Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA73152
`ESTTA Tracking number:
`03/28/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92044778
`Defendant
`CANTINE MEZZACORONA S.C.A.R.L.
`CANTINE MEZZACORONA S.C.A.R.L.
`Via 4 Novembre 127 ITX
`38016 MEZZOCORONA (TRENTO),
`
`Correspondence
`Address
`
`JONATHAN MYERS
`THE FIRM OF KARL F. ROSS, P.C.
`5676 RIVERDALE AVENUE BOX 900
`BRONX, NY 10471-0900
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Answer
`Tom M. Schaumberg
`schaumberg@adduci.com
`/Tom M. Schaumberg/
`03/28/2006
`Answer.pdf ( 119 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MIGUEL TORRES, S.A.,
`
`Petitioner’
`
`V.
`
`CANTINE MEZZACORONA S.C.A.R.L.,
`
`Respondent.
`
`
`
`Cancellation No.: 92044778
`
`(Reg No" 2929926)
`
`ANSWER
`
`Registrant, Cantine Mezzacorona S.C.A. (formerly S.C.A.R.L.), through its attorneys,
`
`hereby responds, without waiver of any defense available or cognizable at law, to the Petition for
`
`Cancellation as follows:
`
`1.
`
`Registrant, Cantine Mezzacorona S.C.A.,
`
`lacks
`
`sufficient knowledge or
`
`information to form a belief as to the truth of the allegations in paragraph 1, and on that basis
`
`denies such allegations.
`
`2.
`
`Registrant, Cantine Mezzacorona S.C.A.,
`
`lacks
`
`sufficient knowledge or
`
`information to form a belief as to the truth of the allegations in paragraph 2, and on that basis
`
`denies such allegations.
`
`3.
`
`Registrant, Cantine Mezzacorona S.C.A.,
`
`lacks
`
`sufficient knowledge or
`
`information to form a belief as to the truth of the allegations in paragraph 3, and on that basis
`
`denies such allegations.
`
`4.
`
`Registrant, Cantine Mezzacorona S.C.A.,
`
`lacks
`
`sufficient knowledge or
`
`information to form a belief as to the truth of the allegations in paragraph 4, and on that basis
`
`denies such allegations.
`
`

`
`5.
`
`Registrant, Cantine Mezzacorona S.C.A., admits that Exhibits A, B and C purport
`
`to be copies of TARR printouts of Reg. Nos. 1,358,375, 1,359,598 and 2,328,360 but otherwise
`
`has no information sufficient to form a belief as to the truth of the allegations in paragraph 5,
`
`and, on that basis, denies such allegations.
`
`6.
`
`Admitted that the goods in Registrant's Registration No. 2,929,926 are described
`
`as "Italian wines and Italian sparking [sic] wines." Admitted that Respondent's Registration
`
`No. 2,929,926 was issued on March 8, 2005, with a claimed first use date of 1988.
`
`7.
`
`8.
`
`Denied.
`
`Paragraph 8 states a legal conclusion as to which no responsive pleading is
`
`required. To the extent that any response is required, Registrant, Cantine Mezzacorona S.C.A.,
`
`denies such allegations. Moreover, Registrant avers as follows:
`
`'
`
`The Coronas, Gran Coronas and Mezzacorona trademarks have coexisted in the
`
`United States marketplace, without confusion, for twenty years, despite Petitioner
`
`Torres’ attempt to enjoin use of the Mezzacorona trademark. The district court
`
`opinion in Torres v. Cantine Mezzacorona, S. C.A.R.L., 52 U.S.P.Q. 2d 1557
`
`(E.D.Va. 1999) is attached as Exhibit 1. The opinion of the United States Court
`
`of Appeals for the Fourth Circuit in Torres v. Cantine Mezzacorona, S.C.A.R.L.,
`
`108 Fed. Appx. 816 (4th Cir. 2004), available at 2004 WL 2126869, is attached
`
`as Exhibit 2.
`
`I
`
`The trademark MEZZACORONA was registered by Cantine Mezzacorona
`
`S.C.A.R.L. in Spain over the opposition of Miguel Torres S.A. The decision of
`
`the Supreme Court in Spain, along with a lower court decision and the decision of
`
`the Spanish Patent and Trademark Office referred to in the decision of the
`
`

`
`Supreme Court, are attached hereto, in both Spanish and with certified English
`
`translations, respectively, as Exhibits 3A, 3B and 3C.
`
`The trademark MEZZACORONA was registered by Cantine Mezzacorona
`
`S.C.A.R.L. in the United Kingdom over the opposition of Miguel Torres S.A.
`
`The decision of the Supreme Court of Judicature in the United Kingdom, along
`
`with a lower court decision and the decision of the United Kingdom Patent Office
`
`are attached hereto, respectively, as Exhibits 4A, 4B and 4C.
`
`9.
`
`Denied.
`
`10.
`
`Paragraph 10 states a legal conclusion as to which no responsive pleading is
`
`required. To the extent that any response is required, Registrant, Cantine Mezzacorona S.C.A.,
`
`denies such allegations.
`
`l 1.
`
`Admitted.
`
`12.
`
`Admitted. It is averred that the TTAB opinion is dated July 18, 1996.
`
`1 3.
`
`Admitted.
`
`14.
`
`Admitted that the Federal Circuit issued an opinion on December 17, 1997, which
`
`speaks for itself.
`
`15.
`
`Admitted that Application Serial No. 74/301,039 was held abandoned on July 18,
`
`1 996.
`
`16.
`
`Paragraph 16 states a legal conclusion as to which no responsive pleading is
`
`required. To the extent that any response is required, Registrant, Cantine Mezzacorona S.C.A.,
`
`denies such allegations.
`
`

`
`Wherefore Registrant, Cantine Mezzacorona S.C.A., prays that the cancellation petition
`
`be denied and that Registration No. 2,929,926 not be canceled.
`
`Dated: March 28, 2006
`
`Respectfully submitted,
`
`
`
`
`Barb a A. Murphy
`Maureen F. Browne
`
`Michael G. McManus
`
`Mark R. Leventhal
`
`ADDUCI, MASTRLANI & SCHAUMBERG, L.L.P.
`1200 Seventeenth Street, N.W., Fifth Floor
`
`Washington, DC 20036
`Telephone: (202) 467-6300
`Facsimile: (202)466-2006
`
`Counselfor Cantine Mezzacorona, S. C.A.
`
`MEZZ700206—2
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing ANSWER (PUBLIC) was served as
`indicated, to the parties listed below, this 28”‘ day of March 2006:
`
`Counsel for Miguel Torres, S.A.
`
`Cynthia Clarke Weber, Esq.
`Sughrue Mion, PLLC
`2100 Pennsylvania Avenue, N.W.
`Washington, D.C. 20037-3202
`(VIA HAND DELIVERY)
`
`
` I D CI, MAS'l‘RIA & SCHAUMBERG, L.L.P.
`
`
`
`1200 Seventeenth Street, N.W., Fifth Floor
`Washington, D.C. 20036
`
`MEZZ100006-2.doc
`
`

`
`
`
`EXHIBIT 1EXHIBIT 1
`
`

`
`Vwstlaw.
`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 1999 WL 1040107 (E.D.Va.), 52 U.S.P.Q.2d 1557
`(Cite as: 1999 WL 1040107 (E.D.Va.))
`
`Page 1
`
`United States District Court,
`
`E.D. Virginia.
`MIGUEL TORRES, S.A., Plaintiff,
`v.
`
`CANTINE MEZZACORONA, S.C.A.R.L.,
`and
`
`PRESTIGE WINE IMPORTS CORP., Defendants.
`No. 98-115-A.
`
`June 11, 1999.
`
`MEMORANDUM OPINION
`
`HILTON, J.
`
`*1 This matter comes before the Court on cross motions for
`
`summary judgment.
`
`Plaintiff Miguel Torres, S.A. ("Torres") is a Spanish wine
`maker owning vineyards in several
`locations,
`including
`Spain, Chile, and Sonoma Valley, California. Torres sells its
`Spanish wines in the United States by selling to a single
`importer, Patemo Imports Limited ("Patemo"). Patemo sells
`to wholesalers and distributors, who in turn sell to retailers
`and to restaurants. Retailers
`and restaurants
`sell
`to
`consumers.
`
`Torres has been selling CORONAS and GRAN CORONAS
`red wines in the United States continuously since the 1960s.
`
`Torres‘ trademark registrations for CORONAS (Reg. No.
`1,359,598) and GRAN CORONAS (Reg. No. 1,358,375)
`issued in 1985, and they are applied to Torres red wines
`from Spain. "Corona“ is a Spanish and Italian word meaning
`"crown." Torres
`sells wines under other
`trademarks,
`
`including SANGRE DE TORO, LAS TORRES, MAS
`BORRAS and MAGDALA.
`
`CORONAS sells at an average retail price from $7 to $9 per
`bottle. It is made from predominantly tempranillo grapes.
`GRAN CORONAS is made from a combination of
`
`primarily Cabernet sauvignon and some tempranillo grapes,
`and it sells at an average retail price from $12 to $15 per
`bottle. GRAN CORONAS MAS LA PLANA ("GRAN
`
`CORONAS Black Label") is Torres’ cabernet sauvignon,
`and it sells at over $20 per bottle at retail. The price for
`wines consumed in restaurants is roughly double the price
`
`for wines sold in retail stores.
`
`traditional,
`Torres has three general categories of wines:
`reserva
`and single vineyard (called
`"pago" wines).
`CORONAS is a traditional wine, GRAN CORONAS is a
`
`is a
`reserva wine, and GRAN CORONAS Black Label
`single estate wine made at the estate called Mas La Plana.
`Torres wines are among the largest selling Spanish wines in
`America.
`
`the CORONAS wine approximately 70% of the
`For
`domestic sales is to restaurants, with the remaining 30%
`sold to retailers. For
`the GRAN CORONAS wine,
`
`approximately 80% is sold to restaurants and 20% to
`retailers. For the GRAN CORONAS Black Label wine,
`
`approximately 90% is sold to restaurants and 10% to
`retailers.
`
`to date paid for advertisements in print
`Torres has not
`media. Torres promotes and advertises CORONAS and
`GRAN CORONAS wine through wine tastings and trade
`shows; by distributing literature, brochures and copies of
`reviews; and at the point of sale through the use of neck
`hangers, shelf talkers, and product information.
`
`Torres has experienced declining sales of their wines in the
`United States. In 1986 Torres sold 139,567 cases I__Fl1l_1 of
`wine in the United States. This fell to 57,945 cases in 1997
`
`(at a value of $1,881,933). Sales of CORONAS wine in
`cases and dollars went from 24,405 cases (at a value of
`
`$405,078) in 1987 to 6,628 cases (at a value of$175,085) in
`1997. GRAN CORONAS sales experienced a similar
`decline. In 1987 there were 5,532 cases (at a value of
`
`$219,067) of GRAN CORONAS sold, while in 1997 this
`figure had declined to 1,576 cases (at a value of $91,545). In
`1987 Torres sold 4,695 cases of GRAN CORONAS Black
`Label (at a value of $408,465), while in 1997 Torres sold
`only 1,398 cases (at a value of $178,623) of this wine.
`
`FN1. The dollar value of the cases sold by Torres
`
`in 1986 was not provided to the Court.
`
`*2 Defendant Cantine Mezzacorona, S.C.A.R.L. ("Cantine")
`
`is a cooperative located in the village of Mezzocorona in the
`Trentino region of Italy. Cantine produces wine from grapes
`
`© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`Not Reported in F.Supp.2d
`
`Not Reported in F.Supp.2d, 1999 WL 1040107 (E.D.Va.), 52 U.S.P.Q.2d 1557
`(Cite as: 1999 WL 1040107 (E.D.Va.))
`
`Page 2
`
`sales of their
`Cantine has experienced growth in its
`MEZZACORONA wines in the last decade.
`In 1988,
`
`Cantine sold 12,548 cases (at a value of $246,051) of
`MEZZACORONA wine, while in 1997 their sales grew to
`166,824 cases (at avalue of $5,246,687).
`'
`
`Cantine applied to register MEZZACORONA for "wines
`and sparkling wines" on July 31, 1992. The mark was
`refused registration by the U .S. Patent and Trademark
`Office ("PTO"). Cantine was able to persuade the PTO to
`withdraw the refusal and the MEZZACORONA mark was
`
`published for opposition on August 31, 1993.
`
`In accordance with the procedures of the PTO, Torres filed
`an opposition to the registration of MEZZACORONA based
`on its prior use and registration of CORONAS and GRAN
`CORONAS for wine. On July 18, 1996 the Trademark Trial
`and Appeal Board ("the Board") issued a decision sustaining
`Torres‘ opposition. Cantine's request for reconsideration was
`denied on January 16, 1997, and it timely filed an appeal to
`the Court of Appeals for the Federal Circuit.
`
`*3 The appeal was fully briefed and the parties presented
`oral argument on December 1, 1997. In a decision dated
`December 17, 1997, the Federal Circuit affirmed the Board's
`decision, saying:
`"We
`cannot
`
`find
`
`fault with the Board's
`
`factual
`
`produced by farmers from the Trentino and Alto Adige
`regions in Italy. With respect to MEZZACORONA wine
`sold in the United States, Cantine bottles the wine and sells
`it to Nosio, s.r.l. ("Nosio"), its export subsidiary. Nosio, in
`turn,
`then sells it
`to Defendant Prestige Wine Imports
`Corporation ("Prestige"), which imports Cantine's Italian
`wines into the United States. Prestige sells the wine to
`wholesalers and retailers, who in turn sell it to retailers and
`restaurants, who then sell it to consumers.
`
`Cantine has been selling wine in the United States under the
`MEZZACORONA [f_N_2_] label since 1987. "Mezza" is an
`Italian word meaning "half." Thus, MEZZACORONA
`translates to "half crown" in Italian.
`
`as
`stylized
`is
`LN; MEZZACORONA
`MEZZACORONA on the label of the bottle.
`
`When, in the course of this Memorandum Opinion
`
`the capitalized word MEZZACORONA is written,
`it is referring to the stylized version.
`
`Cantine
`
`sells white
`
`and
`
`red wine
`
`under
`
`the
`
`MEZZACORONA mark. The following types of grape are
`used to make the following Varietals which are sold under
`the MEZZACORONA mark: (1) pinot grigio; (2) merlot;
`
`(3) chardonnay; (4) cabemet sauvignon; (5) teroldegog and
`(6) pinot noir. All MEZZACORONA wines have varietal
`designations on the label and are made 100% from that
`varietal. Cantine also sells a sparkling wine under the
`MEZZACORONA mark which bears
`the
`trademark
`ROTARI.
`
`For the MEZZACORONA wine, between 62-65% of the
`domestic sales are to restaurants, with the remaining
`35-38% sold
`to
`retailers. A large
`percentage of
`MEZZACORONA restaurant sales are by the glass.
`
`determinations that the [MEZZACORONA] mark was
`
`similar in physical appearance, sound, and meaning to the
`marks
`registered to Torres, whether
`the marks are
`considered as applied for or registered, or as actually used
`We conclude, therefore, that the Board's decision to
`
`the opposition and deny Cantine's registration
`grant
`because
`its mark was
`confusingly similar
`to two
`
`previously-registered marks was correct as a matter of
`law."
`
`advertises
`and
`promotes
`Cantine
`Torres,
`Like
`MEZZACORONA wine through wine tastings and trade
`shows; by distributing literature, brochures, and copies of
`reviews; and at
`the point of sale through use of neck
`hangers, shelf talkers, and product
`information. Unlike
`Torres, Cantine has paid to place advertisements
`for
`MEZZACORONA wine in The Wine Spectator and The
`Wine Enthusiast.
`
`Torres and Cantine are engaged in trademark disputes
`involving Torres’ CORONAS and GRAN CORONAS
`marks versus Cantine's MEZZACORONA mark in various
`
`countries throughout the world. Because Cantine continues
`to use MEZZACORONA as a trademark to identify wines
`
`and sparkling wines in the United States, and because it is
`alleged that such use is likely to cause confusion, mistake or
`deception among the public as to the origin of the goods
`
`© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`\/thastlaw.
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 1999 WL 1040107 (E.D.Va.), 52 U.S.P.Q.2d 1557
`(Cite as: 1999 WL 1040107 (E.D.Va.))
`
`Page 3
`
`sold by Cantine, Torres filed suit on January 26, 1998
`alleging federal trademark infringement in violation of 15
`U.S.C.
`§ 1114; common law trademark infringement;
`federal unfair competition in violation of 15 U.S.C. § 1125;
`and common law unfair competition. Torres‘ prayer for
`relief
`includes
`injunctive
`relief,
`actual damages
`and
`attorneys’ fees.
`
`Torres then moved this Court for summary judgment in
`
`March, 1998 upon a theory of collateral estoppel. Their
`argument was that
`the decisions by the Board and the
`Federal Circuit had a determinative effect on the instant suit,
`
`compelling an award in their favor. This Court, on April 16,
`1998 denied Torres‘ motion. The Court found that because
`
`Prestige was not a party to the prior Board action, collateral
`estoppel could not be applied. The Court also found that
`because the standards for likelihood of confusion differ in
`
`registration proceedings and infringement actions, the Court
`could not apply the collateral estoppel doctrine because the
`proceedings conducted by the Board and the Federal Circuit
`were not identical to the instant action.
`
`Both Torres and Cantine now move for summary judgment.
`
`Summary judgment is appropriate when there is no genuine
`issue as to any material fact. See Fed, R. Civ. P. 561c1. Once
`a motion for summary judgment
`is properly made and
`supported, the opposing party has the burden of showing
`that a genuine dispute exists. See Matsushita Elec. Indus.
`Co. v. Zenith Radio C0r1g., 47,5 U.S. 574, 586-87 119861. A
`material
`fact
`in dispute appears when its existence or
`non-existence could lead a jury to different outcomes. See
`Anderson v. Liberg Lobby, Inc, 477 U.S. 242, 248 119861.
`A genuine issue exists when there is sufficient evidence on
`which a reasonable jury could return a verdict in favor of the
`nonmoving party. See id. Unsupported speculation is not
`enough to withstand a motion for summary judgment. See
`Ash v. United Parcel Serv., Inc., 800 F.2d 409, 411-12 14th
`Cir.19861. Summary judgment is appropriate when, after
`discovery, a party has failed to make a "showing sufficient
`to establish the existence of an element essential to that
`
`party's case, and on which that party will bear the burden of
`proof at trial." Cglotex Corp. v. Qatrett, 477 U.S. 317, 322
`119861. When a motion for summary judgment is made, the
`evidence presented must always be construed in the light
`
`most
`favorable to the nonmoving party. See Smith v.
`Virginia Commonwealth Univ., 84 F.3d 672, 675 14th
`§;ir.19961(en banc ).
`-
`
`*4 Federal trademark law is governed by the Lanham Act, a
`
`comprehensive trademark protection statute enacted in
`1946. Ted Curtis & Joel H. Stempler, So What Do We Name
`the Team? Trademark Infiingement,
`the Lanham Act gnd
`
`Sgorts Franchises, 19 Qolum.-VLA J.L. & Arts 23 119951.
`A plaintiff cannot prevail under a Section 32(1) of the
`Federal Lanham Act claim for
`trademark infringement
`
`without demonstrating that the mark used by the defendants
`is likely to cause confusion among consumers. See l_5
`L1.S.§§. § 1114111; see also I_.one Star fitggklzgysg Q flgiogng
`Inc. V. Algha 01: Virginia Ing.
`43 F,3d 922, 930 143-
`Cir.19951. Likelihood of confusion is also the test for claims
`for unfair competition brought under Section 43(a) of the
`Lanham Act. See 15 U.S.C. §
`l1251§1; see also §_c_qt_<_:_h
`
`'
`Ass'n v. Maestic DistTllin Co. 958 F.2d 594 597
`1_4t“““Cir.19921. The Lanham Act requires that a trademark
`owner demonstrate that the defendant's use of its accused
`mark is "likely to cause confusion, or to cause mistake, or to
`deceive."
`5 U.S.C. § 1114111. With respect to the common
`law claims
`for
`trademark
`infringement
`and unfair
`competition, Torres
`again must prove
`likelihood of
`confusion in order to prevailh See RFE Indus. Inc. v. SPM
`o
`.
`1
`F.
`6 4t—*'§§ir.1,cert. denied, 117 S,Qt.
`2512119971.
`
`The Fourth Circuit has found the following factors to be
`relevant to a determination of likelihood of confusion: (1)
`
`the strength or distinctiveness of the senior mark; (2) the
`similarity of the two marks; (3) the similarity of the goods
`or services that the marks identify; (4) the similarity of the
`
`facilities employed by the parties to transact their business;
`(5) the similarity of the advertising used by the parties; (6)
`the defendant's intent in adopting the same or a similar
`mark; and (7) actual confusion. See Sar Lee Cor . v.
`Kgiser-Roth Coi;Q., 81 F.3d 455, 463 14tLCir. 1, cert.
`denied, 117 S.Ct. 412-13 119961 (cifiing Pizzeria Uno Cgrg.
`v. Temple, 747 F.2d 1522, 1527 14L‘Cir.l9841). The Fourth
`Circuit has also found the following additional factors to be
`relevant in some cases: (8) the quality of the defendant's
`products;
`(9)
`the sophistication of consumers;
`(10)
`the
`
`© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`‘v'\@s1:1aw:
`
`Not Reported in F.Supp.2d
`
`Not Reported in F.Supp.2d, 1999 WL 1040107 (E.D.Va.), 52 U.S.P.Q.2d 1557
`(Cite as: 1999 WL 1040107 (E.D.Va.))
`
`Page 4
`
`proximity of the products as they are actually sold; and (1 1)
`the probability that the senior mark owner will bridge the
`gap by entering the defendant's market. See Shakespeare
`Co. v. Silstgr Corp. of Am., Inc., 110 F.3d 234, 241-42 (4
`Cir.l997 1, cert. denied, 118 S.
`t. 688 1998 , Perini C0_r_1)_.
`v. Perini Qonsin, Inc. 215 F.2d 121, 127 (4
`§§ir.1990).
`
`These factors are a guide and are not of equal relevance in
`every case. See Pizzeria Uno, 747 F.2d at 1527. These
`factors are not exhaustive and are used to focus the inquiry,
`which must be tailored to the factual circumstances of each
`
`110 F .§g1 at 242. While the
`case. See fihgkespearg
`likelihood of confusion is an “inherently factual" issue
`
`dependent on the unique facts and circumstances in each
`case, courts may resolve the issue of likelihood of confusion
`on a motion for summary judgment. See Lone Star, 43 F .;§d
`91.9131.
`
`1. Strength or Distinctiveness of the Senior Mark
`*5 The first and paramount factor in determining whether a
`likelihood of
`confusion
`exists
`is
`the
`strength
`or
`
`distinctiveness of the senior mark. See Pizzeria Uno 747
`
`F.2d at 1527. In addressing the strength of a mark, courts
`
`have categorized marks into four classes in increasing order
`of strength: 1) generic; 2) descriptive; 3) suggestive; and 4)
`fanciful or arbitrary. See id.
`
`Fanciful marks are made—up words which serve as the
`
`product's brand name. Llibfil See Sara Lee, 81 F.3d at 464.
`Arbitrary marks are common words used in a manner which
`do not suggest or describe any "quality,
`ingredient, or
`characteristic of the goods
`they serve ...".
`[F_N41 Id.
`"Suggestive marks connote, without describing,
`some
`quality, ingredient, or characteristic of the product." Llfi]
`Id. While these marks conjure up positive images, courts
`consider these marks suggestive because "a person without
`actual knowledge would have difficulty in ascertaining the
`nature of the products that
`the marks represent." Id.
`Descriptive marks are those which identify some fimction,
`use, characteristic, size or intended purpose of the product.
`[F_N_§l See id. Generic terms are "the common name of a
`product or service itself ...". LE_l\fi] Id.
`
`FN3. Examples include Clorox, Kodak, Polaroid,
`and Exxon.
`
`FN4. Examples include Tea Rose flour, Camel
`cigarettes, and Apple computers.
`
`FN5. Examples include Coppertone, Orange Crush,
`and Playboy.
`
`FN6. Examples include After Tan post-tanning
`lotion, 5 Minute glue, King Size men's clothing and
`the Yellow Pages telephone directory.
`
`FN7. Examples include Convenient Store retail
`stores, Dry Ice solid carbon dioxide, and Light
`Beer ale—type beverages.
`‘
`
`"The protection accorded trademarks is directly related to
`the mark‘s distinctiveness." Id. Fanciful or arbitrary and
`
`suggestive marks are inherently distinctive and receive the
`greatest protection against infringement. See id. If a mark is
`merely descriptive, then proof of secondary meaning in the
`marketplace is required before it is entitled for protection.
`See Perini 915 F.2d at 125. If a term is generic, it is not
`
`capable of trademark protection. See id at 124.
`
`A descriptive mark acquires secondary meaning, and thus is
`afforded protection, if "in the minds of the public,
`the
`primary significance of a product feature or term is to
`identify the source of the product rather than the product
`itself.“ Sara Lee, 81 F.3d at 464 (citing Dayton Progress
`Cor . v. Lane Punch Cor . 917 F.2d 836 839-40 4‘-
`Cir.1990 1). In other words, a mark has acquired secondary
`meaning when "the consuming public's understanding [of]
`the mark, when used in context, refers, not to what the
`descriptive word ordinarily describes, but to the particular
`business that the mark is meant to identify." Pgrini, 915
`F.2d at 125. When a court is considering whether a mark is
`
`suggestive or descriptive, courts often give due regard to the
`PTO's determination on this matter. See Lone Stgr, 43 F.3d
`
`at 934. If the PTO requires proof of secondary meaning
`before it grants registration, this is primafacie evidence that
`the PTO considers
`the mark descriptive rather
`than
`suggestive. Eizzeria Ung
`747 F.2d at 1529 (quotiq
`Coga-Colg Co. v. Overland, Inc. 692 F.2d 1250, 1254 19'
`§;ir.l982)). If the PTO does not require proof of secondary
`meaning before registration, the burden then shifts to the
`defendant to prove that the mark is descriptive rather than
`
`© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`\/‘vbstiawc
`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 1999 WL 1040107 (E.D.Va.), 52 U.S.P.Q.2d 1557
`(Cite as: 1999 WL 1040107 (E.D.Va.))
`
`Page 5
`
`
`suggestive. Id at 1534.
`
`language." Id.
`
`*6 The plaintiff in a trademark infringement suit has the
`burden of
`showing secondary meaning "(1)
`in the
`defendant's trade area and (2) prior to the time when the
`
`defendant entered the market." Perini 915 F.2d at 125-26
`
`(citing N. Hess’ Sons Inc. v. Hess A are] Inc. 738 F.2d
`1412 1413 g4‘——c1r.19s4)(per curiam )). Courts should
`consider the following factors when determining whether a
`trademark has acquired secondary meaning: "(l) advertising
`expenditures; (2) consumer studies linking the mark to a
`source; (3) sales success; (4) unsolicited media coverage of
`the product; (5) attempts to plagiarize the mark; and (6) the
`length and exclusivity of the mark's use." Id., at 125 (citing
`Thomgson Med. Co. v. Pfizer Inc., 753 F.2d 208, 216 12d
`Cir.l9851). "If a trade name has not acquired secondary
`meaning, the purchaser will not make an association with a
`particular producer and thus will not be misled by an
`identical or similar mark." Id. (citing Thompson, 753 F.2d at
`216).
`
`A court's determination that a mark is suggestive does not
`
`necessarily result in a finding that the mark is "strong" for
`purposes of the likelihood of confiasion test under the
`Lanham Act. See Petra Stopping Ctrs. v. Jamgs River
`Petroleum, Inc., 130 F.3d 88, 93 (4L"Cir.l997) ("Even a
`mark held to be suggestive may be found weak under the
`first likelihood of confiision factor."). The strength of the
`
`mark ultimately depends on whether the mark has acquired
`secondary meaning. Id. (citing Estee Lauder Inc. v. The
`(Zap, lng, 108 F.3d 1503, 1509-11 12d Cir.l997)). So under
`the strength or descriptiveness of the mark component of the
`likelihood of confusion test, the Court is first to consider the
`
`proper categorization of the mark, and then the extent of the
`secondary meaning the mark has acquired in the eyes of
`prospective consumers. Id.
`
`In cases where a trademark is a foreign word, the "doctrine
`
`of foreign equivalents" is used to determine whether the
`mark is descriptive or suggestive. Pizzeria Qno, 747 F.2d at
`fi3_l_. According to this doctrine, the foreign word(s) in the
`mark
`are
`translated
`into English
`and
`tested
`for
`descriptiveness or genericness "by seeing whether that
`foreign word would be descriptive [of the product] to that
`segment of the purchasing public which is familiar with that
`
`the
`Turning to the question of the marks‘ classification,
`Court finds that both CORONAS and GRAN CORONAS
`
`are suggestive marks. First, because the PTO never required
`Torres to prove secondary meaning before it granted
`registration of the marks, the presumption favors a finding
`that the marks are suggestive.
`
`Second, under the doctrine of foreign equivalents, the word
`"corona" is translated into English and defined as "crown."
`"Crown" in no way describes a function, use, characteristic,
`size or intended purpose of the product, but rather conjures
`up a positive image of the product with which it
`is
`associated.
`Persons without
`actual
`knowledge
`of
`CORONAS and GRAN CORONAS would be hard—pressed
`
`to quantify the products as Spanish wines. Combining this
`observation with the presumption that
`the marks are
`suggestive compels a finding that the marks are suggestive.
`
`the Court must now
`*7 Notwithstanding this finding,
`consider whether the marks are "strong" or "weak" for
`
`purposes of the likelihood of confusion test under the
`Lanham Act. To determine this, the Court must consider
`
`whether the marks have acquired secondary meaning using
`the six factors set forth in Perini. As stated above, the Court
`
`is only to consider evidence of secondary meaning from the
`
`time prior to Cantine's entry into the market. See Perini 915
`F.2d at 125-26. LE8} Cantine entered Torres’ trade area in
`1987.
`
`FN§. There is no dispute that Torres and Cantine
`share the same trade area, so analysis of this prong
`of the Perini test is unnecessary.
`
`First, it must be noted that Torres readily admits that it does
`
`not spend money for paid advertising in wine magazines,
`like Cantine does for
`their wines. However, as stated
`
`previously, Torres does advertise by distributing literature,
`brochures and copies of reviews, use of neck hangers, shelf
`talkers and other point—of—sale information, wine tastings,
`trade shows and the like.
`
`Next, regarding consumer studies linking the mark to a
`source, the Court has not been presented evidence which
`
`© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`Westlaw.
`
`Not Reported in F.Supp.2d
`Not Reported in F.Supp.2d, 1999 WL 1040107 (E.D.Va.), 52 U.S.P.Q.2d 1557
`(Cite as: 1999 WL 1040107 (E.D.Va.))
`
`Page 6
`
`to draw any conclusions on this matter.
`would allow it
`While both Torres and Cantine have submitted evidence
`
`pertaining to whether or not there is actual confusion in the
`marketplace between MEZZACORONA and CORONAS
`and GRAN CORONAS, this evidence cannot be used to
`answer the question of whether consumers link a mark to a
`particular source. The actual confusion inquiry focuses on
`whether
`consumers
`confuse
`products
`from different
`companies as originating from the same company, while the
`present inquiry focuses on whether consumers recognize
`that the product with the mark comes from a specific source.
`It is conceivable consumers could conclude that products
`from different companies come from the same company,
`while at the same time not recognizing that the mark is
`linked to a specific source. Hence, evidence of actual
`confusion is not helpful to answering the present inquiry.
`
`Further, as Perini instructs, the Court is only to consider
`evidence of secondary meaning in the defendant's trade area
`and prior to the time when the defendant entered the market.
`915 F.2d at 125-26. The actual confusion inquiry focuses on
`the effect of confusion once the alleged infringer has entered
`the marketplace, while consumer studies linking the mark to
`a source necessarily must relate to the time prior to the entry
`of the alleged infringer.
`
`Concerning the length and exclusivity of the marks use, the
`Court finds that CORONAS and GRAN CORONAS have
`
`not acquired secondary meaning. The word "Corona" and its
`English equivalent "Crown" appear in a number of PTO
`registrations for wines and other alcohol,
`including:
`(1)
`Crown Reserve; (2) Crown Claret; (3) Corona D'Oro; (4)
`Laurel Crown; (5) Crown Chablis; (6) Alexander's Crown;
`(7) Ryan Crown; and (8) Meister Korona. In fact, "Corona"
`is the trademark of the best-selling imported beer in the
`United States. [EN_2] This lack of exclusivity of the marks,
`combined with the fact that Torres has only had their marks
`registered for 14 years, demonstrates that the marks lack
`strength. The Court concludes that under the six Perini
`factors
`for
`determining
`secondary meaning, Torres’
`suggestive marks are best characterized as "weak."
`
`FN9. Torres has
`
`a world-wide non-assertion
`
`agreement with Cervesa Mondelo, the producer of
`Corona.
`
`II. Similarity of the Two Marks
`*8 The overall test under the similarity of the marks factor
`is whether there exists a "similarity in appearance and sound
`which would result in confirsion." Pizzeria Una 747 F.2d at
`
`_]_i'fl. Whether a mark infringes does not depend upon how
`closely a "fragment" of a given use duplicates the first
`trademark(s), "but on whether the use in its entirety creates
`a likelihood of confusion ." A h
`s r—Bus h
`n . v. L
`L
`Wings, Inc., 962 F.2d 316, 319 (4t—Cir.19921. In order to
`make this determination, a court should examine the
`
`allegedly infringing use in the context in which it is seen by
`the ordinary consumer. Id.
`
`The analysis of whether marks are similar in a trademark
`infringement action involves a broad and flexible analysis of
`how the marks in question are actually used on products. In
`Anheuser-Busch,
`the plaintiff sued the maker of a T—shirt
`which used a red, white and blue beer can to refer to Myrtle
`Beach, South Carolina. Even though the defendant
`intentionally copied the non-verbal portions of the plaintiffs
`T-shirt design,
`the Court
`found that
`the "conspicuous
`difference" between the T-shirts, including the fact that the
`
`plaintiffs design indicated the producer and the geographic
`origin of the product, supported a finding that the T-shirts
`
`were not similar. 962 F.2d at 319-20' see also Buitoni Foods
`
`Cor . v. Gio. Buton
`
`C. S.
`
`.A. 680 F.2d 290 292 2d
`
`along with the
`signature
`a
`(presence of
`§§ir.l982)
`defendants’ mark indicated that the degree of similarity of
`the marks was "insubstantial").
`
`All of Torres’ wine bottles have at least two other marks on
`them in addition to the CORONAS and GRAN CORONAS
`
`marks—-the Torres name which identifies the producer of the
`wine and a crowns and towers design. The bottles also
`indicate that the wines are a product of Spain. In addition,
`Torres‘ black label wine also includes the additional term
`
`the biggest
`"MAS LA PLANA," which is now in fact
`concept on the entire label for that particular Torres product.
`
`the MEZZACORONA wine labels include
`In contrast,
`additional information relating to