El Molino Winery, LLC

Trademark Trial and Appeal Board

Mar 31, 2009

No. 77142516 (T.T.A.B. Mar. 31, 2009)

Mailed: March 31, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re El Molino Winery, LLC
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Serial No. 77142516
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Melville Owen of Owen, Wickersham & Erickson, P.C. for El
Molino Winery, LLC.

Seth A. Rappaport, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Quinn, Hairston and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

El Molino Winery, LLC filed an application to register
the mark EL MOLINO and design, as shown below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77142516
2
for “wine.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles the previously registered mark LOS
MOLINOS for “wines,”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
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 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

1 Serial No. 77142516, filed on March 28, 2007, alleging a date
of first use anywhere and a date of first use in commerce of
December 1989. The application contains the following
translation: “The foreign wording in the mark translates into
English as THE MILL.”
2 Registration No. 2829864, issued April 6, 2004. The
registration contains the following translation: “The English
translation of the mark is ‘THE WINDMILLS.’”
Ser No. 77142516
3
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We consider first the goods of applicant and
registrant. The goods identified in both the application
and the cited registration are wine and, as such, are
identical. Applicant does not argue otherwise.
Furthermore, in view of the identity of applicant’s and
registrant’s goods, we must presume that such goods are
marketed in the same channels of trade, e.g. wine stores
and grocery stores, and are bought by the same classes of
purchasers, e.g., ordinary drinkers of wine and wine
connoisseurs. Canadian Imperial Bank v. Wells Fargo Bank,
81 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) and In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). We find,
therefore, that the factors of the similarity of the goods,
channels of trade and class of purchasers strongly weigh in
favor of a finding of likelihood of confusion.
Turning then to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1389, 73 USPQ2d 1689 (Fed. Cir.
2005). Although the marks must be considered in their
Ser No. 77142516
4
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Furthermore, 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 commercial impression that
confusion as to the source of the goods and/or services
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). In addition, “when
marks appear on virtually identical goods or services, 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, 877, 23 USPQ2d
1698, 1701 (Fed. Cir. 1992).
Although there are specific differences between
applicant’s mark EL MOLINO and design and registrant’s mark
LOS MOLINOS, we find that, on balance, the similarities
outweigh the differences. In comparing the respective
Ser No. 77142516
5
marks, we find that applicant’s mark is dominated by the
term EL MOLINO which is very similar to registrant’s mark
LOS MOLINOS. The stylized lettering of EL MOLINO and the
watermill design are insufficient to distinguish
applicant’s mark from registrant’s mark. We note that
registrant’s mark, presented in standard character form, is
not limited to any special form or style as displayed on
its goods. Phillips Petroleum Co. v. C. J. Webb, Inc., 442
F.2d 1376, 170 USPQ 35 (CCPA 1971). When a mark is
registered in standard character form, we must consider all
reasonable manners in which registrant could depict its
mark, including the stylized lettering of the term EL
MOLINO in applicant’s mark. The stylized lettering of EL
MOLINO is not so unusual as to not be a reasonable manner
of display. Therefore, the stylized lettering of EL MOLINO
does not serve to distinguish applicant’s mark from
registrant’s mark. Applicant argues that the watermill
design, rather than the term EL MOLINO, is the dominant
portion of its mark because the overall design of a wine
label impacts a consumer’s purchase decision. Applicant
submitted several articles which discuss the importance of
a wine label to the product’s success in the marketplace.
We are not persuaded by applicant’s argument. It is well
settled that when a mark consists of a word portion and a
Ser No. 77142516
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design portion, the word portion is more likely to be
impressed upon a purchaser’s memory and used in calling for
the goods. In re Appetitio Provisions Co., Inc., 3 USPQ2d
1553 (TTAB 1987). Thus, although the watermill design in
applicant’s mark is prominent, we find that the dominant
portion of the mark is the term EL MOLINO which is very
similar to registrant’s mark LOS MOLINOS. Although the
marks are dominated by similar terms, we must, of course,
consider the marks in their entireties. When we do so, we
find that the marks are similar in sound and appearance.
With regard to connotations, in our comparison we must
translate foreign words from common languages to determine
the connotation, in evaluating confusing similarity. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692, 1696. The cited registration
contains the translation “The Windmills.” Applicant’s
application contains the translation “The Mill,” and its
mark includes a watermill design. Therefore, the marks
appear to have different connotations.3 Nonetheless, we

3 Although we accept registrant’s translation of LOS MOLINOS for
purposes of our decision herein, we have been unable to confirm
this translation. We have consulted several Spanish-English
dictionaries and note that each indicates the term “molino”
translates to “mill” and “molino de viento” translates to
“wind mill.”
Ser No. 77142516
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find that the similarities in sound and appearance outweigh
any differences in connotation.
Furthermore, when applicant’s and registrant’s mark
are considered in their entireties, they engender
sufficiently similar overall commercial impressions so
that, when identical goods are offered thereunder,
confusion would be likely to occur among consumers. That
is, it is reasonable to conclude that consumers familiar
with registrant’s wine sold under its mark LOS MOLINOS
would be likely to believe, upon encountering applicant’s
mark EL MOLINO and design for wine, that the goods
originated with or were somehow associated with or
sponsored by the same source.
Applicant, in contending that the marks are not
similar, asserts that the term “Molino/Molina” is so widely
used in connection with wine products that the commonality
of the term is an insufficient basis upon which to find
that the marks are similar. In support of its position,
applicant introduced the following third-party
registrations: (1) Registration No. 2842690 for the mark
MOLINO VIEJO, which translates to “Old Mill,” for tequila,
(2) Registration No. 2842690 for the mark IL MOLINO DI
GRACE, which translates to “The Mill of Grace,” for wines,
(3) Registration No. 2730060 for the mark PIEDRA DEL
Ser No. 77142516
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MOLINO, which translates to “The Mill Stone,” for wines,
and (4) Registration No. 1745998 for the mark CASTILLO DE
MOLINA, the word “Castillo” translates to “castle,” for
wines. Applicant’s evidence does not compel a different
result in determining likelihood of confusion.
Third-party registrations are not evidence of use of
the marks shown therein, or that consumers have been
exposed to the marks and have learned to distinguish them.
In addition, the existence of third-party registrations
alone cannot justify the registration of another mark that
is so similar to a previously registered mark as to create
a likelihood of confusion. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
While third-party registrations may be used in a manner
analogous to a dictionary to show that a mark or a portion
thereof is descriptive or suggestive, it is not clear what
the descriptive or suggestive significance of MOLINO is in
relation to wine. Thus, the third-party registrations are
not persuasive of a different result in this case. In
addition, we note that none of the third-party marks is as
similar to the cited mark as is applicant’s mark.
In sum, we find that the factor of the similarity of
the marks favors a finding of likelihood of confusion.
Ser No. 77142516
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We conclude that because the goods, trade channels and
purchasers are the same, and the marks are similar,
confusion is likely to occur between applicant’s mark and
the registrant’s mark.
Decision: The refusal to register under Section 2(d)
is affirmed.