Tuesday, August 26, 2014

"PAGOS DEL REY" and "PradoRey" Confusable for Wine, Says TTAB

The Board sustained a Section 2(d) opposition to registration of PAGOS DEL REY for wine in view of the registered mark PradoRey (stylized) for wine. Applicant argued that Spanish-speaking Americans would perceive the difference in meaning between the two marks, but the Board observed that even if that were so, customers who are not familiar with Spanish must also be considered, and they would find the marks similar in appearance and sound. Real Sitio de Ventosilla, S.A. v. Pagos del Rey, S.L., Opposition No. 91201741 (August 22, 2014) [not precedential].

Because the goods are identical, the Board presumed that applicant's wine and opposer's wine travel through the same, normal channels of trade to the usual classes of consumers. Applicant contended that consumers, when faced with walls or rows of wine, are "forced to choose a wine off the shelf in order to read the label to find out what they have the option of purchasing." Opposer, on the other hand, maintained that lower-priced wine is frequently bought on impulse, and further that when wine is sold in the "chaotic" conditions of a bar or restaurant, customers may not be able to inspect the bottle of wine. The Board found opposer's position more persuasive.

As to the marks, the evidence showed that opposer's mark PradoRey consists of two Spanish words meaning "meadow" and "king," whereas the three Spanish words in opposer's mark mean "the king's estate" or "the king's vineyards." According to applicant the tens of millions of people of Hispanic descent in this country would recognize the different meanings of the two marks. The Board pointed out, however, that it must also be concerned with consumers who do not understand Spanish. "For them, the marks may have no meaning and the visual and phonetic aspects of the marks, as well as the overall commercial impression created by the marks, will be the critical elements in forming their impressions of the marks."

Non-Spanish speaking consumers would likely have difficulty in determining how to pronounce the marks, increasing the likelihood that they would be confused by the similarities in the marks: the initial P, the assonance of the vowels of PRADO- and PAGOS, and the final syllable REY. The sharing of seven letters, in similar order, in marks beginning with "P" and ending in "REY," with the marks having no meaning for many, would likely result in confusion when the marks are used on identical goods.

Applicant claimed that third-party uses and registrations of marks containing the word REY have a diluting effect on the cited mark, but the Board was unimpressed. The evidence of such usage lacked specificity, and the third-party registered marks were entitled to no probative weight because of a lack of evidence as to the nature and extent of their use.

Finally, applicant pointed to the absence of proof of actual confusion, but the Board noted that opposer's sales have been low and limited geographically. Applicant's assertion that the marks have co-existed peacefully in other countries was irrelevant here. And applicant's claim that it adopted its mark in good faith was likewise irrelevant because good intent does not avoid a finding of likely confusion.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  I don't think the marks are all that similar.

Text Copyright John L. Welch 2014.


At 9:15 AM, Anonymous Anonymous said...

Actually, these marks are not confusable.

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

Really? Was the Board so distracted by dissection (number of letters, % similarity) they lost track of the overall impression to consumers of wine? Putting aside fame, does this mean NIKE and COKE for the same goods fail the test because both have the same number of letters, 50% of the letters are the same and one is a foreign language so difference in meaning is meaningless? Foreign language marks beware!

At 10:33 AM, Anonymous Carole Barrett said...

I agree with John. The DOFE cases are difficult to reconcile.

At 12:14 PM, Anonymous Miriam Richter said...

I think the Board wants it wine and to drink it too! What about all the applications that get rejected based on the doctrine of foreign equivalents when the mark is in another language (not necessarily Spanish) and the cited mark is in English? If you don't speak the language there is zero chance of confusion. I live in S. Florida where more people speak Spanish than English - of course they'll know the difference.


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