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Are AUREA and FINCA AUREA Confusingly Similar for Wine?

Finca Aurea Wine Trademark TTABApplicant Roberto Oreste Antonio Busnelli sought to register the mark FINCA AUREA on the Principal Register in standard characters, with FINCA disclaimed in International Class Type 33.  See In re Roberto Oreste Antonio Busnelli, Serial No. 85830131 (February 20, 2015) [not precedential]. The application included a translation that indicated the the mark means, “GOLDEN VINEYARD” in English. Originally, the Trademark Examining Attorney refused the registration under Section 2(d) Trademark Act, 15 U.S.C. § 1052(d), asserting that Applicant’s mark, as applied to the goods in the application, resembled a registered standard character mark “AUREA” in International Class 33 for ““Grape wine; Red wine; White wine; Wine; Wines.” Id. at 2. The Attorney reasoned applicant’s mark was likely to cause confusion, to cause mistake, or to deceive with regard to the registered mark. Applicant appealed after the Attorney made the refusal final.

When the matter reached the Board, the Board first examined the similarity of the goods and the channels of trade (the second and third du Pont factors). In doing so, the Board established the following:

  • Applicant’s goods are identical to those of registrant;
  • The registrant’s goods move in all channels of trade characteristic for such goods and are available to all potential classes of ordinary customers; and
  • Since the wines outlined in the application and the cited registration were legally identical, there was a presumption that the channels of trade and classes of purchasers would be the same.

Id. at 3. Thus, with respect to the second and third du Pont factors, the Board found in favor of likelihood of confusion.

In its analysis, the Board turned the to remaining du Pont factors to determine if a likelihood of confusion existed based on the similarity or dissimilarity of the marks in their entireties with respect to appearance, sound, connotation, and commercial impression. Id. at 4. As noted by the Board in many prior opinions, the test never includes a side-by-side comparison of the marks, but instead examines whether the marks are “sufficiently similar” in their commercial impression to allow a person who encounters both marks to conclude there is a connection between the two parties. Further, the Board noted that its decision is made on the basis of the mark as a whole, not on the basis of specific dissections of the mark, but also explained that it would be rational to weigh some factors more than others provided the conclusion still rests on the mark as a whole. Id. 

The Board noted that the registered mark, “AUREA,” translates to “GOLDEN” in English. The Applicant’s mark, “FINCA AUREA,” translates to “GOLDEN VINEYARD” in English but discounted the term “FINCA.” It went on to reason that the Applicant’s mark begins with a term that somewhat distinguishes it from the registered mark, but the Applicant disclaimed the exclusive right to use the term “FINCA.” Id. at 5. Further, the Board noted that “FINCA,” which translates to “VINEYARD,” is highly descriptive in its association with wine and “[i]t is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations.” Id. at 5–6. Further:

  • Applicant’s mark incorporated registrant’s entire mark, which “heightened similarity” between the two marks; and
  • Even though Applicant produced arguments based on the file history of registrant’s mark, the Board reasoned that it was “well-established” it did not take judicial notice of records located in the Patent and Trade Office and each case must be decided on its own facts.

Id. at 6.

Alas, the Board found the Applicant’s mark similar to that of the registered mark and thus found in support of a likelihood to cause confusion.

Image property of Finca Aurea.

For more information on wine or alcohol law, labeling, or trademark, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

Lindsey A. Zahn

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Lindsey is the founder and author of On Reserve: A Wine Law Blog. She is an alcohol beverage and food attorney and is admitted to the New York State Bar.

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