Sacrafamilia Grandama Arte Della Luce S.S. Societa’ Agricola Di Anna Mercandelli E Domenico Capeto

Trademark Trial and Appeal Board

Sep 24, 2019

79219700 (T.T.A.B. Sep. 24, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: September 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sacrafamilia Grandama Arte Della Luce S.S.
Societa’ Agricola Di Anna Mercandelli E Domenico Capeto
_____

Serial No. 79219700
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John Alumit of Alumit IP for Sacrafamilia Grandama Arte Della Luce S.S. Societa’
Agricola Di Anna Mercandelli E Domenico Capeto.

Daniel F. Capshaw, III, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Ritchie, Shaw and English,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Sacrafamilia Grandama Arte Della Luce S.S. Societa’ Agricola Di Anna
Mercandelli E Domenico Capeto (“Applicant”) seeks registration on the Principal
Register of the mark AGRICOLTURA SPIRITUALE, in standard characters, for
“wines,” in International Class 33.1 The application states that the English

1 Application Serial No. 79219700 based on International Reg. No. 1372458, which issued
July 13, 2017. The USPTO was notified of the request for extension on November 2, 2017.
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translation of AGRICOLTURA SPIRITUALE in the mark is SPIRITUAL
AGRICULTURE.
The Examining Attorney has refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in
connection with the identified goods, so resembles the mark AGRICULTURA, in
standard characters, for “wines,” in International Class 33, as to be likely to cause
confusion.2 The cited registration states that the English translation of
AGRICULTURA in the mark is AGRICULTURE.
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney filed briefs. We affirm the refusal to register the mark.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the goods and the similarities between the marks. 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

2 Registration No. 4218984, issued October 2, 2012; Sections 8 and 15 affidavits accepted and
acknowledged. Citations to the application record are to pages in the Trademark Status &
Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office.
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characteristics of the goods and differences in the marks.”). We discuss each du Pont
factor for which there is evidence or argument.
A. The nature and similarity or dissimilarity of the goods, the established, likely-
to-continue trade channels, and the classes of purchasers.
We first consider the du Pont factors addressing the similarity of the goods, the
channels of trade in which they may be encountered and the purchasers to whom they
are marketed. Here, the goods are identical. Applicant seeks registration of its mark
for “wines” and the cited registration is for “wines.” Because the respective goods are
identical, we must presume that the channels of trade and classes of customers for
the wine are the same as well. See Am. Lebanese Syrian Associated Charities Inc. v.
Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith &
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Accordingly, we find that the du Pont factors relating to the similarity of the goods,
the trade channels through which they travel, and the customers to whom they are
offered, all favor a finding of likelihood of confusion.
B. Strength of the Cited Mark
Applicant argues that the terms AGRICULTURA (and AGRICOLTURA) are weak
because “consumers are accustomed to seeing wines bearing a word similar to
AGRICULTURE in various languages.”3 The strength of the cited mark affects the
scope of protection to which it is entitled. “In determining strength of a mark, we

3 Applicant’s Br., pp. 6-7, 4 TTABVUE 6-7.
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consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition.” In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”).
As to the inherent strength of the cited mark AGRICULTURA, we note that the
term translates to “Agriculture.” AGRICULTURA, however, has not been disclaimed
by the Registrant. In support of its argument that the cited mark is weak, Applicant
submitted thirteen third-party registrations for marks with foreign wording that also
translates to “agricultural.” These registrations include the terms “AGRICOLA,”
“AGRICOLE,” “MASSARI,” or “HACIENDA,” which all translate to “agricultural:”4
Mark Reg. No. Goods Translation Disclaimer
AGRICOLA
COTTINI
5041861 Wine The English translation
of AGRICOLA in the
mark is “agricultural.”
AGRICOLA

4721471 Inter alia,
wines
The English translation
of AZIENDA AGRICOLA
. . . in the mark is
“agricultural business . .
. .”
AZIENDA
AGRICOLA

4281093 Inter alia,
Italian
wine
The English translation
of . . . AGRICOLA in the
mark is “agricultural
estate . . . .”
Inter alia,
AGRICOLA
3720707 Wines The English translation
of . . . AGRICOLA in the
AGRICOLA

4 Response to Office Action of March 29, 2018, TSDR pp. 1-14. Reg. Nos. 4097935 and 4188509
have been cancelled and have not been considered. Cancelled registrations are evidence of
nothing but the fact that they once issued. See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148,
1159 (TTAB 2019).
Serial No. 79219700
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Mark Reg. No. Goods Translation Disclaimer

mark is “agricultural
estate . . . .”

4669193 Wines The English translation
of AGRICOLE in the
mark is “agricultural.”
AGRICOLE

4630398 Alcoholic
beverages
except beers
The English translation
of AZIENDA AGRICOLA
is “agricultural
business.”
Inter alia,
AZIENDA
AGRICOLA

4402205 Alcoholic
beverages
except beers
The English translation
of AZIENDA AGRICOLA
is “agricultural
business.”
AZIENDA
AGRICOLA
HACIENDA
LOS
HAROLDOS
2953427 Inter alia,
wines
The English translation
of HACIENDA in the
mark is “agricultural or
cattle-raising country
property.”
None
MASSARI 5348179 Spirits,
namely,
sambuca
and
alcoholic
bitters
The English translation
of MASSARI in the mark
is “agricultural estate
bailiffs.”
None

3673178 Wines The English translation
of AZIENDA AGRICOLA
in the mark is
“agricultural company.”
AZIENDA
AGRICOLA

In addition, Applicant submitted excerpts from eight third-party websites
showing various wines and liquors for sale whose names also include terms such as
“Agricola,” “Agricole,” “Agricultura,” “Agriculture,” “Massari,” or “Hacienda.” The
following examples are representative:5

5 Response to Office Action of March 29, 2018, TSDR pp. 16, 20-21, 23, and 26.
Serial No. 79219700
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Serial No. 79219700
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Serial No. 79219700
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Beginning with the third-party registrations, we do not find the registrations for
HACIENDA or MASSARI to be relevant. They are different in sound and appearance
and there is no evidence that consumers would translate these terms, which are not
disclaimed in those registrations, or otherwise understand them to be synonymous
with “agriculture.” Regarding the remaining third-party registrations, we note that
they do not include the same terms at issue, AGRICULTURA or AGRICOLTURA.
Instead, they all are comprised of AGRICOLA or AGRICOLE combined with other
wording or design elements. The record shows, however, that these terms translate
to “agricultural” and they share the same root term. To the extent consumers may be
able to translate these terms, something Applicant has not established, the
registrations could be viewed as evidence of weakness.
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Turning to the third-party websites, as with the registrations, we do not find the
websites including the terms HACIENDA or MASSARI to be relevant. Regarding the
other wines, two of the wines use the term AGRICULTURA as part of their name and
three wines use the English word AGRICULTURE (although all five of these wines
are listed as “Currently Unavailable”). The remainder of the wines, like the third
party registrations, use the slightly different terms AGRICOLA or AGRICOLE in
their names.
Despite the noted shortcomings, such third-party registrations and evidence of
use regarding foreign terms meaning “agricultural” and used in connection with wine
is “nevertheless relevant to prove that some segment of the composite marks which
both contesting parties use has a normally understood and well-recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting Textronix, Inc. v. Daktronics, Inc., 534
F.2d 915, 189 USPQ 693, 694 (CCPA 1976)). Although they are limited in number,
have some shortcomings, and comprise slightly different foreign terms meaning
“agricultural,” the third-party registrations suggest that AGRICULTURA (and
AGRICOLTURA) is somewhat conceptually weak for wines and alcoholic beverages.
However, because AGRICULTURA has been registered and is not subject to a
petition for cancellation, the registration is entitled to the presumptions accorded by
Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). That is, it is entitled to prima
facie evidence of the validity of the registered mark and of the registration of the
Serial No. 79219700
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mark, of the ownership of the mark, and of the owner’s exclusive right to use the
registered mark in commerce on or in connection with the goods specified in the
registration. Accordingly, the registered mark AGRICULTURA cannot be treated as
merely descriptive; at worst, it must be viewed as highly suggestive. Further, even if
we agreed that AGRICULTURA is an inherently weak mark, such a determination
would not be fatal to finding likelihood of confusion because even weak marks are
entitled to protection against confusion. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
Finally, we note that Applicant’s evidence relates to the inherent strength of the
registered mark not the strength it has acquired, if any, in the market by virtue of
registrant’s use.
In view of the foregoing, we find on this record, the term AGRICULTURA is highly
suggestive but that the evidence regarding the commercial strength of that term is
neutral.
C. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Next, we consider the du Pont factor relating to the similarity of the marks. In
comparing the marks, we must consider their appearance, sound, connotation and
commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity
as to any one of these factors may be sufficient to support a finding that the marks
are confusingly similar. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ
523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or
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sound alone is likely to cause confusion.”); In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988). The emphasis of our analysis must be on the recollection of the
average purchaser, who normally retains a general, rather than specific, impression
of trademarks. We remain mindful that “marks must be considered in light of the
fallibility of memory and not on the basis of side-by-side comparison.” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014).
Moreover, the identity of the goods reduces the degree of similarity between the
marks that is necessary for confusion to be likely. See, e.g., Viterra, 101 USPQ2d at
1912; In re Mighty Tea Leaf, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010);
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
Applicant’s mark is AGRICOLTURA SPIRITUALE. The cited mark is
AGRICULTURA. The marks are similar to the extent that Applicant’s mark
incorporates the sole term in the registered mark, with only the slightest change in
spelling—the substitution of a single vowel, “O” for “U.” While there is no rule that
likelihood of confusion automatically applies where one mark encompasses another,
in this case, as in many others, the fact that the entire registered mark is incorporated
into Applicant’s mark increases the similarity between the two. See, e.g., Wella Corp.
v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (finding
CALIFORNIA CONCEPT marks substantially similar to prior mark CONCEPT); In
re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (finding applicant’s
mark VANTAGE TITAN confusingly similar to registered mark TITAN); In re U.S.
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Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE
marks similar to registered mark CREST CAREER IMAGES).
Both marks also begin with near-identical terms, AGRICULTURA or
AGRICOLTURA. Again, the only difference between these first terms is the
substitution of a single vowel, “O” for “U,” resulting in a similar appearance and
sound. Given the near-identical pronunciation of the first terms, consumers who hear
the marks spoken by others might not notice, or could easily forget, the difference.
See Viterra, 101 USPQ2d at 1912; In re Energy Telecomms. & Elec. Ass’n, 222 USPQ
350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not avoid
a likelihood of confusion.”).
As the first portion of each mark, these terms are most “likely to be impressed
upon the mind of a purchaser and remembered,” Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Although the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, there
is nothing improper in giving more or less weight 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 Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
When we view Applicant’s mark, AGRICOLTURA SPIRITUALE, in its entirety,
we find that the term SPIRITUALE modifies AGRICOLTURA and therefore is
subordinate to it. The addition of SPIRITUALE also does not change the meaning of
AGRICOLTURA. Instead, AGRICOLTURA SPIRITUALE is likely to be understood
merely as a particular form of “agriculture.” AGRICULTURA and AGRICOLTURA
Serial No. 79219700
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thus remain the dominant elements of both marks and have the same meaning or
connotation. Even if we consider AGRICULTURA and AGRICOLTURA weak, the
addition of the subordinate term SPIRITUALE does not distinguish the marks.
Instead, when we consider AGRICULTURA and AGRICOLTURA SPIRITUALE in
their entireties, we find them similar in sound, connotation and commercial
impression.
This du Pont factor favors a finding of likelihood of confusion.
D. Conclusion
Having considered all the evidence and arguments on the relevant Du Pont
factors, we conclude that there is a likelihood of confusion between Applicant’s mark,
AGRICOLTURA SPIRITUALE, and Registrant’s mark, AGRICULTURA, for
identical goods, namely, wines.

Decision: The refusal to register under Section 2(d) is affirmed.