Mionetto S.P.A.v.Bodegas Y Viñedos Amadeo Marañon S.A.

Trademark Trial and Appeal Board

Nov 15, 2018

No. 91235026 (T.T.A.B. Nov. 15, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: November 15, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Mionetto S.P.A.
v.
Bodegas Y Viñedos Amadeo Marañon S.A.
_____

Opposition No. 91235026
_____

James B. Haddow of Petruccelli, Martin & Haddow, L.L.P.,
for Mionetto S.P.A.
Bodegas Y Viñedos Amadeo Marañon S.A.
by Pablo Santiago Minetto, Export Manager.

_____

Before Taylor, Bergsman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Bodegas Y Viñedos Amadeo Marañon S.A. (Applicant) filed an application to
register FAMILIA MINETTO (standard characters) for “wine,” in Class 33.1 The
English translation of the word “Familia” in the mark FAMILIA MINETTO is
“family.”

1 Application Serial No. 87264135 filed December 9, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim that it has used its mark
since at least as early as August 31, 2014 anywhere and in commerce.
Opposition No. 91235026
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Mionetto S.P.A. (Opposer) filed an opposition under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resemble Opposer’s
registered MIONETTO marks, shown below, as to be likely to cause confusion:
• Registration No. 1985362 for the mark MIONETTO and design, shown
below, for “wines,” in Class 33;2 and

• Registration No. 4762518 for the mark MIONETTO and design, shown
below, for “wine, still wine, sparkling wine, flavoured beverages made from
wine, alcoholic aperitifs, prepared alcoholic cocktails; alcoholic cocktails
mixes; alcoholic beverages except beers,” in Class 33.3

The registrations do not include descriptions of the marks.
Opposer also alleged that Applicant’s mark FAMILIA MINETTO is primarily
merely a surname, is likely to dilute Opposer’s marks, and falsely suggests a

2 Registered July 9, 1996; third renewal.
3 Registered June 30, 2015.
Opposition No. 91235026
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connection with Opposer’s name or identity. Sections 2(a), 2(e)(4) and 43(c) of the
Trademark Act, 15 U.S.C. §§ 1052(a), 1052(e)(4), and 1125(c).
Applicant denied the salient allegations in the Notice of Opposition.
After the close of discovery, the parties consented to a modified proceeding under
the Board’s Accelerated Case Resolution Procedure (ACR). The parties stipulated to,
inter alia, the following:
• The parties forego trial and will submit the case to the Board in summary
judgment format as cross-motions for summary judgment accompanied by
any evidence, which may be submitted in the form of declarations or
affidavits;
• The Board may resolve any remaining genuine issues of material fact that
are necessary to the Board’s resolution of the instant case on its merits in
consideration of the parties’ respective briefs; and
• Notices of reliance are not necessary. The parties may submit material
usually filed with a notice of reliance (pleaded registrations, third-party
registrations, written disclosures or disclosed documents, discovery
responses, documents produced in discovery, Internet evidence, printed
publications and official records) by submitting the evidence with their ACR
briefs.4

4 13 TTABVUE.
Opposition No. 91235026
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I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file at issue.5 The parties introduced the
following testimony and evidence:
A. A stipulation of facts.6
B. Opposer’s testimony and evidence.
1. Opposer introduced the testimony declaration of Simone Gentilini, Vice
President and Chief Financial Officer of Mionetto U.S.A., Inc., Opposer’s
sole distributor in the United States;7 and
2. Copies of Opposer’s pleaded registrations printed by the USPTO showing
the current status of and title to the registrations;8
C. Applicant’s testimony and evidence.
1. We exercise our discretion and construe Applicant’s brief to be the
testimony declaration of Pablo Santiago Minetto, Applicant’s Export
Manager;9
2. An excerpt from Applicant’s website (bodegasmaranon.com);10

5 Because Applicant’s application file is of record by operation of the Trademark Rules of
Practice, there was no need for Opposer or Applicant to introduce Applicant’s application in
their briefs on the case. 16 TTABVUE 37-42; 19 TTABVUE 27-30.
6 14 TTABVUE.
7 16 TTABVUE 24-30.
8 16 TTABVUE 31-36.
9 19 TTABVUE.
10 19 TTABVUE 12 and 15-16.
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3. An official record issued by the Provincia de Mendoza;11
4. An excerpt from Opposer’s website;12
5. Printer’s proofs of Applicant’s labels;13
6. Photographs of Applicant’s wine bottles;14
7. An advertising brochure for Applicant;15
8. Official records issued by the Republic of Argentina;16
9. A copy of an invoice;17 and
10. Email exchanges between Opposer and Applicant.18
II. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest,” i.e., a “reasonable” basis for its belief of damage. See
Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092,

11 19 TTABVUE 13.
12 19 TTABVUE 14.
13 19 TTABVUE 17 and 19.
14 19 TTABVUE 18, 20 and 26.
15 19 TTABVUE 21-22.
16 19 TTABVUE 23-24.
17 19 TTABVUE 25.
18 19 TTABVUE 31-42.
Opposition No. 91235026
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50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer has established its standing by properly introducing into evidence its
pleaded registrations.19 See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs.,
Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Applicant, in its brief, does not contest
Opposer’s standing.
III. Priority
Because Opposer’s pleaded registrations are of record, priority is not at issue with
respect to the goods identified therein. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). Applicant does not contest
that Opposer has priority.
IV. Likelihood of confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du

19 Applicant stipulated that Opposer is the owner of its pleaded registrations. Stipulation of
Facts ¶¶2-3 (14 TTABVUE 2-3).
Opposition No. 91235026
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Pont factor that is relevant or for which there is evidence of record. See M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340,
71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”); see also In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods.
We must consider the goods as they are described in the application and
registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Hous. Comps.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an applicant’s mark must be decided on
Opposition No. 91235026
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the basis of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant's goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.”). See also Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective descriptions of goods”).
Because Applicant’s description of goods is wines and Opposer’s description of
goods include wine, the description of goods are in part identical. The fact that the
record shows that Opposer uses its mark in connection with prosecco while Applicant
intends to use its mark in connection with red and white wine is irrelevant because
the description of goods in the application and Opposer’s pleaded registrations
include wine.20
Under this du Pont factor, Opposer need not prove, and we need not find,
similarity as to each and every product listed in the description of goods. It is
sufficient for assessing likelihood of confusion that relatedness is established for any
item encompassed by the identification of goods in a particular class in the
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); In re i.am.symbolic, LLC, 116 USPQ2d 1406, 1409 (TTAB
2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc.,
115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of
confusion if relatedness is established for any item encompassed by the identification

20 Stipulation of Facts ¶¶4 and 6 (14 TTABVUE 3).
Opposition No. 91235026
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of goods within a particular class in the application.”); Inter IKEA Sys. B.V. v. Akea,
LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
B. Established, likely-to-continue channels of trade and purchasers to whom sales
are made.

Because the goods described in the application and Opposer’s pleaded
registrations are in part identical, we presume that the channels of trade and classes
of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels
of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same); United
Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese
Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011).
Moreover, we cannot give any weight to Applicant’s argument that its wine would
be displayed with other Argentine wines while Opposer’s products will be displayed
with Italian wines21 because neither description of goods is restricted or limited to
wines from Argentina or Italy.
C. Fame
Opposer has pleaded and argued that its MIONETTO marks are famous. Fame,
if it exists, plays a dominant role in the likelihood of confusion analysis because

21 Applicant’s Brief, p. 6 (19 TTABVUE 7).
Opposition No. 91235026
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famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark
has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose
Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the marks at issue, “the length
of time those indicia of commercial awareness have been evident,” widespread critical
assessments and through notice by independent sources of the products identified by
the marks, as well as the general reputation of the products and services. Bose Corp.,
63 USPQ2d at 1305-1306 and 1309. Raw numbers alone may be misleading, however.
Thus, some context in which to place raw statistics may be necessary, for example,
market share or sales or advertising figures for comparable types of goods. Id. at 1309.
Finally, because of the extreme deference that we accord 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 that its
mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers
Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Opposer contends that its MIONETTO marks are famous for the following
reasons:
Opposition No. 91235026
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• “In 1998, [Opposer] introduced prosecco, a sparkling wine originally
produced in Italy, to the United States under the MIONETTO mark.”;22
• Prosecco is the fastest growing segment of the sparkling wine markets in
the United States, with sales by case volume growing by double digits in
each of the last 10 consecutive years.”;23
• “As a percentage of the sparkling wine market in the U.S., prosecco has
grown in dollar volume from just over 10% to just under 20% since 2014,
and in case volume from just under 10% to approximately 19% over the
same period of time.”;24
• “Based on sales of its wines under the MIONETTO mark, according to the
IWSR, the leading source of data and analysis on the alcoholic beverage
market, [Opposer] is presently the number one prosecco in the world and
the number 2 prosecco brand in the United States.”;25
• In 2016 and 2017, Opposer’s “products bearing the MIONETTO mark
occupied slightly less than a 10% dollar share of the total U.S. market for
proseccos, which places it in the top two among all producers of proseccos
for the United States market.”;26

22 Gentilini Decl. ¶5 (16 TTABVUE 25).
23 Id. at ¶7 (16 TTABVUE 25).
24 Id. at ¶8 (16 TTABVUE 25).
25 Id. at ¶10 (16 TTABVUE 25).
26 Id. at ¶15 (16 TTABVUE 26).
Opposition No. 91235026
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• Since 1998, Opposer has sold more than 33 million bottles of prosecco under
the MIONETTO mark;27
• Opposer’s “annual sales of products under the MIONETTO marks since
2010 have been:
2010: $12,000,000.00
2011: $14,209,639.00
2012: $16,180,053.00
2013: $20,939,376.00
2014: $25,206,339.00
2015: $30,300,318.00
2016: $32,887,942.00
2017: $ 37,332,877.00
Subtotal: $189,056,544.00”28
• Opposer’s “approximate annual spending for advertising/marketing/sales of
products under the MIONETTO marks since 2010 have been:
2010: $2,642,000.00
2011: $4,034,000.00
2012: $4,490,000.00
2013: $5,905,000.00
2014: $9,081,000.00

27 Id. at ¶20 (16 TTABVUE 27).
28 Id. at ¶16 (16 TTABVUE 26).
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2015: $10,775,000.00
2016: $13,123,000.00
2017: $15,121,000.00
Subtotal: $65,171,000.00”29
• In the past ten years, MIONETTO prosecco has been awarded (a) the “Hot
Brands” award nine times by the beverage industry publication Impact; and
(b) the “Growth Brands” award eight times by the beverage industry
publication The Beverage Information Group.”;30
• Since 2005, Opposer’s MIONETTO products have received unsolicited
media attention “well over one thousand times.”31 For example,
a. USA Today (December 5, 2008), columnist Jerry Shriver recommended
MIONETTO Prestige Brut in his column entitled “Holiday Wines – Tip
4: Pick Affordable Sparkling Wines.”32
b. Wall Street Journal (June 18, 2010) identified MIONETTO as one of the
leading prosecco brands in the United States;33
c. Harper’s Bazaar (January 1, 2012) identified MIONETTO Prestige Brut
as a “Fanciful Find.”;34 and

29 Id. at ¶17 (16 TTABVUE 26-27).
30 Id. at ¶9 (16 TTABVUE 25).
31 Id. at ¶21 (16 TTABVUE 27).
32 Id. at ¶21(a) (16 TTABVUE 27).
33 Id. at ¶21(c) (16 TTABVUE 28).
34 Id. at ¶21(d) (16 TTABVUE 28).
Opposition No. 91235026
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d. MarthaStewart.com (December 13, 2016) chose MIONETTO prosecco as
one of “Our Best Picks” in the feature “How To Celebrate The Holidays
With Sparkling Wine … At Any Budget.”35
Based on this evidence, MIONETTO is a famous mark in connection with prosecco
and sparkling wine. Although Opposer has presented evidence that prosecco is 20%
of the sparkling wine market, there is no testimony or evidence regarding the market
share that prosecco or, more specifically, MIONETTO has in connection with wine
per se, that would allow us to assess the fame of the MIONETTO marks in a broader
market. Nevertheless, the evidence establishes that MOINETTO is a commercially
strong mark entitled to a broad scope of protection or exclusivity of use in connection
with prosecco and sparkling wine.
D. Similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. In comparing the marks, we
are mindful that where, as here, the goods are in part identical, the degree of
similarity necessary to find likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Coach Servs., Inc., 101 USPQ2d at
1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108

35 Id. at ¶21(g) (16 TTABVUE 28).
Opposition No. 91235026
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(TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d
1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., 101 USPQ2d at 1721; see also Midwestern Pet
Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440
(Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). In this case because the goods at issue are wine without any
restrictions or limitations as to price, channels of trade or classes of consumers, the
average customer is an ordinary consumer.
Opposition No. 91235026
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The marks at issue are set forth below:
OPPOSER’S MARKS APPLICANT’S MARK
FAMILIA MINETTO

With respect to Opposer’s marks, we focus our attention on the MIONETTO name
because it is the dominant element of Opposer’s marks. MINETTO is the most
prominent feature of the marks. As is often the case with marks consisting of words
and a design, the words are normally accorded greater weight because the words are
more likely to make an impression upon purchasers, would be remembered by them,
and would be used by them to request the goods. See In re Viterra Inc., 101 USPQ2d
at 1908, 1911 (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed.
Cir 1983)); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d
1793, 1798 (Fed. Cir. 1987). While our analysis of the similarity or dissimilarity of
the marks must be predicated on the marks in their entireties, there is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, such as a common dominant element, provided the
Opposition No. 91235026
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ultimate conclusion rests on a consideration of the marks in their entireties. In re
Nat’l Data Corp., 224 USPQ at 751; see also In re Viterra Inc., 101 USPQ2d at 1908.
Moreover, the design elements are not so distinctive as to make a commercial
impression separate and apart from the MIONETTO name such that consumers will
notice or remember them. See Herbko Int’l Inc. Kappa Books Inc., 64 USPQ2d at 1380
(words dominate the design feature where the design portion of applicant’s mark does
not convey any distinct or separate commercial impression apart from the word
portion of the mark); CBS, Inc. v. Morrow, 218 USPQ at 200 (“minor design features
do not necessarily obviate likelihood of confusion arising from consideration of the
marks in their entireties.”).
Both MINETTO, in Applicant’s mark FAMILIA MINETTO, and MIONETTO, in
Opposer’s marks MIONETTO and design, are surnames and are likely to be perceived
as such.36 The word “Familia” in Applicant’s mark adds to the surname perception of
MINETTO name and reinforces the significance of that portion of Applicant’s mark.37

36 Stipulation of Facts ¶¶15 and 16 (14 TTABVUE 4).
15. “Minetto” is the surname of the family that produces and
sells the production of wine for which Applicant proposes to use
its mark “FAMILIA MINETTO.”
16. “MIONETTO” is the name of Opposer’s company and is also
a family surname.
We do not construe the paragraphs noted above to mean that the parties stipulated that
MIONETTO and MINETTO are primarily merely surnames.
37 Applicant does not contest that MINETTO is the dominant part of its mark. In fact,
Applicant’s arguments, if supported by facts, that “‘FAMILIA’ is a common word used on
trademarks in relation to family businesses,” “‘FAMILIA’ is registered in numerous
trademarks not owned by Opposer,” and “‘FAMILIA’ is used in commerce by third parties as
part of numerous trademarks for Family [sic] businesses not owned by Opposer” would
Opposition No. 91235026
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Accordingly, determining the similarity or dissimilarity of the marks essentially
comes down to a comparison of MINETTO and MIONETTO.
MINETTO and MIONETTO are very similar. The only difference is that Opposer’s
MIONETTO mark has the letter “O” after the letter “I” and before the letter “N”
which is missing in Applicant’s MINETTO mark. Slight differences in marks do not
normally create dissimilar marks. Alfacell v. Anticancer Inc., 71 USPQ2d 1301, 1305
(TTAB 2004) (ONCASE is similar to ONCONASE); In re Great Lakes Canning, Inc.,
227 USPQ 483, 485 (TTAB 1985) (CAYNA is similar to CANA). See also See Mag
Instr. Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1714-15 (TTAB 2010) (difference of
a single letter does not suffice to distinguish MAG STAR from MAXSTAR).
As seen and spoken, the letter “O” may be missed by many average purchasers.
Taking into account the fallibility of human memory, MIONETTO and MINETTO
create substantially similar commercial impressions. Even those purchasers fully
aware of the specific differences between the marks may believe, because of the
similarities between them, that the two marks are simply variants of one another,
used by a single producer to identify and distinguish companion lines of products
(wine and sparkling wine).
We find that when considered in their entireties FAMILIA MINETTO is similar
to Opposer’s marks MIONETTO and designs in appearance, sound, connotation and
commercial impression.

support finding that MINETTO is the dominant portion of its mark. Applicant’s Brief, p. 5
(19 TTABVUE 6).
Opposition No. 91235026
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E. Balancing the factors.
Because the marks are similar, the goods in part identical and presumed to be
offered in the same channels of trade to same classes of consumers, we find that
Applicant’s mark FAMILIA MINETTO for “wine” is likely to cause confusion with
Opposer’s registered marks MIONETTO and design for “wine(s), still wine, sparkling
wine, flavoured beverages made from wine, alcoholic aperitifs, prepared alcoholic
cocktails; alcoholic cocktails mixes; alcoholic beverages except beers.”
Because we have found that Applicant’s mark is likely to cause confusion with
Opposer’s marks, we need not decide the other grounds pleaded in the Notice of
Opposition. “Like the federal courts, the Board has generally used its discretion to
decide only those claims necessary to enter judgment and dispose of the case … . More
specifically, the Board's determination of registrability does not require, in every
instance, decision on every pleaded claim.” Multisorb Tech., Inc. v. Pactiv Corp., 109
USPQ2d 1170, 1171 (TTAB 2013).
Decision: The opposition is sustained on the Section 2(d) claim and registration
of Applicant’s mark is refused.