Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
OAKVILLE HILLS CELLAR, INC.,
dba DALLA VALLE VINEYARDS,
Appellant
v.
GEORGALLIS HOLDINGS, LLC,
Appellee
______________________
2016-1103
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91211612.
______________________
Decided: June 24, 2016
______________________
JAMES SCOTT GERIEN, Dickenson Peatman & Fogarty,
Napa, CA, for appellant.
WARREN L. DRANIT, Spaulding McCullough & Tansil
LLP, Santa Rosa, CA, for appellee.
______________________
Before LOURIE, MOORE, and CHEN, Circuit Judges.
LOURIE, Circuit Judge.
2 OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC
Oakville Hills Cellar, Inc. (“Oakville”), doing business
as Dalla Valle Vineyards, appeals from the decision of the
United States Patent and Trademark Office (“PTO”)
Trademark Trial and Appeal Board (“the Board”) dismiss-
ing its opposition to an application filed by Georgallis
Holdings, LLC (“Georgallis”) to register a MAYARI mark
for use on wine. See Oakville Hills Cellar, Inc. v. Georgal-
lis Holdings, LLC, No. 91211612, 2015 WL 4573202
(T.T.A.B. July 16, 2015) (“Opinion”). Because substantial
evidence supports the Board’s finding that Oakville’s
registered mark MAYA and Georgallis’s applied-for mark
MAYARI are sufficiently dissimilar, we affirm.
BACKGROUND
Georgallis filed an application at the PTO, seeking to
register the mark MAYARI in standard characters for use
on wine in International Class 33. Oakville opposed the
registration, alleging that Georgallis’s mark would likely
cause confusion with Oakville’s previously registered and
used mark MAYA in typed form, which is equivalent to
standard characters, also for use on wine in International
Class 33. Opinion at *1 & n.2.
The parties argued, and the Board evaluated, the fol-
lowing DuPont factors: (1) the similarity or dissimilarity
of the marks in their entireties as to appearance, sound,
connotation, and commercial impression (“the first
DuPont factor”); (2) the similarity or dissimilarity of the
goods as described in an application or registration or in
connection with which a prior mark is in use (“the second
DuPont factor”); (3) the similarity or dissimilarity of trade
channels (“the third DuPont factor”); (4) the conditions
under which and buyers to whom sales are made (“the
fourth DuPont factor”); (5) the fame of the prior mark;
(6) similar marks in use on similar goods (“the sixth
DuPont factor”); (7) the absence of actual confusion;
(8) the right to exclude others from use; (9) the extent of
potential confusion; and (10) other probative facts, here,
OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC 3
federal labelling requirements applicable to wine. Id. at
*2–8; see also In re E.I. DuPont de Nemours & Co., 476
F.2d 1357, 1361 (CCPA 1973) (listing factors relevant to
the likelihood of confusion determination).
The Board found that the second, third, and fourth
DuPont factors favored a finding of likelihood of confu-
sion, Opinion at *2–3, but that the first DuPont factor
favored a finding of no likelihood of confusion, id. at *3–6.
The Board also found the remaining DuPont factors that
it analyzed to be neutral. Id. at *6–8.
Specifically, for the second DuPont factor, the Board
found the goods at issue to be “identical,” despite “a
substantial difference in price” and other “differences in
the specific nature of the wines” sold by Oakville and
Georgallis. * Id. at *2. The Board reasoned that “[i]n the
context of an opposition proceeding, the question of regis-
trability of an applicant’s marks must be decided on the
basis of the identifications of goods set forth in the appli-
cation and registration at issue.” Id. Because Georgallis
“has requested a registration applicable to all kinds of
wine in all price ranges,” and because Oakville’s registra-
tion “covers use of its mark on all kinds of wine,” the
Board found the second DuPont factor to weigh in favor of
a finding of likelihood of confusion. Id. Likewise, the
Board found the third and fourth DuPont factors, namely,
the similarity of trade channels and the sophistication of
buyers, to weigh in favor of a finding of likelihood of
confusion. Id. at *3.
Turning to the first DuPont factor, the similarity or
dissimilarity of the marks in appearance, sound, connota-
tion, and commercial impression, the Board found that
* The evidence shows that Oakville’s wines cost be-
tween $175 and $365 per bottle, whereas Georgallis’s
wines have been offered at $25 per bottle. Opinion at *3.
4 OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC
the marks at issue, MAYA and MAYARI, “are visually
similar only in part.” Id. at *6. The Board noted that
MAYA and MAYARI share the initial four letters. Id. at
*4. But the Board found “no reason to perceive any
separation, visual or otherwise, between the MAYA- and
-RI portions” of MAYARI because “[t]he letters RI, alone,
have no relevant meaning, providing no reason for a
customer to view the mark logically as MAYA plus RI,
rather than as a single unitary expression.” Id. The
Board also rejected Oakville’s argument that “the bottle
label [bearing the mark MAYARI] will inevitably appear
to read ‘MAYA’ at certain orientation relative to an ob-
server,” reasoning that “the likelihood of such a mistake
remains a matter of speculation, absent evidence regard-
ing the occurrence or regularity of mistakes of this sort.”
Id.
As to sound, the Board found “nothing in the record to
indicate how MAYARI would be pronounced.” Id. While
acknowledging that MAYA could be pronounced the same
in those marks, the Board “consider[ed] the possibility
that MAYARI might be pronounced with the emphasis on
its second or third syllables, and that the -YAR- syllable
might be salient.” Id. The Board thus found that “no
evidence show[ed] that [the marks] would be pronounced
alike, and they may well be pronounced quite differently.”
Id. at *6.
Regarding meaning, Oakville argued that both marks
are female given names and the names of goddesses. Id.
at *5. In particular, Oakville contended that Maya is a
female name of Latin origin and the name of a Hindu
goddess, whereas Mayari is a female name of Filipino
origin and the name of a Filipino goddess. Id. Oakville
also presented evidence to show that Mayari appears on
an Internet list of Filipino names under the rubric of
“Gods, Goddesses and Deities of the Philippines” and on
certain websites that discuss Tagalog myths. Id.
OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC 5
But the Board was not persuaded that “customers
would be aware of the more esoteric meanings of the
marks.” Id. at *6. Rather, the Board agreed with Geor-
gallis and found that “most customers would likely per-
ceive MAYA as a female personal name or the name of the
pre-Columbian civilization” and “perceive MAYARI as a
coinage without meaning.” Id. The Board reasoned that
“customers would likely find the term MAYA to be some-
what familiar, while finding MAYARI unfamiliar.” Id.
Overall, the Board found that “the marks create signifi-
cantly different commercial impressions.” Id. The Board
therefore found the first DuPont factor to weigh against a
finding of likelihood of confusion. Id.
For the sixth DuPont factor, similar marks in use on
similar goods, Georgallis submitted third-party registra-
tions and applications for the registration of MAYA-
formative marks for beverages, mostly beverages other
than wine. Id. at *7. But the Board gave “little weight”
to that evidence, reasoning that third-party registrations
“are not evidence that the marks are in use.” Id. The
Board thus found this factor to be neutral. Id.
Balancing the relevant DuPont factors, the Board not-
ed that the parties’ goods are identical and would travel
through the same trade channels to the same classes of
customers, some of whom would exercise no more than an
ordinary degree of care in selecting the goods; but that the
marks are visually similar only in part, are only possibly
similar in their pronunciation, and would likely be per-
ceived to have different meanings and overall commercial
impressions. Id. at *8. The Board therefore concluded
that “the marks are sufficiently different that . . . confu-
sion is not likely.” Id. Accordingly, the Board dismissed
Oakville’s opposition.
Oakville timely appealed to this court. We have ju-
risdiction under 28 U.S.C. § 1295(a)(4)(B).
6 OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC
DISCUSSION
We review the Board’s legal conclusions without def-
erence and its factual findings for substantial evidence.
In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003).
“Substantial evidence is ‘more than a mere scintilla’ and
‘such relevant evidence as a reasonable mind would
accept as adequate’ to support a conclusion.” Id. (quoting
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)).
Likelihood of confusion is a question of law based on
underlying findings of fact. In re Chatam Int’l Inc., 380
F.3d 1340, 1342 (Fed. Cir. 2004). We assess a likelihood
of confusion based on the factors set forth in DuPont. 476
F.2d at 1361. “The likelihood of confusion analysis con-
siders all DuPont factors for which there is record evi-
dence but ‘may focus . . . on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
1164–65 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)).
Oakville argues that the Board’s finding of insuffi-
cient similarity between MAYA and MAYARI is unsup-
ported by substantial evidence. According to Oakville, the
Board overlooked record evidence of the marks’ similari-
ties in appearance, pronunciation, meaning, and overall
commercial impression. Specifically, Oakville argues that
MAYA dominates both marks, and that the suffix -RI in
MAYARI is of minor import as a distinguishing element,
particularly with the registered mark MAYA entirely
subsumed within the leading portion of MAYARI, which
could cause confusion between Oakville’s MAYA wine and
Georgallis’s MAYARI wine. Oakville contends that the
visual similarity between the marks is exacerbated by the
applied-for mark being in standard character form, not
limited to any particular style. Oakville also argues that
the Board engaged in unsupported speculation regarding
OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC 7
potential pronunciations of the marks, while acknowledg-
ing the lack of record evidence on pronunciation.
Moreover, Oakville emphasizes on appeal that both
marks are derived from the female name Maya: MAYARI
is a portmanteau of the names of Georgallis’s owner’s
daughters, Maya and Arianna, whereas MAYA is the
name of Oakville’s owner’s daughter. Oakville notes that
the marks are also the names of goddesses. Oakville thus
argues that the Board erred in finding that MAYARI has
no meaning and that a consumer would not view MAYARI
as MAYA plus RI. Furthermore, Oakville argues that
both marks are arbitrary in relation to wine and thus that
any difference in meaning would be lost on consumers
given the similarity in appearance and sound.
Additionally, Oakville argues that the conditions for
purchase are ripe for confusion, given that the parties are
selling identical goods via the same channels of trade,
including in bars under noisy and chaotic conditions.
Finally, Oakville argues that, as the prior user, any doubt
should be resolved in its favor, and that the Board’s
decision undermines the value and protection of federally
registered marks.
Georgallis responds that the Board correctly declined
to dissect MAYARI into MAYA and RI, an element with
no meaning, and instead found that consumers would
perceive MAYARI as a unitary whole and a coined term.
According to Georgallis, the Board properly considered
the marks in their entireties and found that MAYA is
familiar to U.S. consumers as a reference to the Mayan
culture and as a popular female given name, whereas
MAYARI is unfamiliar to U.S. consumers, not having
appeared in the top 1000 baby names for the past century
based on searches of the “Popular Baby Names” website of
the Social Security Administration. Georgallis contends
that the Board correctly found that the unfamiliar
MAYARI is readily distinguishable from the familiar
8 OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC
MAYA, and based on that, correctly concluded that
MAYARI is not confusingly similar to MAYA even when
both marks are used on wine.
Georgallis further argues that, if we were to vacate or
reverse the Board’s finding on the first DuPont factor, we
should also vacate its finding on the sixth DuPont factor,
similar marks in use. Appellee’s Br. 21–22. According to
Georgallis, the Board erred in deciding to give little
weight to the evidence of third-party registrations. Ra-
ther than finding the sixth DuPont factor to be neutral,
Georgallis contends, the Board should have found the
sixth DuPont factor to favor a finding of no likelihood of
confusion. Additionally, Georgallis argues that Oakville
is estopped from asserting that MAYARI is confusingly
similar to MAYA in light of prosecution statements made
in a related application, where Oakville argued that
MAYA was distinct from MAYAN.
We conclude that substantial evidence supports the
Board’s finding that the marks at issue are sufficiently
dissimilar as to appearance, sound, meaning, and com-
mercial impression. In determining similarity or dissimi-
larity, the marks must be compared in their entireties.
While there is no dispute that MAYA is understood by
consumers as a word with established meanings, that
simple fact alone does not create a basis for dissecting
MAYARI into MAYA- and -RI. Here, the Board properly
found that there is insufficient evidence that consumers
would perceive MAYARI as MAYA- and -RI. As the Board
noted, “[t]he letters RI, alone, have no relevant meaning,
providing no reason for a customer to view the mark
logically as MAYA plus RI, rather than as a single unitary
expression.” Opinion at *4 (emphasis omitted). More-
over, just like “Maya,” “may” and “ma” are also familiar
words in the English language. Even assuming that
consumers were to dissect MAYARI into separate compo-
nents, Oakville failed to demonstrate to the Board why
OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC 9
the dissection would be “MAYA-RI,” not “MAY-ARI” or
“MA-YARI.”
We also agree with Georgallis that the Board did not
err in finding that “no evidence show[ed] that [the marks]
would be pronounced alike, and they may well be pro-
nounced quite differently.” Id. at *6. The parties do not
dispute that there is no record evidence on how MAYARI
might be pronounced. Oakville’s interpretation of how
MAYARI might be pronounced is based solely on its
dissection of the mark into MAYA- and -RI. On appeal,
Oakville relies heavily on Georgallis’s admission that it
coined the term MAYARI to honor the daughters of its
owner, Maya and Arianna. But the record shows that this
information is only available to the public through Geor-
gallis’s website, and there is no evidence that consumers
would be generally aware of the origin of the MAYARI
mark. Consequently, this fact could not have affected
how consumers pronounce MAYARI. Even assuming that
consumers were aware of the mark’s origin, there is no
evidence that they would emphasize “Maya” in pronounc-
ing MAYARI. As the Board noted, it is possible that
“MAYARI might be pronounced with the emphasis on its
second or third syllables, and that the -YAR- syllable
might be salient.” Id. at *4. The Board thus did not err
in finding that the marks “are only possibly similar, in
part, in their pronunciation.” Id. at *8.
Moreover, substantial evidence supports the Board’s
finding that MAYA is a familiar word, whereas MAYARI
has no recognized meaning to U.S. consumers. In particu-
lar, Georgallis submitted evidence that Maya is a recog-
nized female name and has several salient meanings as
shown by dictionary definitions. Georgallis also submit-
ted evidence that Mayari has not appeared among the top
1000 baby names for the past century based on its search-
es of the Social Security Administration website. In
contrast, Oakville submitted evidence that Mayari is a
baby name, but that evidence consisted of an Internet list
10 OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC
of Filipino names; Oakville did not submit any evidence
that U.S. consumers would generally understand Mayari
to be a common female name. Oakville also submitted
evidence from the Internet to show that Mayari is the
name of a goddess in Tagalog mythology. But, again,
there is no evidence that this information is generally
known to U.S. consumers. The Board thus did not err in
rejecting “the more esoteric meanings” proffered by Oak-
ville, id. at *6, and in finding that “most customers would
likely perceive MAYA as a female personal name or the
name of the pre-Columbian civilization” and “perceive
MAYARI as a coinage without meaning,” id.
Accordingly, the Board correctly found that the un-
familiar MAYARI is distinguishable from the familiar
MAYA, and that the marks, considered in their entireties,
are dissimilar as to appearance, sound, meaning, and
overall commercial impression. We also conclude, on this
record, that the Board did not err in balancing all rele-
vant DuPont factors and in determining that the dissimi-
larity of the marks was sufficient to preclude a likelihood
of confusion. As we have held, “a single DuPont factor
may be dispositive in a likelihood of confusion analysis,
especially when that single factor is the dissimilarity of
the marks.” Odom’s Tenn. Pride Sausage, Inc. v. FF
Acquisition, L.L.C., 600 F.3d 1343, 1346–47 (Fed. Cir.
2010) (citation and internal quotation marks omitted); see
also Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330,
333 (Fed. Cir. 1991) (“We know of no reason why, in a
particular case, a single DuPont factor may not be dispos-
itive.”).
We are also unpersuaded by Oakville’s argument that
the Board’s decision undermines the value and protection
of federally registered marks. As indicated, Oakville has
failed to demonstrate any reversible error in the Board’s
factual findings regarding the first DuPont factor and in
determining that Georgallis’s applied-for mark was not
confusingly similar to Oakville’s registered mark. And it
OAKVILLE HILLS CELLAR, INC. v. GEORGALLIS HOLDINGS, LLC 11
is not a violation of any policy of protecting trademarks to
dismiss an opposition to the registration of marks that are
not confusingly similar.
We have considered the remaining arguments, but
find them unpersuasive. We therefore conclude that
substantial evidence supports the Board’s factual findings
underlying the first DuPont factor, and that the Board did
not err in determining, based on the record evidence, that
there was no likelihood of confusion. Because we affirm
the Board’s finding as to the first DuPont factor in favor of
Georgallis, which resolves the present appeal, we need
not address Georgallis’s arguments regarding the sixth
DuPont factor and prosecution estoppel.
CONCLUSION
For the foregoing reasons, we affirm the decision of
the Board dismissing Oakville’s opposition.
AFFIRMED