Foster, Michele


901 S. MOPAC EXPY., BLDG. V, STE. 200

writer’s direct e-mail: [email protected]

March 8, 2017

Ms. Lyndsey Kuykendall
Trademark Examining Attorney
Law Office 102 Filed via TEAS
P.O. Box 1451
Alexandria, Virginia 22313-1451

Re: Response to Office Action Letter for the Mark SOLIÈRE, serial no. 76/719944,
on behalf of Applicant, Michele Foster.

Dear Ms. Kuykendall:

Pursuant to your Office Action letter for the above Mark, please consider the following in
support of issuing an approval for publication:

The PTO contends there is a likelihood of confusion between Applicant’s Mark,
SOLIÈRE, and the Registrant’s Mark, SOLIERA. Applicant respectfully disagrees.
Specifically, Registrant’s mark is geographically descriptive – i.e., its primary significance is a
generally known town in Italy. Applicant’s mark, on the other hand, is a fanciful, coined term
with no connection to the town. Moreover, there are two significant spelling and pronunciation
differences. When taken together, Applicant respectfully contends there is no likelihood of
consumer confusion.

i. Primary Significance of Registrant’s Mark is Italian Town.

Note, the purpose of this discussion is not to argue that Registrant’s product is
geographically descriptive or misdescriptive, or otherwise collaterally attack its
registration. Rather, the point is that more than a de minimus segment of the American
consuming public will recognize Registrant’s mark as a geographic reference, as opposed to
Applicant’s mark that is a fanciful, coined term. That is, Applicant simply intends to argue that
the meanings of the marks are different.

Soliera is an Italian municipality comprised of five villages encompassing 700 square
miles, according to the Wikipedia entry at Exhibit A. It had a population of 14,056 people in
2004, which has increased to 15,500 according to the Google search results at Exhibit B.

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The significance of SOLIERA as geographic location is highlighted by a simple Google
search. Specifically, when SOLIERA is input into the Google Chrome search bar, the first result
in the autofill, drop-down menu is “soliera italy,” followed by “soliera wine” and “soliera
tempranillo,” the latter of which is a wine varietal sold by Registrant.

The full screenshot of the drop-down menu is attached at Exhibit B, and a screenshot of a bottle
of Registrant’s wine is attached as Exhibit C.

And, when the Google search is entered, at least the first two pages of results provide
information solely about Soliera, Italy, include links to Michelin and guides,
vacation home advertisements, weather reports, and Wikipedia entries discussing the town.
Screen shots of the results are included at Exhibit B.

Whether the primary significance of a mark is a geographic place is judged by whether it
is “generally known,” as opposed to “ ‘minor, obscure [or] remote.’” 1 The relevant population is
the “purchasing public in the United States.” 2 When the place is foreign, the question is judged
based on various factors including whether “the population of the location is sizable,” or
“members of the consuming public have ties to the location.” 3

Soliera is not a “minor, obscure, [or] remote” place. Rather, it encompasses five separate
villages over an area of 700 square miles, with a population of roughly 15,500. It is certainly
large enough to expect that immigrants from Italy to America will have heard of it. According to
Department of Homeland Security statistics (Exhibit E), 2,760 Italians became naturalized
American citizens and another 3,544 obtained permanent residency status in 2015 alone.
Assuming this rate of immigration was roughly consistent over just 20 years, there are at least
250,000 U.S. consumers from Italy who arguably would recognize Soliera as a municipality in
their home country.

And, the number of such consumers is certainly much larger, since roughly 15 million
Americans were classified as “Italian Americans” in the 2000 census; all according to figures
compiled from that census by the Research Department of the National Italian Amercain
Foundation (Exhibit D). And, for those 15 million that are not themselves immigrants – i.e., that

In re The Newbridge Cutlery Co., 776 F.3d 854, 861 (Fed.Cir. 2015) (quoting In re Nantucket, Inc.,
677 F.2d 95, 99 (Fed.Cir. 2003)).
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are descendants of immigrants – it is reasonable to assume the closer in time their ancestors
immigrated from Italy, the more likely they are to be familiar with Soliera, Italy.

Finally, the PTO has already concluded Soliera’s primary significance is a geographic
place or location. Specifically, when reviewing Registrant’s application, the PTO initially
rejected it on the grounds it was geographically descriptive. A copy of the Office Action Letter
is attached as Exhibit H. This included an affirmative finding on the first of the three elements
required for such a rejection – i.e., that “[t]he primary significance of the mark is a generally
known geographic place or location.” 4 Of course, the record does not indicate the basis for the
PTO’s eventual registration of the mark. However, there is no indication that it reversed its
finding on this first element.

ii. Applicant’s Mark is a Coined Term,
Unrelated to Geographic Location.

Applicant’s Mark, SOLIÈRE, is a purely fanciful, coined term. Specifically, it is
comprised of the French word for “sun” – Soleil – and the final syllable “re”. “Re” has no
relevant meaning in any language, and was chosen solely because it sounds like a “ray” of
sunlight. Taken together, the Mark is intended to imply the wine is a “ray” of the “sun.” Note
that Applicant switched the “I” and “E” in Soleil based on interviews with American consumers
who thought “ie” easier to pronounce than “ei”.

iii. Differences in Spelling and Pronunciation.

There are two, critical differences in spelling and pronunciation between Applicant’s and
Registrant’s marks. First, the last syllable of Registrant’s mark – “ra” – is pronounced “rä” as in
“father.” This is confirmed by a video by posted on

The last syllable of Applicant’s mark – “re” – is pronounced “r?”, as in “ray” of sunlight
as already described.

In addition, Applicant’s mark includes the “ è ”; referred to in general and by the PTO as
a “grave e”. Indeed, the “ è ” is included in the PTO’s “standard character set” as a distinctly
different character than a normal “ e ”, as found in Registrant’s mark. 5 And, unlike a normal “e”,
the “ è ” generally indicates the syllable or sound should be emphasized or “stressed.” 6

Registrant’s mark contains no indication of emphasis or stress. And, it is reasonable to
conclude that consumers will perceive “ è ” as distinctly different from a normal “e”; just as they
would distinguish the vowels “e” and “u”. Indeed, this was the obvious intent of the PTO in
listing “e” and “ è ” as different standard characters.

See p.000002 of Exh. H.
See pp.6 and 8 of PTO’s Standard Character Set at Exh. E (also at ).
See Wikipedia entry for “Grave accent” at Exh. G.
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F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – jmw.docx – JMW
iv. Conclusion.

Taking all these differences together, Applicant respectfully contends there is no
likelihood of consumer confusion with Registrant’s mark. That is, consumers are unlikely to
confuse the name of a town in Italy, with a purely, fanciful, coined term intended to imply
Applicant’s wine is a ray of sunlight. This is especially true given the differences in spelling and

Please do not hesitate to contact me with any questions or comments.


Justin M. Welch
For the Firm

cc: client via email

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