Don Sebastiani & Sons International Wine Negotiants

Trademark Trial and Appeal Board

May 30, 2017

No. 86692212 (T.T.A.B. May. 30, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Don Sebastiani & Sons International Wine Negotiants
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Serial No. 86692212

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Warren L. Dranit of Spaulding McCullough & Tansil LLP,
for Don Sebastiani & Sons International Wine Negotiants.

Andrew Rhim, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Zervas, Mermelstein and Masiello,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Don Sebastiani & Sons International Wine Negotiants (“Applicant”) seeks
registration on the Principal Register of the standard character mark CONTIGO for
spirits in International Class 33.1 The English translation of the mark is “with you.”

1 Application Serial No. 86692212, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), asserting a bona fide intent to use the mark in commerce.
Serial No. 86692212
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The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on Registration No. 42802602
for the standard character mark SOLO CONTIGO for wine in International Class 33.
The English translation of the mark is “only with you.”
After the Examining Attorney issued a final Office Action, Applicant appealed the
refusal to register. Both Applicant and the Examining Attorney filed briefs, and
Applicant filed a reply brief. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re
Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).

2 Registered January 22, 2013.
Serial No. 86692212
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Similarity or Dissimilarity of the Marks
We compare the marks for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. Palm Bay Imp., 73 USPQ2d at 1692. The
test is not whether the marks can be distinguished when subjected to a side-by-side
comparison, 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. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under actual
marketing conditions, consumers do not necessarily have the luxury of making side-
by-side comparisons between marks, and must rely upon their imperfect
recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB
1980). The focus is on the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. In re Assoc. of the United
States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Initially, we point out that Applicant’s mark is contained in its entirety within
registrant’s mark. Likelihood of confusion has been found where one mark is
incorporated within another mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant's mark ML is similar to registrant's
mark ML MARK LEES); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 (TTAB
2007) (CLUB PALMS MVP for casino services confusingly similar to MVP for casino
services offered to preferred customers identified by special identification cards); In
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re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for
women's clothing stores and women's clothing likely to cause confusion with CREST
CAREER IMAGES for uniforms including items of women's clothing); In re Rexel Inc.,
223 USPQ 830, 831 (TTAB 1984) (finding likelihood of confusion between GOLIATH
for pencils and LITTLE GOLIATH for a stapler).
With regard to the appearance of the marks, we find that the marks are similar
because they both include the words CONTIGO. Both marks are in standard
character form, and may be displayed in the same font style and size. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012); Citigroup Inc. v.
Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.
2011). As standard character form marks, they are “not limited to any particular
rendition of the mark.” In re Mighty Leaf Tea, 94 USPQ2d at 1260. See also Citigroup
98 USPQ2d at 1258-59; Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000). The marks look different to the extent that the word
SOLO appears as the first term in registrant’s mark but not in Applicant’s mark.
Even though SOLO is the first term in registrant’s mark, on balance, we find the
marks to be more similar than dissimilar in appearance, due to the shared term
CONTIGO.
In terms of sound, we find that the marks are different to the extent that
registrant’s mark includes the word SOLO and Applicant’s mark does not. However,
we find that CONTIGO would be pronounced the same in both marks, as the entirety
of Applicant’s mark and as the second term in registrant’s mark comprising three
Serial No. 86692212
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syllables of registrant’s five-syllable mark. On balance, we find that the similarity in
sound which results from the presence in both marks of the identically-pronounced
word CONTIGO outweighs the dissimilarity which results from the presence of the
word SOLO in registrant’s mark.
In terms of connotation, we note that Applicant’s and registrant’s marks are both
composed of Spanish words. Applicant and the Examining Attorney have both
analyzed the marks under the doctrine of foreign equivalents. The Board, however,
in Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009), stated the proper
analysis for marks composed of wording in the same foreign language:
The doctrine of foreign equivalents is normally applied
where one mark is in a foreign language, and the other
mark is in English. … We do not think the circumstances
present in this case warrant application of the doctrine.
Here, where both marks are Spanish words we must
consider the connotation of the marks to both non-Spanish-
speaking consumers and to Spanish-speaking consumers.
Id. at 1756. Thus, we need not analyze the marks under the doctrine of foreign
equivalents but consider the connotation of the marks to both non-Spanish-speaking
consumers and to Spanish-speaking consumers.
In Brown Shoe, the Board considered the connotation of the Spanish words
PALOMA and PALOMITA, and stated, “[i]n English the words have no meaning and
therefore, although non-Spanish-speaking consumers would not understand the
words, because of the similarity in appearance and pronunciation the marks likely
would be perceived as having similar meanings.” Id. Here, we apply the same
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reasoning and find that non-Spanish speaking consumers3 form two groups; those
who perceived CONTIGO as a fanciful, coined term and those who perceive the marks
as comprising foreign wording.
Those in the first group will not accord any meaning to the marks; the visual and
phonetic aspects of the marks, as well as the overall commercial impression created
by the marks, will be the critical elements in forming their impression of the marks.
Those in the second group are likely to perceive CONTIGO as having the same or
similar foreign language meaning in each mark. Id. at 1756. We reject Applicant’s
contention that because “solo” is a word in both English and Spanish (meaning
“alone” in both languages),4 English speakers “will infuse SOLO CONTIGO with a
meaning of something undertaken or done alone … [with] an incongruity between an
English word and a Spanish word.”5 Non-Spanish speaking consumers in both groups
would likely consider the term “solo” as suggesting the uniqueness of the brand
CONTIGO or that the brand CONTIGO stands alone.
With regard to Spanish speaking consumers, Applicant states at p. 8 of its brief:6
Critical to assessing the similarity of the marks is that
SOLO CONTIGO has a different meaning and different

3 We find based on the identifications of goods that consumers are any adult member of the
general public who drinks wine and spirits or purchases them for others.
4 See the English definition of “solo” submitted by Applicant with its April 19, 2016 Response,
TSDR 7-10; and definition of “solo” from Merriam-Webster Spanish English Dictionary,
accessed at http://www.spanishcentral.com/translate/solo. The Board may take judicial notice
of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
5 Applicant’s brief at 11, 4 TTABVUE 12.
6 4 TTABVUE 9.
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commercial impression than Applicant's CONTIGO mark.
For the large population of Spanish speaking consumers in
the U.S., SOLO CONTIGO is a unitary phrase that is used
as a term of endearment. The phrase is personal and used
with someone for whom you have affection such as a
boyfriend or a girlfriend. As a complete phrase, it is
something one person says to another person with
affection: “solo contigo.”
(citations to the record omitted.) Applicant’s arguments are supported by the
declaration of Teresa Ramirez, who states she is a legal assistant with Applicant’s
law firm and is fluent in Spanish. Ms. Ramirez adds that the term “contigo” alone has
a much different meaning and impression, i.e., something that is with you and not a
sense of endearment; as a single word ‘contigo’ is grammatically incomplete and not
something that would be used by itself; and because it is not used in a phrase or
sentence, the consumer is left to fill in or guess what is “with you.”7 Applicant has not
explained why “solo contigo” is not as grammatically incomplete as “contigo” alone.
Applicant has not provided any examples of usage in articles, books or postings of
“solo contigo” showing the phrase applied in an endearing manner. Further,
Applicant’s declarant does not point out how one would say “only with you” in Spanish
to someone other than a boyfriend or girlfriend, and does not indicate her credentials
or level of expertise in translation. While we have considered the declaration, we are
not persuaded. In addition, Applicant’s assertion that the Examining Attorney did
not raise any deficiencies in the declaration in the following Office Action issued after
Applicant submitted Ms. Ramirez’s declaration8 does not restrict our consideration of

7 April 19, 2016 Resp., Ramirez Decl. ¶¶ 5-12, TSDR 18.
8 Reply brief at 2, 7 TTABVUE 3.
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the declaration; the declaration is not immune to criticism merely because the
Examining Attorney did not point out its weaknesses immediately after its
submission.
In considering the marks in their entireties, we find that Spanish-speaking
consumers in the United States will understand the marks as meaning “with you”
and “only with you,” which are the translations of record for both the present
application and the cited registration, without any contextual limitation. Because
“with you” and “only with you” have very similar meanings, we find that Spanish
speaking consumers will find the marks similar in connotation.9
We turn now to a comparison of the parties’ marks in terms of commercial
impression. It is settled that although the marks at issue must be considered in their
entireties, one feature of a mark may be found to be more significant than another as
a source-indicator, and it is not improper to give more weight to this dominant feature
in determining the commercial impression created by the mark, and in comparing the
marks at issue under the first du Pont factor. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004). “Indeed, this type of analysis appears
to be unavoidable.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).

9 Applicant states at p. 4 of its reply brief, 7 TTABVUE 5, “Consumers who speak Spanish
are not going to translate the marks because the literal elements are Spanish and they speak
the language. Consumers who do not speak Spanish will not translate the marks because
they do not understand the language. It is why the examining attorney’s comparison of the
English translations of the two marks is not persuasive.” We have acknowledged that those
who do not speak Spanish will not translate the marks or assign literal meaning to them.
However, in order for the Board to understand and assess the impressions created by the
marks on Spanish speakers, we require an English translation.
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Applicant reasons that SOLO is the dominant term in registrant’s mark because
of “the well-established principle that consumers are more inclined to focus on the
first word, prefix or syllable in any trademark;”10 and because “‘solo’ is also an English
word.”11 We are not persuaded that SOLO is the dominant term in registrant’s mark.
Even if its initial position in the mark gives it some visual salience, to a non-Spanish
speaker, CONTIGO remains the more distinctive portion of the mark because, unlike
SOLO, it has no meaning. On the other hand, to a Spanish-speaker, SOLO would be
understood to function as an adjective, modifying the term CONTIGO, which, in
meaning, is the more distinctive term in the mark. Additionally, SOLO imparts a
lyrical or rhyming nature in registrant’s mark and hence would not be considered
independently of CONTIGO. Rather, due to the shared term CONTIGO, we find that
the commercial impressions of the marks are similar.
As noted above, in comparing the parties’ marks under the first du Pont factor, we
must take into account the fallibility of purchasers’ memory over time and the fact
that purchasers tend to retain a general rather than a specific impression of the many
trademarks they encounter. While Applicant’s and registrant’s marks are not
identical, that is not the test under the first du Pont factor. See In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1468 (TTAB 1988). We find that any distinction
in the marks caused by the additional term SOLO is outweighed by the overall

10 Applicant’s brief at 11, 4 TTABVUE 12.
11 Id.
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similarity resulting from the shared term CONTIGO. The du Pont factor regarding
the similar of the marks hence favors a finding of likelihood of confusion.
Similarity of goods, channels of trade and classes of consumers
We next compare the goods as they are 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) (goods as identified in involved application
and cited registration compared); Octocom Sys., Inc. v. Houston Computers Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). If the
goods are described broadly, and there is no limitation as to the nature, type, channels
of trade or class of purchasers, it is presumed that the registration encompasses all
goods of the type described, that they move in all channels of trade normal for these
goods, and that they are available to all usual classes of purchasers. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
In support of his contention that Applicant’s “spirits” are related to registrant’s
“wine,” the Examining Attorney submitted webpages featuring wine and spirits
together.12 See, for example:
McMenamins
“We handcraft our own beer, wine, cider, spirits and
coffee.”13

Nashoba Valley Winery
Lists links to “winery” and “spirits” and states “Nashoba
has been producing award winning wines for 33 years” and

12 Most of the submitted webpages do not list a URL.
13 May 12, 2016 Office Action, TSDR 4.
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“Nashoba valley produces and sells some of the finest
brandies, eau de vie, cordials and vodka … ever produced”
and listing “Nashoba ‘Single Malt’ Whiskey.”14

Bartlett
Displays rum and wine under the same BARTLETT
mark.15

Cedar Ridge Winery and Distillery
“We put only the best into our wines and spirits – nothing
else will do.”16

Fiore Winery
References “award winning wines of Fiore” and promoting
a Limoncello product using “The Fiore’s … cherished
recipe.”17

Glaser Estate Winery
Displaying GLASER vodka and limoncello and stating
“Glaser Estate Winery has been producing exceptional,
quality wines.”18

Ransom
“Ransom is an artisan producer of small batch wines and
spirits from Oregon grapes.”19

Woodstock Creek
“As a true artisan winery and boutique distillery,
Woodstone Creek produces 100-200 cases of wine, mead
and distilled spirit yearly. … Woodstone offers an unusual
range of mead … from dry to sweet and fortified dessert
wines. Woodstone’s potstill produces brandy, honey liquor,
five grain bourbon, single malt whisky … rum, gin,
bierschnaaps and vodka.”20

14 Id., TSDR 6.
15 Id., TSDR 8.
16 Id., TSDR 10.
17 Id., TSDR 11-12.
18 Id., TSDR 13-14.
19 Id., TSDR 15.
20 Id., TSDR 16.
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Koenig Distillery & Winery
Koenig Distillery and Winery “combines Old World brandy,
vodka, and winemaking traditions … to produce classic
eau-de-vie fruit brandies, premium varietal wines, and
Potato Vodka.”21

The Examining Attorney’s evidence persuades us that there is a commercial
relationship between the goods. The websites demonstrate that wines and spirits are
manufactured by the same entities and may be sold under the same house mark and
offered on the same websites. In addition to the websites, it is common knowledge
that these goods would be sold in the same specialized retail outlets. Given that there
are no limitations in the identifications in the applications or registration, we find
that the channels of trade and class of purchasers overlap. See Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Applicant makes several arguments in support of its contention that the goods are
not related, none of which we find persuasive. First, Applicant argues that the goods
differ because “[w]ine is fermented grapes; spirits are distilled grains.”22 It is well
settled, however, that the fact that the goods may differ is not controlling. The issue
to be determined is whether there is a likelihood of confusion as to the source of the
goods, not as to the goods themselves. In re Rexel Inc., 223 USPQ at 831. Second,
Applicant argues that the Examining Attorney’s evidence is limited in number given

21 October 23, 2015 Office Action, TSDR 14.
22 Applicant’s brief at 5, 4 TTABVUE 6.
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the “plethora” of wine brands.23 This argument is not persuasive because the issue is
not what percentage of wineries are in the business of producing and selling both
wine and spirits; the issue is whether consumers would expect the source of both
goods to be the same entity if sold under the same or similar mark. The Examining
Attorney’s evidence is sufficient in quality and quantity to establish that consumers
would expect the source of both goods to be the same if the goods were offered under
confusingly similar marks. Third, Applicant argues:
wine and spirits are treated differently. In every website
example submitted … there are separate pages for wine
and for spirits. This is similar to retail shopping where
wine is displayed in one location of the store and spirits are
displayed in another.24
The problem with Applicant’s analysis is that the evidence of record is from
producers of wine and spirits and not a merchant selling countless products. Thus,
even though several websites feature wine and spirits on different webpages, they
suffice to establish that spirits and wine may emanate from the same producer.
In sum, we are not persuaded by Applicant’s arguments that the goods are
unrelated. Rather, in view of the evidence of record and for the reasons stated, and
because the goods are both alcoholic beverages, we find that the du Pont factors
regarding the similarity of the goods, as well as established, likely to continue trade
channels and classes of purchasers, favor a finding of likelihood of confusion.

23 Applicant’s brief at 6, TTABVUE 7.
24 Id.
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Balancing the factors
Applicant’s mark and the cited mark are similar, and the goods, trade channels
and classes of consumers are related. Thus, upon consideration of all of the arguments
offered by the Examining Attorney and Applicant, and all the evidence in the record,
including evidence and arguments not specifically mentioned in this decision, we find
that there is a likelihood of confusion between Applicant’s and registrant’s marks for
their respective goods.
Decision: The refusal to register Applicant’s mark is affirmed.