Wente Bros.

Trademark Trial and Appeal Board

Jul 1, 2003

No. 75493919 (T.T.A.B. Jul. 1, 2003)

Mailed: July 1, 2003
Paper No. 15
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Wente Bros.
________
Serial No. 75/493,919
_______
Edward S. Wright of Dorsey & Whitney LLP for Wente Bros.
Darlene D. Johnson, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Simms, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Wente Bros. (“applicant”), a California corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register the mark VALLE DE ORO for
wine.1 The Examining Attorney has refused registration
under Section 2(d) of the Act, 15 USC §1052(d), on the
basis of Registration No. 1,266,555, issued February 7,

1 Application Serial No. 75/493,919, filed June 1, 1998, based upon
applicant’s allegations of use and use in commerce since December 31,
1934. Applicant states in its application that the mark is translated
into English as “Valley of Gold.”
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/493,919
2
1984 (Sections 8 and 15 accepted and acknowledged,
respectively) for the mark GOLD VALLEY for wines.
Applicant and the Examining Attorney have submitted briefs
but applicant has not requested an oral hearing.
The Examining Attorney contends that, because
applicant’s mark is a foreign phrase, it is appropriate to
translate the mark under the doctrine of foreign
equivalents in order to determine if there is a likelihood
of confusion. The Examining Attorney argues that the
respective marks are similar in sound and appearance and
that the marks may have the same meaning. In this regard,
the Examining Attorney contends that “Valley of Gold” or
“Gold Valley,” the translation of applicant’s mark, has the
same meaning as the registered mark--GOLD VALLEY. The
Examining Attorney asks us to take judicial notice of a
dictionary definition of the word “gold,” which may mean
not only the metal but also a color. Therefore, both marks
may mean a valley rich in gold or where gold is located, or
a valley which is the color of gold, according to the
Examining Attorney.
The Examining Attorney notes that the goods here are
identical and that where this is the case, the degree of
similarity between the marks required to support a finding
Serial No. 75/493,919
3
of likelihood of confusion is not as great as where the
goods are more diverse.
Applicant’s attorneys have made several different
arguments during the course of this proceeding. Initially,
applicant argued that there was little similarity in the
respective marks.2 Applicant argued that it had not filed a
foreign application so that the translation “will not
become an issue in countries where Spanish is a common use
[sic] language.”
In applicant’s second response, applicant argued that
the registered mark had become abandoned, and submitted
copies of two letters from the Franchise Tax Board of the
state of California showing that the original registrant
(Barcamerica Corporation) as well as a subsequent owner of
the registration (Barcamerica International Corporation
U.S.A.) had been suspended effective February 1984 and
November 1992, respectively.3
In its initial appeal brief, applicant’s attorney
argued that the respective marks are dissimilar in sound,

2 In the first response to the refusal of the Examining Attorney,
applicant’s attorney incorrectly stated that the registered mark was
VALLEY GOLD rather than GOLD VALLEY.
3 According to the letters applicant has submitted, there is an “X” next
to both “The above named corporation is in good standing with this
agency” and “The above corporation was SUSPENDED effective …” It
appears, therefore, that while registrant and its successor had been
suspended at one time, those entities were in good standing at the time
of issuance of those letters in March 1999.
Serial No. 75/493,919
4
appearance and meaning.4 Applicant also argued that the
majority of wine consumers would not translate applicant’s
mark into “Valley of Gold.”
After applicant’s brief was filed, the Board suspended
this appeal in September 1999 because applicant had filed a
petition to cancel the cited registration. After that
proceeding was dismissed, proceedings were resumed on
October 4, 2002, and applicant was allowed time in which to
file an additional brief. In that second appeal brief, in
addition to arguing that the marks are so different that
there is no likelihood of confusion, applicant’s new
counsel contended that the owner of the cited registration
has acknowledged that there is no likelihood of confusion
between the marks. In this regard, applicant has quoted
from a brief, submitted with its appeal brief, filed in the
cancellation proceeding and captioned “Opposition to
Petitioner’s Response to Order to Show Cause.” That brief
was filed by Barcamerica International U.S.A. Trust.
It appears from this brief that the Board had issued
an order to show cause why the petition (filed by
applicant) should not be dismissed for failure to take
testimony. Petitioner (applicant herein) filed a response

4 In this brief applicant again misstated registrant’s mark to be VALLEY
GOLD.
Serial No. 75/493,919
5
to the order to show cause and registrant filed this brief
in opposition. In this brief, filed on September 18, 2001,
registrant argued that its mark had not been abandoned and
that petitioner in the cancellation proceeding had failed
to prove its case during its testimony period. In a
section of registrant’s brief entitled “Petitioner Seeks to
Misappropriate a Competitor’s Trademark,” a portion of
which applicant has quoted but which is set forth in its
entirety below, registrant states:
On page 3 of the Response, Petitioner
alleges that it “had no choice but to file
the present cancellation” petition. That is
simply not true. If a refusal to register
is not proper, the appropriate remedy is to
appeal. If the Board affirms, the applicant
for “Valle de Oro” had a right to appeal
either to a district court or to the Federal
Circuit. There are good grounds for appeal,
because “Valle de Oro” and “Gold Valley” are
entirely different in sound and appearance.
Even the meaning is slightly different.
“Gold Valley” suggests a color of a valley,
as in Autumn. The translation of the
Spanish words for “Valley of Gold” suggests
a valley where the metal gold might be
found. It is a stretch to argue that the
Spanish term is likely to be confused with
the English term in the ordinary course of
business. Any alphabetical listing of the
two wines would be under “G”, in the one
use, and under “V” in the other. Because
each mark is subsidiary to the primary mark
of the party, “Wente Bros.” And “Barca”, the
parties could avoid confusion if they wanted
to. There is no evidence of confusion in
the concurrent use period of more than
twenty years.
Serial No. 75/493,919
6
Registrant agreed to cooperate to
registration of Petitioner’s mark.
Petitioner refused an agreement and instead
set about taking Registrant’s mark for
itself on the ground it is the prior user.
Prior use is of no help where the
registration is incontestable. So,
Petitioner took the first step of claiming
abandonment, without any evidence whatsoever
except that a former owner of the
Registrant’s mark ceased doing business
after the mark had been assigned to the
present owner.
If Wente Brothers is capable of
destroying the registration, it will simply
appropriate the mark it knows is owned by
another. This Board has no jurisdiction
over such an act of unfair competition, but
it should not set the stage for such
misappropriation by canceling the
registration.
Petitioner chose not to appeal the
refusal to register and instead chose inter
partes litigation. Having failed to put on
a case in its testimony period, Petitioner
should be denied relief.
Finally, in a reply brief, applicant’s counsel again
argues that the respective marks are different in sound and
appearance and that a purchaser of applicant’s wine is
likely to view applicant’s mark as a “romantic Spanish
term” and not translate it. Applicant’s attorney also
contends that the respective marks have co-existed in the
same market without confusion for more than twenty years,
despite the fact that both applicant and registrant are
located within about 50 miles of each other in Northern
California.
Serial No. 75/493,919
7
We turn then to the issue of likelihood of confusion.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Considering first the goods, both applicant’s
application and registrant’s registration cover wine, a
product sold to the general public in liquor stores,
grocery stores (in some states), as well as in other retail
stores, and in bars and restaurants. Wine purchased in
retail stores, while varying in price, may be obtained
relatively inexpensively, and may be bought without a great
deal of purchasing care or deliberation.
We observe that when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
Serial No. 75/493,919
8
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
We turn then to a comparison of the respective marks.
Under the doctrine of foreign equivalents, a foreign
word (from a language familiar to an appreciable segment of
American consumers) and the English equivalent may be found
to be confusingly similar. See, e.g., In re American
Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987)(BUENOS DIAS for
soap held likely to be confused with GOOD MORNING and
design for latherless shaving cream); In re Ithaca
Industries, Inc., 230 USPQ 702 (TTAB 1986)(LUPO for men’s
and boys’ underwear held likely to be confused with WOLF
and design for various items of clothing); and In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983)(EL SOL for
clothing and footwear held likely to be confused with SUN
and design for footwear). Compare In re Sarkli Ltd., 721
F.2d 353, 220 USPQ 111 (Fed. Cir. 1983)(REPECHAGE for
various skin care products held not likely to be confused
with SECOND CHANCE for face creams and other toiletries);
In re Buckner Enterprises Corp., 6 USPQ2d 1316 (TTAB
1987)(DOVE and design for solid fuel burning stoves and
furnaces held not likely to be confused with PALOMA for
various forms of gas heating apparatus); In re L’Oreal
Serial No. 75/493,919
9
S.A., 222 USPQ 925 (TTAB 1984)(HAUTE MODE for hair coloring
cream shampoo held not likely to be confused with HI-
FASHION SAMPLER (with “SAMPLER” disclaimed) for finger nail
enamel); and In re Tia Maria, Inc., 188 USPQ 524 (TTAB
1975)(TIA MARIA for restaurant services held not likely to
be confused with AUNT MARY’S for canned fruits and
vegetables). Under the doctrine of foreign equivalents,
foreign words are translated into English for comparison.
The test is whether, to those American buyers familiar with
the foreign language, the word would denote its English
equivalent. See TMEP §1207.01(b)(vi).
Here the registered mark is GOLD VALLEY and
applicant’s mark is VALLE DE ORO, translated into English
as VALLEY OF GOLD or, perhaps, GOLD (or GOLDEN) VALLEY.
While the marks are, of course, somewhat different in
pronunciation and appearance, the marks do have some
similarities. The Spanish word “valle” is similar in sound
and appearance to the English word “valley.” Of course,
the meaning of the two marks is closely similar if not
identical.5 As the Examining Attorney has pointed out, both
the registered mark and applicant’s mark may have reference
to a valley where gold is found or to a valley which may be

5 We grant the Examining Attorney’s request to take judicial notice of
the dictionary definition of “gold.” University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 75/493,919
10
gold in color, as the result of the color of leaves or,
perhaps, in the context of the goods, the color of the
grapes. These marks are essentially identical in meaning
and otherwise somewhat similar that, when used for
identical goods-—wine-—we believe that confusion is likely.
With respect to the marks, we also observe that there
is no evidence that there are similar marks in the
marketplace, the existence of which may render the
registered mark somewhat “weak” or lacking in
distinctiveness with respect to wine.
Applicant argues, however, that we should allow
registration here because registrant has “acknowledged”
that confusion is unlikely when these marks are both used
on wine.6 We have carefully considered this argument but
find it unpersuasive.
First, registrant’s counsel’s statements about the
differences in the marks were made in an opposing brief in
the cancellation proceeding, filed in an attempt to
persuade the Board that judgment should be entered against
petitioner (applicant). They were made in the context of

6 We note that the Examining Attorney did not address this issue in her
brief. Because "the market interface between applicant and the owner
of a prior mark" as well as any "consent" are factors to be considered
in the likelihood-of-confusion analysis (In re du Pont de Nemours,
supra), the Examining Attorney should have set forth her view of
applicant's contention with respect to statements made by registrant in
the earlier cancellation proceeding, which were submitted with
applicant's instant appeal brief.

Serial No. 75/493,919
11
suggesting possible arguments that applicant may have in
any appeal from a refusal to register the mark here sought
to be registered. Registrant further indicated that
applicant and registrant have been unable to reach a
settlement of this trademark dispute. Further, registrant
indicated that applicant was trying to “misappropriate”
applicant’s registered mark. Suffice it to say that, if
registrant had indeed consented to the use and registration
of applicant’s mark, applicant could have submitted such a
consent. We do not believe that the introduction of
statements made in a brief submitted in connection with a
different proceeding in a completely different context is
the appropriate method of making of record the “consent” of
the registrant. See, for example, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003)(“As the Board and the examining
attorney have pointed out, however, there has been no
consent agreement executed between Majestic and Stroh….
The record appears to be silent as to whether Majestic ever
attempted to negotiate an agreement with Stroh, but, in any
event, we agree that no presumption can be made that Stroh
consents to Majestic’s use of the mark or that Stroh has
determined or admits that confusion of the public by
Majestic’s concurrent use of the mark is unlikely.”)
Serial No. 75/493,919
12
Finally, if there were any doubt about likelihood of
confusion in this case, we would, in accordance with
precedent, resolve such doubt in favor of registrant and
against applicant. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1691 (Fed. Cir. 1993); In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988);
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.