Roberto Oreste Antonio Busnelli

Trademark Trial and Appeal Board

Feb 20, 2015

No. 85830131 (T.T.A.B. Feb. 20, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Roberto Oreste Antonio Busnelli
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Serial No. 85830131
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Brittany J. Maxey and William R. Brees of Maxey Law offices, PLLC,
for Roberto Oreste Antonio Busnelli.
Frank Lattuca, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
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Before Quinn, Lykos, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Roberto Oreste Antonio Busnelli seeks registration on the Principal
Register of the mark FINCA AUREA, in standard characters and with FINCA
disclaimed, for (as amended) “wine” in International Class 33.1 The application
includes the following translation statement: “The English translation of FINCA
AUREA in the mark is GOLDEN VINEYARD.”

1 Application Serial No. 85830131, filed January 23, 2013, based on Applicant’s allegation of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act.
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Specifically,
registration has been refused on the ground that Applicant’s mark, as applied to the
goods identified in the application, so resembles the mark AUREA, previously
registered in standard characters on the Principal Register for “Grape wine; Red
wine; White wine; Wine; Wines” in International Class 33,2 as to be likely to cause
confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See 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.”).

2 Registration No. 3540772, issued December 2, 2008; Section 8 declaration accepted August
18, 2014. The registration includes the following translation statement: “The foreign
wording in the mark translates into English as GOLDEN.”
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We first address the similarity of the goods and channels of trade, the second
and third du Pont factors, respectively. Applicant’s goods are “wine.” The goods
identified in the cited registration are “Grape wine; Red wine; White wine; Wine;
Wines.” We find that Applicant’s goods and registrant’s goods are legally identical;
in particular, both include “wine,” and Applicant’s “wine” necessarily encompasses
each of the more specifically identified types of wine in the cited registration.
Because there are no limitations as to channels of trade or classes of purchasers
in the description of goods in the cited registration, we presume that the registrant’s
goods move in all channels of trade normal for such goods and are available to all
potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Moreover, because the wines described in the application and the
cited registration are legally identical, we must presume that the channels of trade
and classes of purchasers are the same. See American Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011);
see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(finding Board entitled to rely on this legal presumption in determining likelihood
of confusion).
In our likelihood of confusion analysis, these findings under the second and third
du Pont factors strongly support a conclusion that confusion is likely.
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We turn next 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.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted).
Because the similarity or dissimilarity of the marks is determined on the marks
in their entireties, our analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 Nat’l Data, 224 USPQ at 751.
The focus is on the recollection of the average purchaser, who normally retains a
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general rather than a specific impression of trademarks. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013).
When, as here, marks would appear on goods that are identical in part, “the
degree of similarity necessary to support a conclusion of likely confusion declines.”
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
(TTAB 2007).
The cited mark is AUREA, translated into English as GOLDEN. Applicant’s
mark is FINCA AUREA, translated into English as GOLDEN VINEYARD, with
FINCA disclaimed.
Applicant’s mark FINCA AUREA begins with a term not included in the cited
mark, which somewhat lessens the similarity between the marks. See, e.g., Century
21 Real Estate Corp., 23 USPQ2d at 1700 (stating that consumers will first notice
the identical lead word on encountering the marks); Presto Prods. Inc. v. Nice-Pak
Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”). However, Applicant has disclaimed the exclusive right to use
FINCA, the lead term in his mark. “Finca” is translated by Applicant as “vineyard,”
a term highly descriptive in association with wine.3 It is well-settled that
disclaimed, descriptive matter may have less significance in likelihood of confusion

3 The Examining Attorney made of record an English translation of “finca” meaning
“property, land, real estate” or “country house, country estate.” May 13, 2013 Office Action
at 2 (from the online Collins Spanish-English Dictionary, collinsdictionary.com).
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determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752);
In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In
re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter
is often “less significant in creating the mark’s commercial impression”).
Moreover, Applicant’s mark incorporates the registrant’s entire mark,
heightening the similarity between the two. See, e.g., Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design for men’s cologne, hair spray, conditioner and
shampoo likely to cause confusion with CONCEPT for cold permanent wave lotion
and neutralizer); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB
2009) (VANTAGE TITAN confusingly similar to TITAN for medical diagnostic
apparatus); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD PETTY’S
ACCU TUNE for automotive service centers confusingly similar to ACCU-TUNE for
automotive testing equipment).
In his appeal brief, Applicant makes arguments based on the file history of the
cited registration.4 Applicant, however, made neither the file history nor the two
registrations he references of record. It is well-established that the Board does not
take judicial notice of records residing in the Patent and Trademark Office. See, e.g.,

4 See Appeal Brief at 7-9, 4 TTABVUE at 8-10.
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In re Sela Prods., LLC, 107 USPQ2d 1580, 1583 (TTAB 2013); In re Jonathan Drew
Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011); Beech Aircraft Corp. v. Lightning
Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986) (stating that “we do not take
judicial notice of application and registration files that reside in the Patent and
Trademark Office on the basis of their mere identification in briefs”). Furthermore,
it has been noted many times that we must decide each case on its own facts. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics similar to [Applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014).
For all of the reasons discussed above, we find Applicant’s mark, considered in
its entirety, to be similar to the cited mark. Therefore, the first du Pont factor
supports a finding that confusion is likely.
We have considered the evidence of record as it pertains to the relevant du Pont
factors. To the extent that any other du Pont factors for which no evidence was
presented by Applicant or the Trademark Examining Attorney may nonetheless be
applicable, we treat them as neutral. In view of our findings that the marks are
similar and the goods are identical and move in the same channels of trade and to
the same customers, we find that Applicant’s mark is likely to cause confusion with
the mark in cited Registration No. 3540772 when used in association with wine.
Decision: The refusal to register Applicant’s mark is affirmed.