Sacrafamilia Grandama Arte Della Luce S.S. Societa

This Opinion is not a
Precedent of the TTAB

Mailed: September 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sacrafamilia Grandama Arte Della Luce S.S.
Societa’ Agricola Di Anna Mercandelli E Domenico Capeto
_____

Serial No. 79219700
_____

John Alumit of Alumit IP for Sacrafamilia Grandama Arte Della Luce S.S. Societa’
Agricola Di Anna Mercandelli E Domenico Capeto.

Daniel F. Capshaw, III, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Ritchie, Shaw and English,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

Sacrafamilia Grandama Arte Della Luce S.S. Societa’ Agricola Di Anna

Mercandelli E Domenico Capeto (“Applicant”) seeks registration on the Principal

Register of the mark AGRICOLTURA SPIRITUALE, in standard characters, for

“wines,” in International Class 33.1 The application states that the English

1Application Serial No. 79219700 based on International Reg. No. 1372458, which issued
July 13, 2017. The USPTO was notified of the request for extension on November 2, 2017.
Serial No. 79219700

translation of AGRICOLTURA SPIRITUALE in the mark is SPIRITUAL

AGRICULTURE.

The Examining Attorney has refused registration under Section 2(d) of the

Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in

connection with the identified goods, so resembles the mark AGRICULTURA, in

standard characters, for “wines,” in International Class 33, as to be likely to cause

confusion.2 The cited registration states that the English translation of

AGRICULTURA in the mark is AGRICULTURE.

When the refusal was made final, Applicant appealed. Applicant and the

Examining Attorney filed briefs. We affirm the refusal to register the mark.

I. Likelihood of Confusion

Our determination of the issue of likelihood of confusion is based on an analysis

of all the probative facts in evidence relevant to the factors set forth in In re E. I. du

Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re

Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any

likelihood of confusion analysis, two key considerations are the similarities between

the goods and the similarities between the marks. See Federated Foods, Inc. v. Fort

Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental

inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential

2Registration No. 4218984, issued October 2, 2012; Sections 8 and 15 affidavits accepted and
acknowledged. Citations to the application record are to pages in the Trademark Status &
Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office.

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characteristics of the goods and differences in the marks.”). We discuss each du Pont

factor for which there is evidence or argument.

A. The nature and similarity or dissimilarity of the goods, the established, likely-
to-continue trade channels, and the classes of purchasers.

We first consider the du Pont factors addressing the similarity of the goods, the

channels of trade in which they may be encountered and the purchasers to whom they

are marketed. Here, the goods are identical. Applicant seeks registration of its mark

for “wines” and the cited registration is for “wines.” Because the respective goods are

identical, we must presume that the channels of trade and classes of customers for

the wine are the same as well. See Am. Lebanese Syrian Associated Charities Inc. v.

Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith &

Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d

1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).

Accordingly, we find that the du Pont factors relating to the similarity of the goods,

the trade channels through which they travel, and the customers to whom they are

offered, all favor a finding of likelihood of confusion.

B. Strength of the Cited Mark

Applicant argues that the terms AGRICULTURA (and AGRICOLTURA) are weak

because “consumers are accustomed to seeing wines bearing a word similar to

AGRICULTURE in various languages.”3 The strength of the cited mark affects the

scope of protection to which it is entitled. “In determining strength of a mark, we

3 Applicant’s Br., pp. 6-7, 4 TTABVUE 6-7.

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Serial No. 79219700

consider both inherent strength, based on the nature of the mark itself, and

commercial strength or recognition.” In re Chippendales USA Inc., 622 F.3d 1346, 96

USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its

conceptual strength (distinctiveness) and its marketplace strength (secondary

meaning).”).

As to the inherent strength of the cited mark AGRICULTURA, we note that the

term translates to “Agriculture.” AGRICULTURA, however, has not been disclaimed

by the Registrant. In support of its argument that the cited mark is weak, Applicant

submitted thirteen third-party registrations for marks with foreign wording that also

translates to “agricultural.” These registrations include the terms “AGRICOLA,”

“AGRICOLE,” “MASSARI,” or “HACIENDA,” which all translate to “agricultural:”4

Mark Reg. No. Goods Translation Disclaimer
AGRICOLA 5041861 Wine The English translation AGRICOLA
COTTINI of AGRICOLA in the
mark is “agricultural.”
4721471 Inter alia, The English translation AZIENDA
wines of AZIENDA AGRICOLA AGRICOLA
. . . in the mark is
“agricultural business . .
. .”
4281093 Inter alia, The English translation Inter alia,
Italian of . . . AGRICOLA in the AGRICOLA
wine mark is “agricultural
estate . . . .”

3720707 Wines The English translation AGRICOLA
of . . . AGRICOLA in the

4Response to Office Action of March 29, 2018, TSDR pp. 1-14. Reg. Nos. 4097935 and 4188509
have been cancelled and have not been considered. Cancelled registrations are evidence of
nothing but the fact that they once issued. See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148,
1159 (TTAB 2019).

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Serial No. 79219700

Mark Reg. No. Goods Translation Disclaimer
mark is “agricultural
estate . . . .”

4669193 Wines The English translation AGRICOLE
of AGRICOLE in the
mark is “agricultural.”
4630398 Alcoholic The English translation Inter alia,
beverages of AZIENDA AGRICOLA AZIENDA
except beers is “agricultural AGRICOLA
business.”
4402205 Alcoholic The English translation AZIENDA
beverages of AZIENDA AGRICOLA AGRICOLA
except beers is “agricultural
business.”
HACIENDA 2953427 Inter alia, The English translation None
LOS wines of HACIENDA in the
HAROLDOS mark is “agricultural or
cattle-raising country
property.”
MASSARI 5348179 Spirits, The English translation None
namely, of MASSARI in the mark
sambuca is “agricultural estate
and bailiffs.”
alcoholic
bitters
3673178 Wines The English translation AZIENDA
of AZIENDA AGRICOLA AGRICOLA
in the mark is
“agricultural company.”

In addition, Applicant submitted excerpts from eight third-party websites

showing various wines and liquors for sale whose names also include terms such as

“Agricola,” “Agricole,” “Agricultura,” “Agriculture,” “Massari,” or “Hacienda.” The

following examples are representative:5

5 Response to Office Action of March 29, 2018, TSDR pp. 16, 20-21, 23, and 26.

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Beginning with the third-party registrations, we do not find the registrations for

HACIENDA or MASSARI to be relevant. They are different in sound and appearance

and there is no evidence that consumers would translate these terms, which are not

disclaimed in those registrations, or otherwise understand them to be synonymous

with “agriculture.” Regarding the remaining third-party registrations, we note that

they do not include the same terms at issue, AGRICULTURA or AGRICOLTURA.

Instead, they all are comprised of AGRICOLA or AGRICOLE combined with other

wording or design elements. The record shows, however, that these terms translate

to “agricultural” and they share the same root term. To the extent consumers may be

able to translate these terms, something Applicant has not established, the

registrations could be viewed as evidence of weakness.

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Serial No. 79219700

Turning to the third-party websites, as with the registrations, we do not find the

websites including the terms HACIENDA or MASSARI to be relevant. Regarding the

other wines, two of the wines use the term AGRICULTURA as part of their name and

three wines use the English word AGRICULTURE (although all five of these wines

are listed as “Currently Unavailable”). The remainder of the wines, like the third

party registrations, use the slightly different terms AGRICOLA or AGRICOLE in

their names.

Despite the noted shortcomings, such third-party registrations and evidence of

use regarding foreign terms meaning “agricultural” and used in connection with wine

is “nevertheless relevant to prove that some segment of the composite marks which

both contesting parties use has a normally understood and well-recognized

descriptive or suggestive meaning, leading to the conclusion that that segment is

relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115

USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting Textronix, Inc. v. Daktronics, Inc., 534

F.2d 915, 189 USPQ 693, 694 (CCPA 1976)). Although they are limited in number,

have some shortcomings, and comprise slightly different foreign terms meaning

“agricultural,” the third-party registrations suggest that AGRICULTURA (and

AGRICOLTURA) is somewhat conceptually weak for wines and alcoholic beverages.

However, because AGRICULTURA has been registered and is not subject to a

petition for cancellation, the registration is entitled to the presumptions accorded by

Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). That is, it is entitled to prima

facie evidence of the validity of the registered mark and of the registration of the

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Serial No. 79219700

mark, of the ownership of the mark, and of the owner’s exclusive right to use the

registered mark in commerce on or in connection with the goods specified in the

registration. Accordingly, the registered mark AGRICULTURA cannot be treated as

merely descriptive; at worst, it must be viewed as highly suggestive. Further, even if

we agreed that AGRICULTURA is an inherently weak mark, such a determination

would not be fatal to finding likelihood of confusion because even weak marks are

entitled to protection against confusion. King Candy Co. v. Eunice King’s Kitchen,

Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).

Finally, we note that Applicant’s evidence relates to the inherent strength of the

registered mark not the strength it has acquired, if any, in the market by virtue of

registrant’s use.

In view of the foregoing, we find on this record, the term AGRICULTURA is highly

suggestive but that the evidence regarding the commercial strength of that term is

neutral.

C. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

Next, we consider the du Pont factor relating to the similarity of the marks. In

comparing the marks, we must consider their appearance, sound, connotation and

commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity

as to any one of these factors may be sufficient to support a finding that the marks

are confusingly similar. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ

523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or

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Serial No. 79219700

sound alone is likely to cause confusion.”); In re White Swan Ltd., 8 USPQ2d 1534,

1535 (TTAB 1988). The emphasis of our analysis must be on the recollection of the

average purchaser, who normally retains a general, rather than specific, impression

of trademarks. We remain mindful that “marks must be considered in light of the

fallibility of memory and not on the basis of side-by-side comparison.” In re St. Helena

Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014).

Moreover, the identity of the goods reduces the degree of similarity between the

marks that is necessary for confusion to be likely. See, e.g., Viterra, 101 USPQ2d at

1912; In re Mighty Tea Leaf, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010);

Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,

1700 (Fed. Cir. 1992).

Applicant’s mark is AGRICOLTURA SPIRITUALE. The cited mark is

AGRICULTURA. The marks are similar to the extent that Applicant’s mark

incorporates the sole term in the registered mark, with only the slightest change in

spelling—the substitution of a single vowel, “O” for “U.” While there is no rule that

likelihood of confusion automatically applies where one mark encompasses another,

in this case, as in many others, the fact that the entire registered mark is incorporated

into Applicant’s mark increases the similarity between the two. See, e.g., Wella Corp.

v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (finding

CALIFORNIA CONCEPT marks substantially similar to prior mark CONCEPT); In

re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (finding applicant’s

mark VANTAGE TITAN confusingly similar to registered mark TITAN); In re U.S.

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Serial No. 79219700

Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE

marks similar to registered mark CREST CAREER IMAGES).

Both marks also begin with near-identical terms, AGRICULTURA or

AGRICOLTURA. Again, the only difference between these first terms is the

substitution of a single vowel, “O” for “U,” resulting in a similar appearance and

sound. Given the near-identical pronunciation of the first terms, consumers who hear

the marks spoken by others might not notice, or could easily forget, the difference.

See Viterra, 101 USPQ2d at 1912; In re Energy Telecomms. & Elec. Ass’n, 222 USPQ

350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not avoid

a likelihood of confusion.”).

As the first portion of each mark, these terms are most “likely to be impressed

upon the mind of a purchaser and remembered,” Presto Prods., Inc. v. Nice-Pak

Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Although the similarity or

dissimilarity of the marks is determined based on the marks in their entireties, there

is nothing improper in giving more or less weight to a particular feature of a mark,

provided the ultimate conclusion rests on a consideration of the marks in their

entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

When we view Applicant’s mark, AGRICOLTURA SPIRITUALE, in its entirety,

we find that the term SPIRITUALE modifies AGRICOLTURA and therefore is

subordinate to it. The addition of SPIRITUALE also does not change the meaning of

AGRICOLTURA. Instead, AGRICOLTURA SPIRITUALE is likely to be understood

merely as a particular form of “agriculture.” AGRICULTURA and AGRICOLTURA

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Serial No. 79219700

thus remain the dominant elements of both marks and have the same meaning or

connotation. Even if we consider AGRICULTURA and AGRICOLTURA weak, the

addition of the subordinate term SPIRITUALE does not distinguish the marks.

Instead, when we consider AGRICULTURA and AGRICOLTURA SPIRITUALE in

their entireties, we find them similar in sound, connotation and commercial

impression.

This du Pont factor favors a finding of likelihood of confusion.

D. Conclusion

Having considered all the evidence and arguments on the relevant Du Pont

factors, we conclude that there is a likelihood of confusion between Applicant’s mark,

AGRICOLTURA SPIRITUALE, and Registrant’s mark, AGRICULTURA, for

identical goods, namely, wines.

Decision: The refusal to register under Section 2(d) is affirmed.

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