By Cheryl Beise, J.D.
Substantial evidence supported the Trademark Trial and Appeal Board’s determination that trademark applicant Georgallis Holdings’ mark MAYARI for wine was not confusingly similar to a California winery’s previously registered mark MAYA, the U.S. Court of Appeals for the Federal Circuit has ruled. The Board’s dismissal of an opposition proceeding brought by Oakville Hills Cellar was affirmed (Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, June 24, 2016, Lourie, A.).
Georgallis Holdings, LLC filed an application to register the mark MAYARI, in standard characters, for "Wine," in International Class 33. The application stated that "‘MAYARI’ has no meaning in a foreign language." Oakville Hills Cellar, Inc., d/b/a Dalla Valle Vineyards ("Oakville"), opposed registration of the mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act with the Oakville’s mark MAYA, registered in typed character form, for "wine" in Class 33.
On July 16, 2015, the Board dismissed the opposition, finding that confusion was not likely between the parties’ marks. In reaching its decision, the Board considered the following DuPont likelihood of confusion factors: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (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; (3) the similarity or dissimilarity of trade channels; (4) the conditions under which and buyers to whom sales are made; (5) the fame of the prior mark; (6) similar marks in use on similar goods; (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, in this case, federal labelling requirements applicable to wine.
The Board found that the second, third, and fourth DuPont factors favored a finding of likelihood of confusion because both the application and registration identified identical goods (wine), without any restriction as to type or price range. However, in the Board’s view, these three factors were outweighed by the fact that the parties’ marks were sufficiently dissimilar to make confusion unlikely. The Board deemed the remaining DuPont factors to be neutral.
Similarity of marks. On appeal, Oakville argued that the Board overlooked evidence of the marks’ similarities in appearance, pronunciation, meaning, and overall commercial impression. The Federal Circuit disagreed. Contrary to Oakville’s assertion, Board did not err in finding that consumer would view the applicant’s MAYARI mark as MAYA plus RI, instead of as a single unitary expression. Even assuming that consumers would dissect MAYARI into separate components, Oakville failed to demonstrate why the dissection would be "MAYA-RI," not "MAY-ARI" or "MA-YARI."
The Board also did not err in rejecting Oakville’s argument that MAYARI would be pronounced as MAYA-RI. There was no record evidence on how MAYARI might be pronounced. Georgallis had admitted that it coined the term MAYARI to honor the daughters of its owner, Maya and Arianna. While this information was available on Georgallis’s website, there was no evidence that consumers would be generally aware of the origin of the MAYARI mark. As there was no evidence that consumers would emphasize "Maya" in pronouncing MAYARI, the Board did not err in determining that the marks "are only possibly similar, in part, in their pronunciation."
Substantial evidence also supported the Board’s finding that MAYA was a familiar word, whereas MAYARI had no recognized meaning to U.S. consumers. There was no evidence that U.S. consumers would know that that "Mayari" was a Filipino female name or the name of a goddess in Tagalog mythology.
The Federal Circuit found that Substantial evidence supported the Board’s conclusion that MAYA and MAYARI were dissimilar as to appearance, sound, meaning, and overall commercial impression. On the record before it, the Board also did not err in balancing all relevant DuPont factors and in determining that the dissimilarity of the marks was sufficient to preclude a likelihood of confusion. As the court noted, "a single DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks."
Finding Oakville’s other arguments to be unpersuasive, the Federal Circuit affirmed the Board’s decision.
The case is No. 2016-1103.
Attorneys: James Scott Gerien (Dickenson Peatman & Fogarty) for Oakville Hills Cellar, Inc. Warren L. Dranit (Spaulding McCullough & Tansil LLP) for Georgallis Holdings, LLC.
Companies: Oakville Hills Cellar, Inc.; Georgallis Holdings, LLC
MainStory: TopStory Trademark FedCirNews
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