Duca di Salaparuta S.p.Av.Corvus Cellars LLC

Trademark Trial and Appeal Board

Jun 26, 2012

No. 91191848 (T.T.A.B. Jun. 26, 2012)

Mailed:
June 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Duca di Salaparuta S.p.A

v.

Corvus Cellars LLC
_____

Opposition No. 91191848
to application Serial No. 77652324
filed on January 19, 2009
_____

G. Franklin Rothwell and Anne M. Sterba of Rothwell, Figg,
Ernst & Manbeck P.C. for Duca di Salaparuta S.p.A.

Anthony M. Verna III of Kravitz & Verna LLC for Corvus
Cellars LLC
______

Before Seeherman, Cataldo and Shaw, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91191848
2
Duca di Salaparuta S.p.A. has opposed the application
of Corvus Cellars LLC to register CORVUS and design, as
shown below, for wine.1

The application contains the following description:
The mark consists of a circle that has a tan ‘C’
on the left hand side of the circle with the ‘C’
opening to the right side. There is a copper
background and a black raven that fills the lower
two thirds of the circle. In the black area that
makes up the raven, there is an ivory star, the
raven’s eye in ivory and the word ‘CORVUS’ in
ivory. The colors black, copper, tan, ivory are
claimed as a feature of the mark.

The opposition has been brought on the ground of
likelihood of confusion, Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d).2 Specifically, opposer has alleged
that since prior to the priority date of applicant’s
application opposer has used and advertised the mark CORVO
in the United States for wine; that it owns a registration

1 Application Serial No. 77652324, filed January 19, 2009,
asserting first use in November 2006 and first use in commerce in
March 2007.
2 Opposer initially pleaded the ground of dilution as well,
Section 43(c) of the Trademark Act, but in its trial brief it
withdrew this claim.
Opposition No. 91191848
3
for CORVO for wines that was registered in 1950; that its
mark is famous and that it acquired such fame prior to
applicant’s use; that November 2006 is the earliest
possible date that applicant can rely on; and that
applicant’s mark so resembles opposer’s previously used and
registered mark CORVO that its use on wines is likely to
cause confusion or mistake or to deceive.
In its answer applicant has admitted opposer’s
ownership of its pleaded registration, No. 532892,
registered on October 31, 1950, for CORVO for wines; that
this registration is valid, subsisting and incontestable;
and that applicant has no connection with opposer.3
Applicant has otherwise denied the allegations in the
notice of opposition. Applicant has also made certain
assertions in amplification of its denial that its mark is
likely to cause confusion. One of these assertions is that
opposer “produces, and is known for producing, only
Sicilian wines,” ¶ 2, and that opposer “is a large company
with an international presence.” ¶ 9.4

3 The registration, which was made of record with opposer’s
notice of opposition, was issued on October 31, 1950. Section 8
and 15 affidavits have been respectively accepted and
acknowledged, and the registration has been renewed three times.
4 One of the allegations made by applicant in these “defenses”
is that “CORVO is a descriptive mark for a type of wine (a dry
white or red wine from Sicily).” At the discovery conference
held between the parties, at which a Board interlocutory attorney
participated, the Board attorney explained that an attack on a
Opposition No. 91191848
4
By operation of the rules, the record includes the
pleadings and the file of the opposed application. Opposer
has also made of record, by notice of reliance, applicant’s
responses to one interrogatory; applicant’s responses to
certain of opposer’s requests for admission; Internet
printouts; and articles from printed publications. Opposer
also submitted by notice of reliance an additional copy of
its pleaded registration. Applicant did not submit any
evidence. Opposer and applicant filed trial briefs, and
opposer filed a reply brief.5
Standing
Opposer has made its registration for CORVO for wine
of record. In view thereof, opposer has shown a personal
stake in this proceeding, and has established its standing.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

pleaded registration can only be made by way of a counterclaim or
petition to cancel the registration, and that, because opposer’s
registration is more than five years old, it could not be
cancelled on the ground of mere descriptiveness. The parties
agreed that they would not go forward on the affirmative defense
and on November 25, 2009 the Board struck the defense of mere
descriptiveness.
5 In opposer’s reply brief it makes the statement that
applicant’s trial brief was untimely and should be stricken.
Opposer is advised that a request to strike a brief should be
made by separately captioned motion, not included within the body
of a brief. Nonetheless, it is noted that the Board accepted
applicant’s brief in its January 17, 2012 order, and the brief
has been considered.
Opposition No. 91191848
5
Likelihood of confusion
There are two elements to a claim of likelihood of
confusion under Section 2(d) of the Trademark Act:
priority and likelihood of confusion. With respect to
priority, applicant has admitted opposer’s priority.
Response to request for admission 7. In addition, in view
of opposer’s registration for CORVO for wine, priority is
not in issue. King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., 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).
Applicant has admitted that the parties’ goods are
identical, response to request for admission No. 8, and
Opposition No. 91191848
6
that neither its application nor the opposer’s registration
have any limitation in the identifications as to the
channels of trade, response to request for admission No. 9.
The parties’ goods are identified in the application as
“wine” and in the registration as “wines.” Despite these
admissions and the identical identifications of the goods,
applicant asserts that the goods have a different target
market because of the price points, type of wine
represented and geography of the fruit, and channels of
advertising and sales. Brief, p. 2. We are not persuaded
by this argument. As applicant has admitted, the goods as
identified are identical and the identifications contain no
limitations as to channels of trade. Therefore, the goods
must be treated as legally identical, and we must assume
that the parties’ wines can be the same type, made from
fruit from the same geographic locations, sold at the same
price points, be directed to the same classes of
purchasers, and be advertised in the same media and sold
through the same channels of trade. In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers). The du Pont factors of the
Opposition No. 91191848
7
similarity of the goods and the channels of trade favor
opposer.
As for the factor of the conditions of purchase, wine
is purchased by the adult members of the public at large.
They include both those who are knowledgeable about wine,
and those who are not. Moreover, wine can be sold at
various price points, including inexpensive, mass market
wines that may be purchased by undiscriminating purchasers
without great care. See In re Jacob Demmer KG, 219 USPQ
1199, 1201 (TTAB 1983) (one can concede an enormous growth
in recent years of buyer sophistication in wine purchasing
without conclusion that this would obviate likelihood of
confusion or transform all buyers into discriminating
purchasers immune form source confusion). Although
applicant argues that its “$50 wines cannot be considered
an impulse purchase,” applicant’s identification is not
limited to wines sold at this price point. The du Pont
factor of the conditions of purchase favors opposer.
We next consider the fame or strength of opposer’s
mark. Opposer has submitted several hundred articles taken
from both general circulation and trade journals for the
period from 1978 until 2009, in which its CORVO wine is
mentioned. Many of these mentions are casual, for example,
a restaurant review for Ristorante Sergio in the October
Opposition No. 91191848
8
26, 1984 “Arkansas Democrat-Gazette” says, in the fifth
paragraph, “Corvo, an enjoyable but undistinguished
Sicilian wine, costs $14.50 a fifth. A July 3, 1999
article in “The Houston Chronicle” about how to make
Sicilian pizza includes on the second page the sentences,
“With Sicilian pizza, why not try Sicilian wine? Corvo, a
modern winery located there, makes good red and white wines
that are available in most wine shops and many
supermarkets.” A small number of other articles are about
opposer and its CORVO wine, e.g., a May 24, 1995 article in
the “Birmingham News,” discusses Corvo winemaker Franco
Giacosa and the history of Corvo wines. Although the
articles show that CORVO wine has received some mention
throughout the years, the evidence falls far short of
establishing that CORVO is a famous mark. Opposer has not
submitted any evidence of its sales or its advertising
expenditures, or any examples of its direct advertising of
CORVO wines, such that we can determine that there have
been extensive sales and advertising, or widespread
recognition of the mark by the consuming public. Because
of the extreme deference accorded to a famous mark in terms
of the wide latitude of legal protection it receives, and
the dominant role fame plays in the likelihood of confusion
analysis, it is the duty of the party asserting fame to
Opposition No. 91191848
9
clearly prove it. Lacoste Alligator S.A. v. Maxoly Inc.,
91 USPQ2d 1594, 1597 (TTAB 2009); Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB
2007). The references in the articles are not sufficient
to show that CORVO is a famous mark for wine. See Hard
Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1407
(TTAB 1998) (articles appearing in newspapers and
periodicals throughout the United States in late 80s and
early 90s that are about or include references to Hard Rock
Café restaurants or clothing and other promotional items
not sufficient to prove mark famous).
Although we do not treat opposer’s mark as famous, on
this record we must find it to be a strong mark. Based on
this record, CORVO, which means “raven” in Italian, is an
arbitrary mark for wine. There is no evidence of any
third-party use of CORVO marks. Nor is there any evidence
of third-party registrations that would indicate “corvo”
has a significance for wine.6
We next turn to a consideration of the marks, keeping
in mind certain principles of law. First, when marks would

6 In its brief, at p. 6, applicant asserts that there are
third-party marks for “very different goods and services” and “a
number of similar marks in [sic] similar and related goods in the
USPTO database.” No evidence of such use or registrations has
been made of record, and therefore we give this unsupported
assertion no weight.

Opposition No. 91191848
10
appear on virtually identical goods or services, as they do
here, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Second, the owner of a
registration in typed or standard character format is
entitled to depictions of the mark regardless of font
style, size, or color. Citigroup Inc. v. Capital City Bank
Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). Third,
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 a consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). A particular feature of a mark may be more
obvious or dominant. Kangol Ltd. v. KangaROOS U.S.A.,
Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992).
Again, opposer’s mark is CORVO, registered in typed
form, and applicant’s mark is shown below:
Opposition No. 91191848
11

Because opposer’s mark is registered in typed format,
opposer is entitled to use its mark in any format,
including the lower case lettering used by applicant in its
mark. As for applicant’s mark, although it includes a
prominent design element, we view CORVUS as the dominant
element of the mark because it is the only word in the
mark, and therefore the part of the mark that can be
articulated. As a result, consumers will refer to or call
for the product by the term CORVUS, and this portion will
therefore make a greater impression upon purchasers. See
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987) (If a mark comprises both a word and a design, then
the word is normally accorded greater weight because it
would be used by purchasers to request the goods or
services). Thus, the presence of the design element in
applicant’s mark is not sufficient to distinguish this mark
from opposer’s mark. Although consumers may note the
design element, they are not likely to regard the design as
Opposition No. 91191848
12
indicating a separate source for the goods. Likewise, the
stylized letter “C” is integrated into the design and
serves as a border for both the design and the word CORVUS.
It thus is unlikely that consumers would articulate the
letter “C” but rather would view it as part of the design.
We recognize that opposer’s mark is CORVO and
applicant’s mark is CORVUS. However, the very small
difference in last letter/two letters of the words, like
the design element in applicant’s mark, is not sufficient
to distinguish the marks. The four identical letters that
begin the marks make a much greater impact.
Thus, although the marks have some differences in
appearance, when they are compared in their entireties the
similarities outweigh the differences. We are not
persuaded by applicant’s argument that in comparing the
marks we should consider the manner in which opposer’s mark
is shown in the specimens submitted with its renewal
applications. First, the specimens of use submitted by
opposer in connection with the renewals of its registration
are not of record. Second, opposer’s mark is registered as
a typed drawing and therefore, as pointed out above,
opposer is entitled to use the mark in any typestyle.
As for pronunciation, because the marks begin with the
same syllable, and most two-syllable English words are
Opposition No. 91191848
13
pronounced with the accent on the first syllable, the marks
are very similar in sound. With respect to the meaning of
the marks, opposer points to applicant’s admissions that
CORVUS refers to a constellation known as “The Crow,”
response No. 5; that “corvo” translates as “raven”,
Response No. 6; that a raven is a black bird, response No.
7; and that the design portion of applicant’s mark includes
a black bird, response No. 3. We are not convinced that
most purchasers of opposer’s and applicant’s products would
be aware that CORVO means raven and CORVUS is the name of
the Crow constellation, let alone that they would make a
connection between raven and crow because each is a black
bird and applicant’s mark includes the design of a black
bird, and therefore view both marks as conveying a similar
meaning. We think it more likely that consumers would
consider CORVO and CORVUS not to have a meaning at all, or
to be made up words having the same “meaning.” However, to
the extent that consumers are aware that CORVO means raven,
the black bird design in applicant’s mark would certainly
reinforce this meaning and therefore the connection with
opposer’s mark.
Because of the overall similarity of the marks, we
find that this du Pont factor favors opposer.
Opposition No. 91191848
14
Applicant points out that there is no evidence of
actual confusion. However, it has often been recognized
that such evidence is very difficult to obtain. Lebanon
Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826,
1834 (TTAB 2012). Certainly we cannot infer from the lack
of such evidence that confusion is not likely, since on
this record we have no information as to the extent of
either opposer’s or applicant’s sales or marketing, and
therefore whether there has been an opportunity for
confusion to occur. Thus, we treat the du Pont factors of
evidence of actual confusion and lack of evidence of actual
confusion as neutral.
As for the extent of potential confusion, because wine
is a widely available consumer item, the extent of
potential confusion is high. This factor favors opposer.
We treat the remaining du Pont factors, to the extent that
they are relevant, as neutral.
In summary, although there are certain differences
between the marks, on the whole they convey similar
commercial impressions because of the close similarity of
the word elements. When this similarity of the marks is
coupled with the other du Pont factors that strongly favor
opposer, in particular, the legally identical goods and
channels of trade, and unsophisticated purchasers, we find
Opposition No. 91191848
15
that applicant’s use of its CORVUS and design mark for wine
is likely to cause confusion with opposer’s registered mark
CORVO for wines.
Decision: The opposition is sustained.