ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1307789
`09/01/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Viento Wines, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`09/02/2023
`
`1930 HIGHWAY 35
`HOOD RIVER, OR 97031
`UNITED STATES
`
`KEVIN M. HAYES
`KLARQUIST SPARKMAN, LLP
`121 SW SALMON STREET, SUITE 1600
`ONE WORLD TRADE CENTER
`PORTLAND, OR 97204
`UNITED STATES
`Primary email: ptotmdocket@klarquist.com
`Secondary email(s): kevin.hayes@klarquist.com
`503-595-5300
`
`Docket no.
`
`641511051901
`
`Applicant information
`
`Application no.
`
`97246567
`
`Opposition filing
`date
`
`Applicant
`
`09/01/2023
`
`El Viento LLC
`333 KING STREET
`COCOA VILLAGE, FL 32922
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`07/04/2023
`
`Opposition period
`ends
`
`09/02/2023
`
`Class 033. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Distilled agave liquor
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`2701040
`
`Register
`
`Principal
`
`Application date
`
`11/20/2000
`
`Registration date
`
`03/25/2003
`
`Foreign priority
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`date
`
`VIENTO
`
`NONE
`
`Class 033. First use: First Use: Nov 23, 2001 First Use In Commerce: Nov 23,
`2001
`WINE
`
`Attachments
`
`Notice of Opposition - App. SN 97246567 for EL VIENTO.pdf(179706 bytes )
`
`Signature
`
`/kevin hayes/
`
`Name
`
`Date
`
`KEVIN M. HAYES
`
`09/01/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Viento Wines, Inc.,
`
`
`El Viento LLC,
`
`Opposer,
`
`v.
`
`Applicant.
`
`
`
`
`
`
`)
`)
`) NOTICE OF OPPOSITION
`)
`) Opposition No.: ____________
`) App. No. 97246567
`) Mark: EL VIENTO
`)
`)
`
`
`NOTICE OF OPPOSITION
`
`
`COMMISSIONER FOR TRADEMARKS
`P.O. BOX 1451
`ALEXANDRIA, VA 22313
`
`
`Viento Wines, Inc., located and doing business in Hood River, Oregon, 97031
`
`(“Viento Wines”), believes that it will be damaged by the registration of the mark EL
`
`VIENTO shown in Application No. 97246567 for “distilled agave liquor” (the “Opposed
`
`Application,” the mark thereof being the “Opposed Mark”).
`
`The grounds for the opposition are as follows:
`
`1.
`
`Viento Wines has been using its VIENTO brand for wine for over 20
`
`years.
`
`2.
`
`Viento Wines owns Trademark Registration No. 2701040 for VIENTO for
`
`wine.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Opposed Application identifies distilled agave liquor as the goods.
`
`Distilled agave liquor is related to wine.
`
`Wine can be made from agave.
`
`The same entities that offer distilled agave liquor also offer wine.
`
`Notice of Opposition – Page 1
`
`

`

`7.
`
`The Opposed Application identifies goods sold at the same retail locations
`
`as wine.
`
`8.
`
`9.
`
`The Opposed Application identifies goods sold at bars.
`
`The Opposed Application identifies goods sold at grocery stores.
`
`10. Wine and distilled agave liquor are sold in close proximity.
`
`11.
`
`Ordinary patrons of grocery stores purchase both wine and distilled agave
`
`liquor.
`
`12.
`
`Ordinary patrons of bars purchase both distilled agave liquor and wine.
`
`13.
`
`Ordinary consumers purchase both distilled agave liquor and wine.
`
`14.
`
`Distilled agave liquor may be purchased by a consumer without significant
`
`consideration of the brand name.
`
`15. Wine may be purchased by a consumer without significant consideration
`
`of the brand name.
`
`16.
`
`Distilled agave liquor is purchased by unsophisticated consumers.
`
`17. Wine is purchased by unsophisticated consumers.
`
`18.
`
`VIENTO is the dominant portion of EL VIENTO.
`
`19.
`
`The Trademark Trial and Appeal Board, e.g., in In re AGE Bodegas
`
`Unidas, S. A., 192 U.S.P.Q. 326 (TTAB 1976), found use of similar marks on wine and
`
`distilled spirits likely to cause confusion and has even stated “there is clearly a
`
`relationship between wine and whiskey, both of which alcoholic beverages are sold
`
`through the same specialized retail outlets to the same purchasers, and are frequently
`
`bought at the same time, there is a likelihood of confusion, mistake or deception resulting
`
`from the registration of applicant's trademark.”
`
`Notice of Opposition – Page 2
`
`

`

`20.
`
`Distilled agave liquor and wine are related goods.
`
`21.
`
`The mark of the Opposed Application is likely to cause confusion with the
`
`Viento Wines’ senior VIENTO mark and registration.
`
`22.
`
`Opposer would be damaged by registration of Applicant’s Opposed
`
`Application.
`
`23.
`
`The goods identified in the Opposed Application are so closely related to
`
`the goods upon which Opposer has used Opposer’s Mark that the public is likely to be
`
`confused, to be deceived, and to erroneously assume that Applicant’s goods are those of
`
`Opposer, or to mistakenly believe that Applicant is in some manner connected with,
`
`sponsored by, or affiliated with Opposer.
`
`24.
`
`Registration of the mark of the Opposed Application is barred by the
`
`provisions of 15 U.S.C. § 1052(d) because the mark consists of a mark which so
`
`resembles a mark previously used in the United States by Opposer, and not abandoned, as
`
`to be likely, when used in connection with Applicant’s goods, to cause confusion,
`
`mistake or deception.
`
`
`
`WHEREFORE, Opposer deems that it will be injured and damaged by
`
`registration of the EL VIENTO mark of Application No. 97246567 for the goods
`
`identified therein and Opposer requests that this Opposition be sustained and that no
`
`registration for the Opposed Mark issue.
`
`
`
`
`
`Notice of Opposition – Page 3
`
`

`

`This Notice of Opposition is being filed together with the filing fee stated in 37
`
`C.F.R. § 2.6(a)(17).
`
`
`
`
`
`Dated: September 1, 2023
`
`By:
`
`
`______________________________
`Kevin M. Hayes, OSB #012801
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Fax: (503) 595-5301
`
`Of Attorneys for Opposer
`Viento Wines, Inc.
`
`Notice of Opposition – Page 4
`
`

`

`Generated on: This page was generated by TSDR on 2023-09-01 18:23:19 EDT
`
`Mark: VIENTO
`
`US Serial Number: 76168968
`
`US Registration
`Number:
`
`2701040
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Nov. 20, 2000
`
`Registration Date: Mar. 25, 2003
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Apr. 05, 2013
`
`Publication Date:Nov. 06, 2001Notice of Allowance Date:Jan. 29, 2002
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`VIENTO
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Translation: The English translation of "VIENTO" is "wind".
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: WINE
`
`International
`Class(es):
`
`033 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 047, 049
`
`First Use: Nov. 23, 2001
`
`Use in Commerce: Nov. 23, 2001
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`

`

`Current Owner(s) Information
`
`Owner Name: Viento Wines, Inc.
`
`Owner Address: 1930 HIGHWAY 35
`Hood River, OREGON UNITED STATES 97031
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`OREGON
`
`Attorney/Correspondence Information
`
`Attorney Name: Kevin M. Hayes
`
`Docket Number: 6415-56168-1
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`ptotmdocket@klarquist.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Kevin M. Hayes
`KLARQUIST SPARKMAN, LLP
`121 SW Salmon Street, Suite 1600
`One World Trade Center
`PORTLAND, OREGON UNITED STATES 97204
`
`Phone: 503-595-5300
`
`Fax: 503-595-5301
`
`Correspondent e-
`mail:
`
`ptotmdocket@klarquist.com kevin.hayes@klarqui
`st.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Mar. 15, 2023
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Mar. 25, 2022
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Apr. 05, 2013
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Apr. 05, 2013
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Apr. 05, 2013
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Apr. 05, 2013
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Mar. 20, 2013
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Mar. 30, 2009
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Mar. 30, 2009
`
`ASSIGNED TO PARALEGAL
`
`Mar. 26, 2009
`
`ASSIGNED TO PARALEGAL
`
`Mar. 23, 2009
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Feb. 14, 2008
`
`CASE FILE IN TICRS
`
`Mar. 25, 2003
`
`REGISTERED-PRINCIPAL REGISTER
`
`Sep. 26, 2002
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Sep. 19, 2002
`
`ASSIGNED TO EXAMINER
`
`Jul. 26, 2002
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Jul. 26, 2002
`
`USE AMENDMENT FILED
`
`Jul. 29, 2002
`
`PAPER RECEIVED
`
`Jan. 29, 2002
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`Nov. 06, 2001
`
`PUBLISHED FOR OPPOSITION
`
`Oct. 17, 2001
`
`NOTICE OF PUBLICATION
`
`Apr. 30, 2001
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Apr. 20, 2001
`
`EXAMINER'S AMENDMENT MAILED
`
`Apr. 05, 2001
`
`ASSIGNED TO EXAMINER
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Proceeding
`Number
`
`77315
`
`77315
`
`77315
`
`66607
`
`66607
`
`75184
`
`78370
`
`78370
`
`

`

`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Apr. 05, 2013
`
`