Monday, May 06, 2013

TTAB Dismisses 2(d) Opposition: TAMAYA Not Confusable With MAYA, Both For Wine

Finding that the dissimilarity of the marks and their different commercial impressions outweighed the other relevant duPont factors, the Board dismissed this opposition to registration of the mark TAMAYA for wines. Opposer Oakville Hills claimed likely confusion with its registered mark MAYA for wine, but failed to prove its claim by a preponderance of the evidence. Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards v. Vina Casa Tamaya S.A., Opposition No. 91189443 (April 15, 2013) [not precedential].

The Marks: Although Applicant Vina Casa’s mark includes the letters or term MAYA, it comprises three syllables and begins with TA. Therefore the marks at issue look and sound differently. Moreover, the Board noted, it is often the first part of the mark that is “likely to be impressed upon the mind of a purchaser and remembered.”

In addition, the evidence showed that the connotations and overall commercial impressions of the marks are different. The term MAYA has several known meanings in this country: that of a member of the Mayan people and also the name of a girl. In fact, Social Security records show that “Maya” has been in the top 100 for girl’s names for the past ten years. Therefore consumers are likely to perceive the mark MAYA as the popular girl’s name.

Applicant, at its website, explained that TAMAYA means “highest point” in the Diaguita dialect, and also is the name of a hill on Applicant’s property in Chile.

Opposer argued that the Diaguta dialect is obsolete and obscure, and that the doctrine of equivalents should not be applied to translate the word TAMAYA. The Board agreed, concluding that American consumers are likely to perceive the mark as a coined term without any meaning.

The Board therefore found that the first duPont factor “weighs heavily" against a finding of likely confusion.

Strength of Opposer’s Mark: Applicant asserted that the mark MAYA is diluted and weak. It relied on several third-party registrations for marks containing the word or term MAYA and on Internet website pages offering MAYA wine along with MAYACAMAS wine, MAYACAMAS MOUNTAINS wine, and MAYACAMAS RANGE wine sold by three different companies. The Board, however, found that this relatively limited evidence, balanced against the arbitrariness of the mark MAYA for wine and Opposer’s policing efforts, “does not indicate significant weakness in opposer’s MAYA mark.”

Fame: Opposer claimed that its mark MAYA is famous, but its proofs were woefully inadequate. It relied on a single magazine article, but acknowledged that it never advertised MAYA wine at trade shows or in print publications.

The Goods: Applicant attempted to distinguish the marks by pointing to the requirements of the U.S. Tobacco and Alcohol Bureau (TTB) regarding the labeling and advertising of wine. Under these requirements, Applicant’s wine is labeled as originating in the Limari Valley of Chile, whereas Opposer’s wine originates in the Napa Valley in California.

The Board, however, pointed out that the issue of likelihood of confusion in this proceeding must be determined based on the goods recited in the opposed application and the pleaded registration. There are no limitations as to country of origin, type, or appellation, and therefore the Board must assume that all wines are included and must consider the involved goods to be identical.

Channels of Trade: Similarly, because there are no limitations as to channels of trade in the involved application and registration, the Board must assume that they travel through the same, normal channels of trade.

Conditions of Sale: Although Applicant’s wine sells for $10 to $16 per bottle, and Opposer’s wine for $200 to $559 and more per bottle, there are no corresponding restrictions in the involved application and registration. Consequently, the Board must assume that the products are sold to the same classes of purchasers under the same conditions.

Balancing the Factors: The Board concluded that the first duPont factor, the dissimilarity of the marks and the differences in commercial impression, “are so great as to outweigh the other DuPont factors." And so the Board dismissed the opposition

Read comments and post your comment here.

TTABlog note: Add this one to the TTABlog collection of 2(d) wine decisions, here.

Note all the evidence that was not considered by the Board in this proceeding. Surely that evidence would have been admitted in a trademark infringement suit. So should a TTAB decision on likelihood of confusion have preclusive effect in a civil action? See the last TTABlog post, here.

Text Copyright John L. Welch 2013.


At 9:17 AM, Anonymous Anonymous said...

Wow... completely different commercial impressions. Not even with identical goods are these marks confusingly similar.

At 5:20 PM, Anonymous Anonymous said...

"The Board, however, pointed out that the issue of likelihood of confusion in this proceeding must be determined based on the goods recited in the opposed application and the pleaded registration."

So, what, the registration identifying "wine" needs to be amended to "wine, sold legally" in order for the Board to credit regulations on the goods?

At 11:40 PM, Anonymous Anonymous said...

Well, it looks like SOMEBODY just subscribes to a trademark watch service for the letter string *maya* (w/ phonetics) and files oppositions against any alcoholic beverage that comes up...


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