David Abreu

Trademark Trial and Appeal Board

Jun 28, 2005

No. 78211766 (T.T.A.B. Jun. 28, 2005)

Mailed:
June 28, 2005
AZ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re David Abreu
________

Serial No. 78211766
_______

Caroline H. Mead of Squire Sanders & Dempsey LLP for David
Abreu.

Patricia Evanko, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Quinn, Walters and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

David Abreu filed, on February 6, 2003, an application
to register on the Principal Register the mark ABREU
VINEYARDS CAPPELLA for "wine" in International Class 33.
The application is based on applicant's assertion of a bona
fide intention to use the mark in commerce.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 78211766
2
the previously registered mark CAPELLA for "wine and
liqueur" in International Class 33.1
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs, but applicant did not request an oral
hearing. As discussed below, the refusal to register is
affirmed.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act 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. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first turn to the goods involved in this case.
Applicant's goods are in part identical to registrant’s

1 Registration No. 1576703, issued January 9, 1990.
Ser No. 78211766
3
“wines,” and in part closely related to registrant’s
“liqueurs” inasmuch as they are both alcoholic beverages.
Because neither applicant's nor registrant’s
identifications are limited in scope, we presume that their
goods travel in the same channels of trade (e.g., liquor
stores, wine stores, grocery stores), have the same methods
of distribution and are purchased by the same classes of
purchasers (general public, wine connoisseurs). See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).2
We next consider the similarities between the marks.
Specifically, we consider whether applicant's mark and the
registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression. In cases such this case, where the
applicant’s goods are identical in part to the registrant’s

2 Applicant has argued that registrant actually uses its mark on
“liqueur” rather than on “wine.” Applicant's argument is legally
irrelevant - it is well settled that in Board proceedings, "the
question of likelihood of confusion must be determined based on
an analysis of the marks as applied to the goods and/or services
recited in applicant's application vis-à-vis the goods and/or
services recited in [the cited registration], rather than what
the evidence shows the goods and/or services to be." Id.
Further, because we are limited in what we may consider by the
identifications of goods in the application and the cited
registration, applicant's other arguments regarding pricing, the
“roles” of wine and liqueur, the alcohol content of wines and
liqueur, geographical origin, “grape variety,” consumer care, and
sophistication of consumers, are also legally irrelevant.

Ser No. 78211766
4
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, 1700 (Fed. Cir. 1992).
The cited mark consists of the term CAPELLA and
applicant's mark includes the term CAPPELLA. The only
difference between these two terms is an additional “p” in
CAPPELLA. The additional “p” does not change the
pronunciation or sound of CAPELLA, and applicant has not
contended otherwise. Further, the additional “p” changes
the appearance of CAPELLA only slightly, and
insignificantly. In all likelihood, purchasers will not
even notice this difference. Additionally, the record does
not reflect that CAPELLA or CAPPELLA has any meaning or
significance when used in connection with “wine.” 3 Thus,
CAPELLA and CAPPELLA are both arbitrary as used in
connection with the parties’ goods, and the connotation of
the terms is the same. We therefore find that CAPELLA and
CAPPELLA are identical in sound and connotation, and

3 Applicant notes that he selected his mark “from a chapel
located in his vineyard, as well as an arch on that property
bearing the inscription “CAPELLA.” We take judicial notice of
one meaning of CAPPELLA, i.e., “chapel.” Collins Italian
Dictionary (1995). See Hancock v. American Steel & Wire Co. of
New Jersey, 203 F.2d 737, 97 USPQ 330 (CCPA 1953); and TBMP
1208.01 (2d ed. rev. 2004).
Ser No. 78211766
5
virtually identical in appearance. Further, because the
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather 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), and because CAPELLA
and CAPPELLA are identical or virtually identical in sound,
connotation and appearance, we also find that CAPELLA and
CAPPELLA are identical in their commercial impression.
Applicant’s mark also contains the terms ABREU
VINEYARDS. ABREU is applicant's surname and is also the
mark registered in Registration No. 2325747.4 (Applicant
has claimed ownership of Registration No. 2325747 in the
present application.) VINEYARDS, according to applicant,
is a generic term, see p. 9 of applicant's appeal brief,
which we note has been disclaimed by applicant. When
applicant's registered surname is combined with the generic
term “vineyards,” the wording “Abreu Vineyards” is likely
to be perceived by consumers, in connection with wines, as

4 Registration No. 2325747 registered to David Abreu on March 7,
2003 for “wine.” The registration claims acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f).
Ser No. 78211766
6
a unitary phrase and as a house mark or “family mark,”5
identifying the name of the winery that is the source of
applicant's wine. Moreover, considering the mark as a
whole, CAPPELLA is likely to be perceived as indicating a
variety of wine, i.e., "Cappella wine from Abreu Vineyards,
a winery."
Additionally, we have stated in the past that “[w]here
the marks are otherwise virtually the same, the addition of
a house mark or, as in this case, a surname, is more likely
to add to the likelihood of confusion than to aid to
distinguish the marks.” Key West Fragrance & Cosmetic
Factory, Inc. v. The Mennen Company, 216 USPQ 168, 170
(TTAB 1982). In view thereof, and because CAPPELLA is an
arbitrary term in the context of wine, we find that the
addition of ABREU VINEYARDS has the effect of increasing
the likelihood of confusion between the cited mark CAPELLA
and the term CAPPELLA in applicant's mark.6
Applicant has contended that there are “numerous co-
existing marks”; and that “the trademark field already is

5 Applicant has acknowledged that ABREU is a house mark or
“family mark.” See p. 6 of applicant's response (filed February
9, 2004) to the examining attorney’s first Office Action and p.
11 of applicant's appeal brief.
6 As a general rule, one may not adopt another's mark in its
entirety and escape a finding of likelihood of confusion simply
by adding his house mark. J. McCarthy, McCarthy on Trademarks
and Unfair Competition, Section 23:43 (4th ed. 2005).

Ser No. 78211766
7
diluted and ‘consumers will not likely be confused between
any two of the crowd ….’” Applicant relies on the cited
registration for CAPELLA and Registration No. 2641632 for
CAPELLO for “wine,” which the examining attorney also
relied on in first refusing registration of applicant's
mark under Section 2(d) (she later withdrew the refusal).7
These two registrations are insufficient to show that
CAPPELLA lacks distinctiveness in connection with wine.
Applicant further argues that he has no intent to
trade on any goodwill associated with the cited mark.
Because we have sustained the examining attorney’s
objection to the untimely submission of applicant's
evidence with applicant's appeal brief, see discussion in
footnote 7, applicant has no evidentiary support which we
may consider for his argument. Moreover, good faith

7 Applicant also relies on one trademark application, i.e.,
application Serial No. 78232186 for ACAPPELLA “for use with
wine.” Because a copy of this application is not in the record,
we do not give the application or applicant's arguments relating
thereto any consideration. See TMEP Section 710.03. Further,
the examining attorney has objected to the evidence first filed
with applicant's appeal brief, including the “list of names
appearing on a ‘BATF search’” and the declarations of Caroline
Mead (who is applicant's attorney) and David Abreu. See p. 9 of
examining attorney’s brief. We sustain the examining attorney’s
objection to the untimely submission of this evidence and we have
not given any consideration to this evidence. See Trademark Rule
2.142(d); and TBMP § 1207.03 (2d ed. rev. 2004) and cases cited
therein.

Ser No. 78211766
8
adoption does not obviate a likelihood of confusion. See
McDonald's Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995).
In view of the foregoing, mindful that where the marks
appear on identical and closely related goods, the degree
of similarity necessary to support a conclusion of likely
confusion declines, Century 21 Real Estate Corp. v. Century
Life of America, supra, and considering all of the relevant
du Pont factors, we conclude that consumers familiar with
registrant's wine and liqueur offered under the mark
CAPPELLA would be likely to believe, upon encountering
applicant's mark ABREU VINEYARDS CAPELLA, also for wine,
that both originate with or are somehow associated with or
sponsored by the same entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.