On appeal from the U.S Trademark Trial and Appeal Board (the “Board”), the Federal Circuit ruled on June 24th that consumers are not likely to confuse the trademarks MAYA and MAYARI with respect to wine. Georgallis Holdings, LLC (“Georgallis”) filed an application with the U.S. Patent and Trademark Office to register the trademark MAYARI for use on wine. Oakville Hills Cellar, Inc. (“Oakville”), d/b/a Dalla Valle Vineyards, opposed the registration alleging that the mark would likely cause confusion with Oakville’s previously registered mark MAYA for wine.
Accordingly, the appeal focused on DuPont factors for assessing likelihood of confusion:
(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, here, federal labelling requirements applicable to wine.
The Board found that (i) the second, third, and fourth DuPont factors favored a finding of likelihood of confusion, (ii) the first DuPont factor favored a finding of no likelihood of confusion, and (iii) the remaining DuPont factors were neutral.
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. The Board reasoned that “[i]n the context of an opposition proceeding, the question of registrability of an applicant’s marks must be decided on the basis of the identifications of goods set forth in the application and registration at issue.” Because Georgallis “has requested a registration applicable to all kinds of wine in all price ranges,” and because Oakville’s registration “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. 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.
The foregoing is is a key distinction between evaluating likelihood of confusion for purposes of trademark registration, as opposed to an actual claim of trademark infringement, which allows robust discovery into, and an analysis of, all factual issues.
But with regard to the first DuPont factor, the similarity or dissimilarity of the marks in appearance, sound, connotation, and commercial impression, the Board found that MAYA and MAYARI “are visually similar only in part” because they share the same initial four letters. Significantly, however, 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.” 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 observer,” reasoning that “the likelihood of such a mistake remains a matter of speculation, absent evidence regarding the occurrence or regularity of mistakes of this sort.”
Regarding meaning, the Board agreed with Georgallis and found 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.” The Board reasoned that “customers would likely find the term MAYA to be somewhat familiar, while finding MAYARI unfamiliar.” Overall, the Board found that “the marks create significantly different commercial impressions.” The Board therefore found the first DuPont factor to weigh against a finding of likelihood of confusion.
In balancing the relevant DuPont factors, the Board noted 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 perceived to have different meanings and overall commercial impressions. The Board therefore gave dispositive weight to the first factor and concluded that “the marks are sufficiently different that . . . confusion is not likely.” Accordingly, the Board dismissed Oakville’s opposition.
On appeal, the Federal Circuit held that (a) “substantial evidence supports the Board’s finding that the marks at issue are sufficiently dissimilar as to appearance, sound, meaning, and commercial impression,” (b) “the Board did not err in finding that ‘no evidence show[ed] that [the marks] would be pronounced alike, and they may well be pronounced quite differently,'” and (c) “substantial evidence supports the Board’s
finding that MAYA is a familiar word, whereas MAYARI has no recognized meaning to U.S. consumers.”
The foregoing can be boiled down to the point that consumers were unlikely to be confused because the MAYA marks communicates specific meanings while the MAYARI mark has no meaning in the U.S.