Oakville Hills Cellar, Inc. dba Dalla Valle Vineyardsv.Vina Casa Tamaya S.A.

Trademark Trial and Appeal Board

Apr 15, 2013

No. 91189443 (T.T.A.B. Apr. 15, 2013)

Mailed:
April 15, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________

Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards
v.
Viña Casa Tamaya S.A.
________
Opposition No. 91189443
to application Serial No. 77561695
_______
J. Scott Gerien and Aleson R. Clarke of Dickenson, Peatman & Fogarty for
Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards.
Stephanie H. Bald and David M. Kelly of Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP for Viña Casa Tamaya S.A..
_______
Before Kuhlke, Lykos and Masiello, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:
Viña Casa Tamaya S.A. (“applicant”) filed an application to register the
mark TAMAYA in standard character format for “wines” in International
Class 33.1 The application includes the following statement: “The English
translation of the word ‘TAMAYA’ in the mark is ‘high lookout.’”

1 Application Serial No. 77561695, filed September 3, 2008, pursuant to Section 1(a)
of the Trademark Act, alleging January 2003 as the date of first use anywhere and in
commerce.
This Opinion is Not a
Precedent of the TTAB
Opposition No. 91189443

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Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards (“opposer”) op-
posed the registration of applicant’s mark on the grounds of priority of use
and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), with opposer’s previously used and registered mark MAYA also in
standard character format for “wine” in International Class 33.2
In its answer to the notice of opposition, applicant admitted opposer’s
ownership of its pleaded registration but otherwise denied the salient allega-
tions therein.3
During applicant’s testimony period, proceedings were suspended pend-
ing resolution of a civil suit filed by applicant in federal district court. Appli-
cant, who was in the position of plaintiff, sought a declaratory judgment that
its TAMAYA mark does not infringe opposer’s MAYA mark. On April 26,
2011, the court granted opposer’s motion to dismiss the case for lack of subject
matter jurisdiction, finding that the Board was the proper forum for resolving
the parties’ dispute. See Viña Casa Tamaya S.A. v. Oakville Hills Cellar Inc.,
99 USPQ2d 1465, 1467 (S.D.N.Y. 2011). As the court explained:

2 Registration No. 2508401, registered on November 20, 2001 on the Principal Regis-
ter. The registration alleges August 1990 as the date of first use anywhere and Sep-
tember 1991 as the date of first use in commerce; Sections 8 and 15 affidavits
acknowledged and accepted; renewed.

3 Applicant in its answer also asserted the affirmative defense of failure to state a
claim upon which relief may be granted. Insofar as applicant neither filed a formal
motion to dismiss pursuant to Fed R. Civ. P. 12(b)(6) during the interlocutory phase
of this proceeding, nor argued this asserted affirmative defense in its brief, it is here-
by deemed waived.
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[P]laintiff has failed to show an “actual controversy” sufficient to
establish federal jurisdiction pursuant to the Declaratory Judg-
ment Act. The dispute between Viña Casa and Dalla Valle cen-
ters on Viña Casa's attempted registration—not use—of the
TAMAYA mark. Viña Casa has been using the TAMAYA mark
for more than seven years without objection from Dalla Valle.
Only when Dalla Valle learned of Viña Casa's application to reg-
ister the mark did Dalla Valle express opposition. And even
then, Dalla Valle's February 6, 2009 cease-and-desist letter de-
manded simply that Viña Casa abandon its pending trademark
application. Dalla Valle did not claim trademark infringement,
contest plaintiff's continued use of the mark, or make any fur-
ther demands. As a result of Viña Casa's failure to respond to
the cease-and-desist letter, Dalla Valle formally filed a notice of
opposition to plaintiff's registration application with the TTAB.
Thus, what exists here is a dispute before the TTAB regarding
registration of the TAMAYA mark.

Proceedings herein were subsequently resumed and the case is now ful-
ly briefed.
I. The Record
Pursuant to Trademark Rule 2.122(b), the record includes applicant’s
application file and the pleadings. In addition, the parties introduced the fol-
lowing:
A. Opposer’s Evidence

Opposer properly made of record the following notices of reliance:

1. Opposer’s Notice of Reliance No. 1, dated February 26,
2010, comprised of opposer’s pleaded registration for the
mark MAYA obtained from TARR (Ex. 1); an excerpt for
the entries “Diaguita” and “South American Indian” from
the Encyclopedia Britannica 2010 (Exs. 2 and 3); and a
copy of an article entitled “Napa’s Top 50 Cabernets” from
the magazine Wine Spectator, November 15, 2006 (Ex. 4);

2. Opposer’s Notice of Reliance No. 2, dated March 14, 2012,
comprised of the file histories of other opposition proceed-
Opposition No. 91189443

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ings opposer has initiated before the Board (Exs. 1-6); ex-
cerpts for the entry “Mayacamas” from various publica-
tions and printouts from third-party websites discussing
the term “Mayacamas” (Exs. 7-16); printouts from the
www.kristillynnwine.com website and copies of the Certif-
icates of Label Approval to illustrate the cessation of use of
the MAIA LYNN trademark to identify a wine brand (Exs.
18-19); printouts from a third-party website to show that
the MAYA restaurant in New York does not sell wine un-
der that brand name (Ex. 20); printouts from third-party
websites to show wine sold under the same mark originat-
ing from different countries (Exs. 21-23); a printout from
wineanorak.com (Ex. 24); and printouts from third-party
websites showing that the translation of “Mailina” is “pig-
gy” or “piglet” (Exs. 25-26).

Opposer also introduced the testimony deposition of Naoko Dalla Valle,

President of opposer (“Dalla Valle Deposition”).

B. Applicant’s Evidence

Applicant properly made of record the following notices of reli-
ance all dated January 30, 2012:

1. Applicant’s Notice of Reliance No. 1, Exs. 1-52 comprised of
TESS/TARR printouts of third-party applications and regis-
trations for marks covering wine;

2. Applicant’s Notice of Reliance No. 2, Exs. 1-21 comprised of
TESS/TARR printouts of third-party applications and regis-
trations for marks MAYA, MAIA and MIA- formative marks
for identical or related goods;

3. Applicant’s Notice of Reliance No. 3 comprised of a portion of
the application file history of opposer’s pleaded MAYA mark
which eventually matured into registration;

4. Applicant’s Notice of Reliance No. 4, Exs. 1-12 consisting of
print and Internet dictionary definitions of the word “Maya;”

Opposition No. 91189443

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5. Applicant’s Notice of Reliance No. 5, Exs. 1-2 consisting of
printouts from the U.S. Social Security Administration’s
online Internet database for the name “Maya” and showing no
results for the search “Tamaya;”

6. Applicant’s Notice of Reliance No. 6, Exs. 1-10 comprised of
TESS/TARR printouts of third-party applications and regis-
trations for marks covering wine and alcoholic beverages;

7. Applicant’s Notice of Reliance No. 7 consisting of printouts
from Internet websites showing use of third-party marks
comprised of MAYA, MAIA, or MIA and printouts from the
U.S Department of the Treasury, Alcohol and Tobacco Tax
and Trade Bureau;

8. Applicant’s Notice of Reliance No. 8, Exs. 1-2 comprised of In-
ternet printouts showing pricing of opposer’s MAYA and ap-
plicant’s TAMAYA wine products;

9. Applicant’s Notice of Reliance No. 9, Exs. 1-7 comprised of In-
ternet printouts from websites offering for sale wines sold un-
der MAYA, MAIA and MIA- formative marks;

10. Applicant’s Notice of Reliance No. 10 consisting of Opposer’s
Responses to Applicant’s First Set of Requests for Production
of Documents and Things Nos. 6 and 11;

11. Applicant’s Notice of Reliance No. 11 consisting of Opposer’s
Responses to Applicant’s First Set of Interrogatories Nos. 12-
21, 23, 24, 33 and 34.

12. Applicant’s Notice of Reliance No. 12 consisting of copies of
court filings in the parties’ federal suit in Viña Casa Tamaya
S.A. v. Oakville Hills Cellar Inc., 99 USPQ2d 1465 (S.D.N.Y.
2011);

13. Applicant’s Notice of Reliance No. 13 consisting of Internet
website printouts of third-party marks containing the identi-
cal or similar names for wine;

14. Applicant’s Notice of Reliance No. 14 consisting of printouts
from opposer’s and applicant’s websites;

Opposition No. 91189443

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15. Applicant’s Notice of Reliance No. 15 consisting of excerpts
from the Code of Federal Regulations; and

16. Applicant’s Notice of Reliance No. 16 consisting of excerpted
articles retrieved from the Lexis/Nexis database.

Applicant also introduced the following evidence:

1. Stipulation as to certain facts, dated February 13, 2012, Exs.
1-10 (“Stipulation of Facts”); and

2. Testimony deposition of Diego Callejas Hurtado, Commercial
Director of applicant and Exs. 1-23 attached thereto (“Callejas
Deposition”).

II. The Parties

Opposer is a U.S. wine producer located in Napa Valley, California and
organized under the laws of that state. Opposer selected the mark MAYA be-
cause it is the given name of the daughter of opposer’s principal shareholder.
Applicant’s Notice of Reliance No. 3, Ex. 1. Opposer’s MAYA wine is a blend
of Cabernet Sauvignon and Cabernet Franc. Stipulation of Facts, ¶ 1. The
labels for opposer’s wines identify opposer as the producer and bottler of the
wine and bear the appellation “Napa Valley.” Stipulation of Facts, Ex. 6. Op-
poser’s MAYA wines are sold at the high end of the U.S. market, priced at
$200-$559 per bottle with some of opposer’s pre-2005 vintages selling for
thousands of dollars per bottle. Applicant’s Notice of Reliance No. 8, Ex. 1;
Stipulation of Facts, ¶ 7.
Applicant is a foreign wine producer located in the Limari Valley of
Northern Chile. Callejas Deposition 18:6-18. Applicant selected the mark
TAMAYA because it is the name of a hill on the property where applicant
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produces its wines. Callejas Deposition 19:4-16, 19-21, 42:18-43:13. The word
TAMAYA means “high lookout” or “highest looking-out point” in the Diaguita
dialect, the language of the indigenous population who once inhabited the
land where applicant’s wine is produced. Id. at 19:4-16; Applicant’s Notice of
Reliance, Ex. 2. Applicant has sold a number of varieties of wine under the
TAMAYA trademark in the United States including Carménère, Cabernet
Sauvignon, Chardonnay, Syrah and Sauvignon Blanc. Callejas Deposition
18:25-19:3; 19:22-24; 21:22-24. To comply with U.S. regulations, applicant’s
TAMAYA wine is labeled with “Chile” as the country of origin and “Limari
Valley” as the appellation. Callejas Dep. 41:15-45:13, Ex. 8. Applicant mar-
kets and sells its wine to U.S. importers, distributors and various retail estab-
lishments such as restaurants, hotels, wine shops and grocery store chains
(for example, Whole Foods, Harris Teeter, Win Dixie, and Kroger). Callejas
Deposition 22:12-24:8; 27:5-11; Ex. 5. Approximately 1500 retail establish-
ments currently offer applicant’s TAMAYA wines. Id. 29:22-30:2, Ex. 5. Ap-
plicant promotes its wine in a variety of ways, including print advertisements
in trade publications, participation in trade shows, shelf-talkers in wine stores
and its own website at tamayawines.cl. Callejas Deposition 15:15-17:20; 74:8-
77:20, Exs. 10-13, 16-17, 86:8-22; Applicant’s Notice of Reliance 14, Ex. 2; Ap-
plicant’s Notice of Reliance No. 8, Ex. 2. The price point for applicant’s wine is
relatively low at $9.99-$15.99 per bottle. Applicant’s Notice of Reliance No. 8,
Ex. 2. Applicant’s wines sold under the TAMAYA trademark have received
Opposition No. 91189443

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unsolicited recognition from various publications in the wine industry such as
Wine Spectator and Wine Enthusiast as “Best Buy,” “Value Buy” and “Value
Brand of the Year.” Callejas Deposition 15:15-17:20, 46:23-56:12, Ex. 9.
III. Standing
Opposer has demonstrated through the TARR printout made of record
with its first notice of reliance that it is the owner of its pleaded registration
and that the registration is valid and subsisting. Because opposer’s registra-
tion is of record, opposer has established its standing. See Cunningham v. La-
ser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
IV. Section 2(d) Claim
We will now consider opposer’s Section 2(d) claim.
A. Priority
Priority is not in issue in view of opposer’s ownership of a valid and
subsisting registration. King Candy, Inc. v. Eunice King's Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
B. Likelihood of Confusion
The remaining issue in this proceeding is likelihood of confusion. Op-
poser must establish that there is a likelihood of confusion by a preponderance
of the evidence. We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a likelihood of confusion.
Opposition No. 91189443

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In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the similarities be-
tween 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). These factors, and the other relevant du Pont factors are dis-
cussed below.
1. The Marks
First, we turn to the du Pont likelihood of confusion factor regarding
the similarity or dissimilarity of the marks in their entireties as to appear-
ance, sound, connotation and commercial impression. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). “[T]he 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 commer-
cial impression so that confusion as to the source of the goods offered under
the respective marks is likely to result.” H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1727 (TTAB 2008).
At the outset, we acknowledge some similarity regarding appearance
insofar as opposer’s mark is comprised of the term “MAYA” and applicant
shares that term in its mark. We also recognize that both marks include that
Opposition No. 91189443

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same sound. However, this is where the similarities end. Applicant’s mark
consists of three syllables and begins with the letters “T” and “A” which form
the sound “ta-.” Opposer’s mark, by contrast, is two syllables and commences
with the letter “M.” As a result, the marks look different and are pronounced
differently. This distinction is important since “it is often the first part of a
mark which is likely to be impressed upon the mind of a purchaser and re-
membered.” Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). See also Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the
most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark).
Moreover, the evidence of record shows that the connotation and overall
commercial impression of the marks is quite distinct. According to the record,
opposer’s mark has different meanings well known to the U.S. public – that of
a member of the Mayan people, the indigenous race of Indians in Southern
Mexico and Central America and also the name of a girl. Applicant’s Notice of
Reliance No. 4, Ex. 1-12 (dictionary definitions of “Maya”); Applicant’s Notice
of Reliance No. 5. It is this second connotation that is actively promoted by
opposer in advertising and marketing its wine. Opposer acknowledges that
the name MAYA was chosen because it is the name of the daughter of oppos-
er’s principal shareholder. Applicant’s Notice of Reliance No. 3, Ex. 1. U.S.
Social Security records show that the name MAYA has been in the top 100 for
girl’s names for the past decade. Applicant’s Notice of Reliance No. 5. Thus
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consumers, upon encountering opposer’s mark are likely to perceive the mark
as meaning a popular female name.
By contrast, prospective consumers upon encountering applicant’s mark
TAMAYA are likely to perceive the mark as a coined term or as signifying the
name of the hill in Chile where applicant’s vineyard is located. As applicant
testified:
Q: Why did the company select the name Tamaya?
A: Tamaya is the Diaguitas name. ….The Diaguitas [are] the Indians
that used to inhabit where we have the winery. In their language “Ta-
maya” means “highest looking-out point.” And actually, it’s the name of
the hill. And that hill is inside of our property.
Q: So it’s the name of the actual hill on the property?
A: Yes.
Callejas Deposition 19:4-16.
The meaning and derivation of applicant’s TAMAYA mark is explained
and promoted to the public on its website as well as in marketing brochures.
Callejas Deposition 78:2-80:11, Exs. 18-19; Applicant’s Notice of Reliance No.
14, Ex. 2. By way of illustration, we note the following excerpt from appli-
cant’s website, www.tamaya.cl:
“Tamaya” in the Diaguita dialect means “high lookout,” it is the
name of the highest peak in the area and from there one can
view the entire valley below.

In the vineyards of the Vina Tamaya we have found vestiges of
the ancient Diaguita culture which reigned in this zone between
Opposition No. 91189443

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the 8th and 15th Centuries. Inspired by this culture, we named
our winery Tamaya.

Applicant’s Notice of Reliance No. 14, Ex. 2.

Based on the practices of the wine industry, opposer contends that be-
cause applicant’s TAMAYA mark encompasses opposer’s MAYA mark in its
entirety, consumers are likely to be misled into believing that applicant’s wine
is another extension of opposer’s product line. We disagree based on the dif-
ferent connotations and commercial impressions engendered by the marks as
discussed above.
Opposer also argues that because the Diaguita dialect, the language of
the South American Indians indigenous to the southern Andes, is obsolete and
obscure, it is highly improbable that the ordinary U.S. consumer will “stop
and translate” applicant’s TAMAYA mark as “high lookout.” As such, opposer
maintains that the doctrine of foreign equivalents does not apply for purposes
of comparing the involved marks. See Palm Bay, 73 USPQ2d at 1696. See al-
so In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008). We agree with
opposer that the ordinary U.S. consumer is unfamiliar with this obsolete for-
eign language and for this reason, the doctrine of foreign equivalents does not
apply. That being said, prospective consumers are otherwise likely to perceive
applicant’s mark as a coined term. This is in contrast to opposer’s mark
MAYA, which as discussed above, has two well-known meanings to U.S. con-
sumers.
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In sum, in addition to the differences in sound and appearance, oppos-
er’s MAYA mark is significantly different in connotation and overall commer-
cial impression from applicant’s TAMAYA mark. Opposer’s MAYA mark is
likely to be perceived as either referring to the name of the indigenous Mayan
people or a popular female name. Applicant’s mark by contrast will either be
perceived as a coined term or as a geographic place (the name of a hill) of the
vineyard from which applicant’s wine originates in Chile. As such, we find
that the first du Pont factor weighs heavily against finding a likelihood of con-
fusion.
2. Strength of the Marks/Scope of Protection/Third-Party Uses
We will now consider the strength of opposer’s MAYA mark as well as
the number and nature of similar marks in use on similar goods. “The pur-
pose of a defendant introducing third-party uses is to show that customers
have become so conditioned by a plethora of such similar marks that custom-
ers have been educated to distinguish between different such marks on the
bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694.
Opposer contends that because the term MAYA is arbitrary when used
in relation to wine and because of its continuous use since 1992, it is entitled
to a wide scope of protection. Opposer further points to prior oppositions it
has initiated before the Board as well as other enforcement actions. Opposer’s
Brief, p. 18; Opposer’s Notice of Reliance No. 2; Dalla Valle Deposition (pas-
sim).
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Applicant however maintains that opposer’s mark is diluted and weak
in the wine industry. In support thereof, applicant has made of record third-
party registrations to show that opposer’s mark is diluted and entitled to a
narrow scope of protection for wine and alcoholic beverages. Applicant’s No-
tices of Reliance Nos. 1 and 6. Of those, we find the most relevant are Regis-
tration No. 1050905 for the mark MAYACAMAS for “wines;” Registration No.
2876022 for the mark DIVA MAYA for “alcoholic beverage, namely tequila;”
and Registration No. 1613175 for the mark CAMAYA for “liqueurs.” In addi-
tion, applicant has introduced excerpts from various web sites offering wine
sold under the MAYACAMAS registered mark (Applicant’s Notice of Reliance
No. 9); extensive evidence of media recognition of the MAYACAMAS brand
name; and evidence of other brands of wine incorporating the terms MAYA or
MAIA such as LA MAIA LINA, ZUMAYA, and MAIANA from regional and
national publications such as The Washington Post, San Francisco Chronicle,
and Atlanta Journal-Constitution. Applicant’s Notice of Reliance No. 16 (ex-
cerpted articles retrieved from the Lexis/Nexis database). Applicant has also
made of record excerpts from the web sites flickeringwines.com, wine-
house.com, winebid.com, winecommune.com and winex.com, each showing the
offer for sale of both MAYA wines sold by opposer and MAYACAMAS wines
sold by Mayacamas Vineyards, MAYACAMAS MOUNTAINS wines sold by
Two Angels, and MAYCAMAS RANGE wines sold by Storybook Mountain.
Applicant’s Notice of Reliance No. 9, Ex. 2-7.
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As we have often stated, because third-party registrations of marks are
not evidence that the registered marks are in use, they are of limited proba-
tive value for demonstrating weakness of the marks. See In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:89
(4th ed. 2009) (“The mere citation of third-party registrations is not proof of
third party uses for the purpose of showing a crowded field and relative
weakness.”). In this instance, however, applicant has also submitted evidence
of actual use of MAYACAMAS formative marks by three other entities as well
as media references to marks for wine sold under marks such as
MAYACAMAS, LA MAIA LINA, ZUMAYA, OLMAIA, and MAIANA. A close
review of applicant’s evidence shows that the majority of media references to
third-party use pertain to the MAYACAMAS mark. The record evidence
shows that “Mayacamas” is the name of a mountain range in California. Op-
poser’s Notice of Reliance No. 2, Exs. 7-16. Based on this record, this relative-
ly limited evidence of third-party usage balanced against the arbitrariness of
opposer’s mark for wine and opposer’s policing efforts does not indicate signif-
icant weakness in opposer’s MAYA mark. We therefore find this factor to be
neutral or slightly favoring a likelihood of confusion because opposer’s mark is
conceptually strong.
3. Fame
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We now consider the fifth du Pont factor of fame of opposer’s pleaded
mark. Fame of the prior mark plays a dominant role in likelihood of confusion
cases featuring a famous mark. Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000). Because of the extreme defer-
ence accorded to a famous mark in terms of the wide latitude of legal protec-
tion it receives, and the dominant role fame plays in the likelihood of confu-
sion analysis, it is the duty of the party asserting fame to clearly prove it. La-
coste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); Lead-
ing Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904
(TTAB 2007).
Opposer argues that its MAYA mark “is clearly famous within the wine
industry segment” based on an article entitled “Napa’s 50 Best Cabernets”
published in Wine Spectator on November 15, 2006 ranking opposer’s MAYA
cabernet the seventh best in that category. Opposer’s Brief, p. 18; Opposer’s
Notice of Reliance No. 1, Ex. 4. To bolster this assertion, opposer relies on the
testimony of applicant’s commercial director, Mr. Callejas Hurtado, that Wine
Spectator is an “important” publication in the trade with nationwide distribu-
tion and a readership of over 1 million. Callejas Deposition 15:18-16:17. Op-
poser also points to the high cost of its MAYA wine as further evidence of
fame by way of analogy that automobile consumers are familiar with the Rolls
Royce brand of car. Opposer’s Brief, p. 18.
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A single, unsolicited instance of media exposure which occurred several
years ago falls short of establishing opposer’s MAYA mark as famous for like-
lihood of confusion purposes. Opposer submitted no evidence of U.S. sales
figures, revenues, advertising expenditures or promotional efforts over a sub-
stantial period of time to support its showing of fame. Compare Palm Bay,
supra, (VEUVE CLICQUOT found famous amongst purchasers of champagne
and sparkling wine based upon sale in 8000 restaurants nationwide, liquor
stores, wine shops and other retail establishments; extensive promotional
campaign consisting of print advertisements in general interest magazines
and in wine specialty magazines, radio ads, point-of-sale displays, wine tast-
ings; unsolicited recognition in New York Times, Boston Globe, Money Maga-
zine). Indeed, opposer acknowledges that it has never advertised its MAYA
wine in print publications or at trade shows. Applicant’s Notice of Reliance
No. 11, Interrogatory Responses Nos. 33 and 34. Other than the Wine Specta-
tor article, opposer introduced no evidence to support its assertion that its
wine sold under the MAYA trademark enjoys wide brand name recognition
amongst consumers. One instance of recognition in the wine industry from
several years ago is insufficient to establish the level of fame as required un-
der the fifth du Pont factor. This factor is therefore neutral.
4. The Goods
As identified, opposer’s and applicant’s goods are identical. In an at-
tempt to distinguish the goods, applicant has submitted evidence explaining
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the regulatory framework surrounding the labeling and advertising of wine in
the United States as enforced by the U.S. Tobacco and Alcohol Bureau
(“TTB”). In particular, applicant submitted excerpts from the U.S. Code of
Federal Regulations which require that certain information must be set forth
on the labels of bottled wine, including the brand name, country of origin, and
the class, type or other designation (which may be satisfied by including an
appellation of origin). Applicant’s Notice of Reliance No. 15, Ex. 1. Applicant
argues that these labeling requirements mitigate against any likelihood of
confusion because prospective purchasers will see that applicant’s wine origi-
nates from the Limari Valley of Chile whereas opposer’s wine is from Napa
Valley California.
In an inter partes proceeding before the Board, the issue of likelihood of
confusion must be determined based on the goods recited in applicant’s appli-
cation vis-à-vis the goods identified in opposer’s pleaded registration. Cun-
ningham v. Laser Golf Corp., 55 USPQ2d at 1846; Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Because
both opposer and applicant have identified their goods as wine with no geo-
graphic limitations regarding their country of origin or other limitations as to
type or appellation, for purposes of our likelihood of confusion analysis, the
goods are legally identical and include all varietals of wines and appellations
from all countries. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002). This is not a federal trademark in-
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fringement action but rather an administrative proceeding to determine
whether applicant is entitled to a federal registration for the goods as identi-
fied in its application. Thus, the fact that applicant’s wine originates from the
Limari Valley in Chile and is labeled as such and opposer’s wine is domesti-
cally produced from the Napa Valley in California has no bearing here. The
identical nature of the goods weighs in favor of finding a likelihood of confu-
sion.
5. Trade Channels
Turning now to the channels of trade, Mr. Callejas testified that to the
best of his knowledge, applicant and opposer do not sell their respective wine
products in the same trade channels. Callejas Deposition 30:19-23. Nonethe-
less, because both of the identifications of goods in the involved application
and registration are identical and unrestricted as to trade channels, we must
presume that both parties’ identical products travel in the same ordinary
trade and distribution channels and will be marketed to the same potential
consumers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). Again
we emphasize that this is the standard for likelihood of confusion in a Board
proceeding as opposed to the standard in a federal court infringement action.
The ordinary trade and distribution channels for wine are wholesalers, res-
taurants, hotels as well as retail establishments such as liquor stores, wine
merchants and for those states where permissible by law, grocery stores and
Opposition No. 91189443

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other retail outlets such as convenience stores. Hence, this du Pont factor, the
relevant trade channels, weighs in favor of finding a likelihood of confusion.
6. Purchasers and Conditions of Sale
Next we consider the conditions under which the goods are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as
the degree, if any, of sophistication of the consumers. Purchaser sophistication
may tend to minimize likelihood of confusion. Conversely, impulse purchases
of inexpensive items may tend to have the opposite effect. Palm Bay Imports,
73 USPQ2d at 1695.
The record here shows that while applicant’s wine is relatively inexpen-
sive with a retail price of $9.99-$15.99 per bottle, opposer’s wine falls on the
high end of the price scale with retail prices ranging from $200-$559 per bot-
tle, and pre-2005 vintages selling for thousands of dollars per bottle. Appli-
cant’s Notice of Reliance No. 8, Ex. 1; Stipulation of Facts, ¶ 7. Opposer has
also stated that purchasers of its MAYA wine blend “are likely to be relatively
knowledgeable about wines.” Stipulation of Facts, Ex. 2.
However, because the involved application and registration are unre-
stricted, we must assume that both applicant’s and opposer’s brands of wines
are sold to the same purchasers under the same conditions. See e.g., In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (where both ap-
plicant’s and registrant’s goods were identified as “wine,” applicant not per-
mitted to distinguish its French wine by extrinsic evidence of higher quality
Opposition No. 91189443

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and price). While we acknowledge that consumers would exercise care in the
purchase of a bottle of wine costing hundreds or thousands of dollars, because
opposer’s identification is not limited to wine sold at this price point, we must
consider all types of wine, including those sold at a lower price point. Further,
although wine in general may not be an “impulse purchase,” there is not suffi-
cient evidence in the record to support a finding that potential purchasers ex-
ercise a degree of care such that the conditions of sale would weigh in favor of
applicant.
We find that the factors of relevant customers and conditions of sale
weigh in favor of finding a likelihood of confusion.
7. Actual Confusion/Contemporaneous Use
According to the record, despite nearly a decade of contemporaneous
use, neither party is aware of any instances of actual confusion by consumers
of opposer’s MAYA wines and applicant’s TAMAYA wines. Applicant’s Notice
of Reliance No. 10, Ex. 1, Document Request Response No. 6; Callejas Deposi-
tion 93:5-15. The record shows that U.S. sales of applicant’s TAMAYA mark
have been substantial, totaling half a million bottles since 2002 and that ap-
plicant’s wine is currently offered at approximately 1500 retail establish-
ments. Callejas Deposition 33:4-38:3; Exs. 6 and 67; Id. at 29:22-30:2, Ex. 5.
The record further shows that applicant has extensively promoted and adver-
tised its mark, including in print publications with a national circulation
aimed at wine aficionados (Wine Enthusiast and Wine & Spirits), national
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trade shows and on its Internet web site. Callejas Deposition 55:13-91:15,
Exs. 10-22. We do not however have any evidence regarding the extent of op-
poser’s sales or promotional efforts. The evidence in the record regarding op-
poser’s sales and promotional efforts indicates that opposer and applicant
have not sold or advertised their products in the same venues. Thus, on this
particular record, we are unable to assess whether there has been a sufficient
opportunity for confusion to have actually occurred. Under these particular
circumstances, the absence of any actual confusion is not entitled to probative
weight. Compare Top Tobacco LP v. North Atlantic Operating Co., 101
USPQ2d 1163, 1174-5 (TTAB 2011). See also, Barbara's Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the
absence of actual confusion depends upon there being a significant opportuni-
ty for actual confusion to have occurred). But see Central Soya Co., Inc. v.
North American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence
of actual confusion over a reasonable period of time might well suggest that
the likelihood of confusion is only a remote possibility with little probability of
occurring.”). Accordingly, the seventh and eighth du Pont factors of the length
of time during and conditions under which there has been contemporaneous
use without evidence of actual confusion is neutral.
8. Balancing the du Pont Factors
In a particular case, any of the du Pont factors may play a dominant
role. In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. In fact, in some
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cases, a single factor may be dispositive. Kellogg Co. v. Pack'em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). In the present case, the
record evidence shows that the dissimilarity of the marks and differences in
commercial impression are so great as to outweigh the other du Pont factors,
discussed above. Accordingly, we find that opposer has failed to prove its case
by a preponderance of the evidence.
Decision: The opposition is dismissed.