the opposer’s goods, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Applying these principles in the present case, we find,
first, that applicant’s PAZZO mark is similar to opposer’s
registered PAZO mark in terms of appearance. The presence
in applicant’s mark of the additional “Z” does not suffice
to distinguish the marks visually. We also find that the
marks are similar in terms of sound. Again, the presence in
applicant’s mark of the additional “Z” does not suffice to
distinguish the marks aurally. Moreover, it is settled that
there is no “correct” pronunciation of trademarks. See,
e.g., Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461 (TTAB 1985).
Opposition No. 91162697
6
In terms of connotation, we find that to the extent
that the connotations of these marks would be apparent at
all to purchasers, they are similar. There is no evidence
in the record which establishes any foreign language
meanings of these words,4 and no evidence that purchasers
would readily translate the words in any event. See Palm
Bay Imports, supra, 73 USPQ2d at 1696 (“When it is unlikely
that an American buyer will translate the foreign mark and
will take it as it is, then the doctrine of foreign
equivalents will not be applied.” See also Safeway Stores
Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ2d 1980, 1982
(TTAB 1987)(“[T]his Board does not think it proper to take
the French expression ‘bel air’ and the Italian expression
‘bel aria’ and then convert both into English and compare
the English translations...”).
In terms of overall commercial impression, we find that
the marks are highly similar. The commercial impressions of
both marks are that they are vaguely foreign-looking and
foreign-sounding words which purchasers are likely to take
as they are, and which purchasers are likely to confuse due
to the obvious similarities in appearance and sound.
For these reasons, we find that the marks are similar
rather than dissimilar, under the first du Pont factor. The

4 The translation statements appearing in the application and the
registration, respectively, are not in themselves actual evidence
of the meanings of the words.
Opposition No. 91162697
7
marks certainly are similar enough that confusion is likely
to result if both marks were to be used on the identical
goods involved herein. See Century 21 Real Estate Corp.,
supra.
In summary, we find that the parties’ respective marks
are similar, that their respective goods are identical, and
that the goods are or would be marketed in the same trade
channels and to the same classes of purchasers. Balancing
all of the relevant du Pont factors, we conclude that a
likelihood of confusion exists. To the extent that any
doubts might exist as to the correctness of our conclusion,
we resolve such doubts against applicant. See Century 21
Real Estate Corp., supra; Ava Enterprises Inc. v. Audio Boss
USA Inc., 77 USPQ2d 1783 (TTAB 2006); and Baseball America
Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).

Decision: The opposition is sustained.