> PUBLIC VERSION 4
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`TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK 01* 1‘ “,1;
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`_,
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`23‘
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`“E
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`U 9
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`3
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`MIGUEL TORRES, S.A.,
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`P°‘i“°“e’=
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`v.
`CANTINE MEZZACORONA S.C.A.R.L.,
`Respondent.
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`
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`Cancellation No.: 92044775:C
`I?‘ U’ 3 "- ‘:3
`27;. :2
`__ 2-:
`1 : "gzfi
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`RESPONDENT'S STATEMENT OF MATERIAL FACTS IN
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`OPPOSITION TO PETITIONER'S MOTION FOR SUMMARY JUDGMENT
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`Respondent Cantine Mezzacorona, S.C.A. ("Cantine Mezzacorona"), hereby submits the
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`following Statement of Material Facts in Opposition to Petitioner's Motion for Summary
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`Judgment:
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`1.
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`All Cantine Mezzacorona wines presently sold under the MEZZACORONA
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`brand bear a label with the term "Mezzacorona" written in the following manner:
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`MEZZACORONA
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`(Declaration of Thomas R. Pape, attached as Exhibit 1 to Respondent Cantine Mezzacorona's
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`Response in Opposition to Petitioner's Motion for Summary Judgment, hereinafter "Exh. 1,“ 1]
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`18.)
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`2.
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`There is no plan to return to the MEZZACORONA mark that was the subject of
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`the 1996 opposition proceeding.
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`(1d.)
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`3.
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`The goods described in Cantine Mezzacorona's prior registration are "wines and
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`sparkling wines." (Exh. l to the Declaration of Cynthia Clarke Weber in Support of Motion for
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`k_______._,__
`IllllllIllllllllllllllllllllllllllllllllllIlllllll
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`Summary Judgment, hereinafter "Weber Dec1.")
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`05-1 1-2006
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`u.s. Patent 3. TMOfcITM Mail Rcpt D1. #30
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`

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`> PUBLIC VERSION <’
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`4.
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`The goods described in the subject registration are "Italian wines and Italian
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`spark[l]ing wines." (Exh. 5 to Weber Decl.)
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`5.
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`The country of origin of wine is commercially significant.
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`(Declaration of
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`Michael Franz, attached as Exhibit 2 to Respondent Cantine Mezzacorona's Response in
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`Opposition to Petitioner's Motion for Summary Judgment, hereinafter "Exh. 2," at 10-11.)
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`6.
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`7.
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`Wine is a product of place. (Id.)
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`The particular aromatic and flavor characteristics of wine are imparted largely by
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`the conditions of the specific locality from where they originate. Such conditions include local
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`soils, topography, ambient temperatures, altitude, and patterns of rainfall and wind. (Id.)
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`8.
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`Wines from virtually every country are labeled with appellations that designate
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`the area from which they originate.
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`(Id. at ll)
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`9.
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`Retail stores separate their wines by country of origin or appellation. Spanish
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`Torres wines are not shelved with Italian Mezzacorona wines in retail (off-premise consumption)
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`establishments. (Exh. 1 1] 20; Exh. 2 at 12.)
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`10.
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`Restaurant
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`(on-premise
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`consumption)
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`establishments
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`to which Cantine
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`Mezzacorona wine is distributed present their wines by country of origin. (Exh. 1 1[ 21; Exh. 2 at
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`14.)
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`11.
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`There is no confusion possible between the Torres products and the Cantine
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`Mezzacorona products in view of the way retail facilities display the products.
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`(Miguel Torres,
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`S.A. v. Cantine Mezzacorona, S. C.A.R.L., 1999 WL 1040107, at *ll (E.D. Va. 1999), attached as
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`Exhibit 3 to Respondent Cantine Mezzacorona's Response in Opposition to Petitioner's Motion
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`for Summary Judgment, hereinafter "Exh. 3.")
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`

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`> PUBLIC VERSION <’
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`12.
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`In certain ethnic-themed restaurants, available wines frequently are limited to the
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`country of the offered cuisine. (Exh. l 1] 21.)
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`13.
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`Torres is unlikely to "bridge the gap“ between its products and Cantine
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`Mezzacorona's products by producing Italian wine. (Exh. 3 at *14.)
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`14.
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`Torres has no plan to introduce a white wine to be sold under either the
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`CORONAS or GRAN CORONAS marks.
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`The overwhelming majority of the sales of
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`MEZZACORONA wines are white wines. (Exh. 3 at *14.)
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`15.
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`16.
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`The Board issued its original decision on July 18, 1996.1 (Exh. 6 to Weber Decl.)
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`In the years subsequent to 1996, there have been significant changes in the wine
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`market as a whole. (Exh. 2 at 7-8.)
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`17.
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`Two hundred and seventy (270) million cases of wine were sold in the United
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`States in 2004, compared with 201 million cases in 1996. (Exh. 1. 1] 4.)
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`18.
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`In the years subsequent to 1996, sales of Italian wines have increased significantly.
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`(Id at 1] 7.)
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`19.
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`In the years subsequent to 1996, sales of Pinot Grigio wines have increased
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`significantly.
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`(Id. 1] 6.)
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`20.
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`Italian Pinot Grigio is now the largest imported white wine varietal selling in the
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`United States. (Id)
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`21.
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`22.
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`Pinot Grigio is Cantine Mezzacorona's highest selling wine. (Id.)
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`In calendar year 2004, 22.6 million cases of Italian wine were sold in the U.S., an
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`increase from 14.1 million cases in 1996. (Id 1] 7.)
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`
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`1 The Declaration of Cynthia Clarke Weber in Support of Motion for Summary Judgment
`erroneously states that this decision is "dated September 14, 1995." (Weber Decl. at 1] 7.)
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`

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`> PUBLIC VERSION <’
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`23.
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`Only 3.9 million cases of Spanish wine were sold in the United States in 2004.
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`(Id-)
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`24. Mezzacorona’s sales have increased from 170,000 cases in 1996 to 545,000 cases
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`in 2004.
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`(Id. at 1] 9.)
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`25.
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`Sales of Mezzacorona Pinot Grigio increased 15% from 2004 to 2005.
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`(Id. at 1[ 6.)
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`26.
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`Torres’ sales of wine have declined from 70,000 cases in 1996 to 50,000 cases in
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`2004.
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`(Id. at1]10.)
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`27.
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`In 1997,
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`the most recent year for which information is available to Cantine
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`Mezzacorona, just seventeen percent (17%) of Torres’ total wine sales were of brands labeled as
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`CORONAS or GRAN CORONAS.
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`(Exh. 3 at * 1 (noting that, of Torres’ total 1997 sales of
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`57,945 cases, 6,628 cases were CORONAS, 1,576 cases were GRAN CORONAS, and 1,398
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`cases were GRAN CORONAS Black Labe12).)
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`28.
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`Torres has removed the CORONAS brand from its flagship wine, Mas la Plana
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`Cabernet Sauvignon (also referred to as CORONAS Black Label). (Exh. 2 at 22.)
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`29.
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`In 1997 (the most recent year for which information is available to Cantine
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`Mezzacorona) combined sales of Torres CORONAS and GRAN CORONAS wines were 9,602
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`cases.
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`In the same year Cantine Mezzacorona sold 166,824 cases of wine under the
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`MEZZACORONA mark. (Exh. 3 at *1, 2.)
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`30.
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`31.
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`Sales of Mezzacorona wines far exceed those of Torres wines. (Exh. 1 at 11 8.)
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`Sales of Spanish wines, taken as a whole, increased from 2,079,000 cases in 1996
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`to 3,899,000 in 2004. (Id. at1[10.)
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`
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`2 That 17% of Torres’ total sales are of CORONAS and GRAN CORONAS brand wines was
`determined in the following manner: ([6,628 + 1,576 + 1,398] / 57,945 = .166).
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`

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`> PUBLIC VERSION 4
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`32.
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`Sales of Torres wines have declined at the same time that sales of Spanish wines,
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`as a whole, have increased. (Id.)
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`33.
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`Since 1997, there has been a decline in the prominence of the CORONAS and
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`GRAN CORONAS wines within the contexts both of global wine and Spanish wine.
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`(Exh. 2 at
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`21.)
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`34.
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`In 2004, Mezzacorona was ranked 87"‘ overall in wine sales in the United States.
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`Torres was not ranked at all within the top 100 wines. (Exh. 1 at 1[ 11.)
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`35.
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`In the course of the past twenty years, wine drinking has expanded, and American
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`wine consumers have become more sophisticated, (Exh. 2 at 7-8.)
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`36.
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`The number of appellation-designated or varietally-designated wines has
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`increased dramatically in recent years.
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`(Id. at 8.) At the current time, there are approximately
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`55,000 distinct wines for sale in the United States.
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`(Id. at 9.)
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`37.
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`At the current time, there are numerous alcoholic beverages being sold under
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`names that include the term "Corona," "Coronas" and "Crown." (Id. at 23.)
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`38.
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`Confusion between MEZZACORONA and CORONAS or GRAN CORONAS is
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`now notably even less likely than in 1996 due to the greater precision with which the trade must
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`designate an ever larger, more diverse, and more particular universe of wines in the American
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`market.
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`(Id. at 9.)
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`
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`39.
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`The Mezzacorona mark has been in use in the United States consistently since
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`1987. (Exh. 1 atfll 17.)
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`40.
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`Torres has sold CORONAS and GRAN CORONAS red wines in the United
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`States continuously since the 1960's. (Exh. 3 at *1.)
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`

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`> PUBLIC VERSION <'
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`41.
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`Despite concurrent sales in the United States market since 1987, there has never
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`been an instance of actual confusion between any Cantine Mezzacorona wine and any Torres
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`wine. (Exh. 1 at 11 19; see also Exh. 3 at * 12 for the period to 1999.)
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`42.
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`As of 1999 (the most recent year for which information is available to Cantine
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`Mezzacorona) Torres had never paid for advertisements in print media. (Exh. 3 at *1.)
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`43.
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`In the period from 1997 to 2006, Cantine Mezzacorona spent over [
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`to advertise wines sold under the Mezzacorona brand. (Exh.1 at W 13-15.)
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`44.
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`In the period from 1997 to 2006, Cantine Mezzacorona spent over [
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`on print advertisement of wines sold under the Mezzacorona brand.
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`(Id. at 11 13.)
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`]
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`]
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`45.
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`In the period from 1997 to 2006, Cantine Mezzacorona spent over [
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`] on
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`radio advertisement of wines sold under the Mezzacorona brand.
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`(Id. at 1] 15.)
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`

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`> PUBLIC VERSION <’
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`46.
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`In the period from 1997 to 2006, Cantine Mezzacorona spent over [
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`]
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`on television advertisement of wines sold under the Mezzacorona brand.
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`(Id. at 1] 14.)
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`Dated: May 1 1, 2006
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`Respectfully submitted,
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`\.-I
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`To
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`. S haum
`
`Barbara A. Murphy
`Maureen F. Browne
`
`Michael G. McManus
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`Mark R. Leventhal
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`ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P.
`1200 Seventeenth Street, N.W., Fifth Floor
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`Washington, DC 20036
`Telephone: (202) 467-6300
`Facsimile:
`(202)466-2006
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`Counselfor Respondent
`Cantine Mezzacorona S. C.A.R.L.
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`CERTIFICATE OF DELIVERY
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`I hereby certify that this correspondence is being hand delivered in an envelope addressed
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`Commissioner for Trademarks
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`2900 Crystal Drive
`South Tower Building, Ninth Floor
`Arlington, Virginia 22202-3614
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` on May 1 1, 2006.
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`MEZZ700906-2-Public
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing RESPONDENT'S STATEMENT OF
`MATERIAL FACTS IN OPPOSITION T0 PETITIONER'S MOTION FOR SUMMARY
`JUDGMENT (PUBLIC) was served as indicated, to the parties listed below, this 11”‘ day of
`May 2006:
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`Counsel for Miguel Torres, S.A.
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`Cynthia Clarke Weber, Esq.
`SUGHRUE MION, PLLC
`2100 Pennsylvania Avenue, N.W.
`Washington, D.C. 20037-3202
`
`(VIA HAND DELIVERY)
`
`
`
`Washington, D.C. 20036
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`MEZZ 1 00006-2
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`

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`Public Version
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`MIGUEL TORRES, S.A.,
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`V.
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`P°""°“‘°"’
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`CANTINE MEZZACORONA S.C.A.R.L.,
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`Respondent.
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`
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`Cancellation No.: 92044773
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`(Reg. No. 2929926)
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`D‘2lil‘.'l-l3{l\'lllH3lVclSH ZdlllXVH‘llllll
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`—-1
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`3
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`C’
`cn
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`RESPONDENT CANTINE MEZZACORONA'S RESPONSE IN
`OPPOSITION TO PETITIONER'S MOTION FOR SUMMARY J GM T
`-9
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`Respondent Cantine Mezzacorona, S.C.A. ("Cantine Mezzacorona"), by counsel, hereby
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`respectfully submits its Response in Opposition to Petitioner's Motion for Summary Judgment‘
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`filed by Miguel Torres, S.A. ("Torres"), on April 6, 2006.
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`I.
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`INTRODUCTION
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`Petitioner moves for summary judgment on the basis of the putative res judicata effect of
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`a 1996 Trademark Trial and Appeal Board ("Board") proceeding concerning a prior Cantine
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`Mezzacorona mark. Such motion is ill-founded because the prior opposition proceeding did not
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`concern, nor could it have concerned,
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`the transactional facts here at
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`issue.
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`The instant
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`proceeding concerns a different
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`trademark, associated with different goods,
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`in a changed
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`marketplace from that at issue in the prior proceeding.
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`The prior Board proceeding concerned Cantine Mezzacorona's mark that comprised the
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`word MEZZACORONA stylized such that the central "C" was offset and capitalized. There, the
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`1 Filed herewith and in support hereof are Respondent's Statement of Material Facts in
`Opposition to Petitioner's Motion for Summary Judgment, the Declaration of Thomas R. Pape (attached
`hereto as Exhibit 1), the Declaration of Michael Franz (attached hereto as Exhibit 2) and the District
`Court Opinion in Miguel Torres, S.A. v. Cantine Mezzacorona, S.C.A.R.L., No. 98-115-A, 1999 WL
`104107 (E.D.Va. June 1 l, 1999) (attached hereto as Exhibit 3 for the Board's convenience).
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`

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`Public Version
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`Board relied heavily upon this feature to find visual similarity between the Cantine Mezzacorona
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`mark and the Torres CORONAS and GRAN CORONAS marks. Cantine Mezzacorona's current
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`trademark no longer has this feature.
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`The prior Board proceeding further concerned the goods that would bear such marks.
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`Because both the Torres registrations and the Cantine Mezzacorona application identified "wine"
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`as the goods in commerce, without limitation, the Board held that it "must presume" that the
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`wines are legally identical. Now, in the subject registration, the Cantine Mezzacorona mark is
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`limited to only "Italian" wines. Testimony in the form of a declaration, attached hereto, and
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`factual findings from a District Court trademark infringement action (initiated by Torres in 1998
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`immediately upon conclusion of the earlier opposition proceedings) indicate that this is a
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`meaningful limitation. Even were this not the case, Torres’ motion would remain unfounded.
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`Trademark rights are not static. Eligibility for registration must be determined on the
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`basis of the facts and evidence of record that exist at the time registration is sought. Indeed, one
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`of the DuP0nt2 factors is the "length of time during and conditions under which there has been
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`concurrent use without evidence of actual confusion." The Board could not have, and did not,
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`consider concurrent use of the marks for the ten—year period subsequent to 1996.
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`In the
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`intervening time, Cantine Mezzacorona's sales and concomitant recognition in the marketplace
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`have grown dramatically. On the other hand, Torres’ sales of wines bearing the CORONAS and
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`GRAN CORONAS trademarks have remained anemic. Torres seeks to convince the Board that
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`Cantine Mezzacorona's registration will cause damage to Torres. This is absurd; Torres is one of
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`many players in the Spanish niche wine market with sales far inferior to those of Cantine
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`2 Application ofE.I. DuPont DeNem0urs & C0., 476 F.2d 1357 (C.C.P.A. 1973).
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`¥___l_
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`

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`Public Version
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`Mezzacorona, a major player in the highly significant Italian wine market.3 Not unexpectedly,
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`there has never been an instance of actual confusion in almost twenty years of coexistence in the
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`marketplace, nor is such confusion likely.
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`The cancellation that Torres urges is contrary to policy. The Lanham Act intends that
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`registration and use be coincident. Cantine Mezzacorona has continuously used the term
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`"Mezzacorona" as a trademark since 1987. Registration serves the legitimate goal of recognizing
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`the reality of the marketplace as it exists in 2006.
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`II.
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`LEGAL STANDARD
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`The party moving for summary judgment has the initial burden of demonstrating the
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`absence of any genuine issue of material fact and that it is entitled to judgment as a matter of
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`law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986) and Sweats Fashions, Inc., v. Pannill
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`Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The evidence must be viewed in
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`a light most favorable to the non-movant, and all justifiable inferences are to be drawn in the
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`non-movant‘s favor. See Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d
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`2027 (Fed. Cir. 1993). Petitioner Torres has not met either part of its burden.
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`3 The Board recently provided its views with respect to several Torres trademarks:
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`There is also little direct evidence of public recognition of [Torres']
`marks besides its awards. The mere fact that a wine has been favorably
`reviewed or otherwise discussed in a wine industry publication is not
`particularly persuasive of a mark's public recognition inasmuch as the
`evidence suggests that these awards are not uncommon.
`
`Miguel Torres v. Bodegas Muga, Opp. No. 91112586, 2005 WL 1463864, at *6 (TTAB June 10, 2005).
`In affirming the Board decision, the CAFC said:
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`[T]he Board properly found that Torres‘ evidence fell far short of the
`showing usually required to prove that a mark has acquired fame and the
`broad protection that accompanies it.
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`Aliguel Torres v. Bodegas Muga, No. 05-1520, 2006 WL 925279, at *7 (Fed. Cir. April 10, 2006).
`unlikely that Torres’ CORONAS or GRAN CORONAS trademarks enjoy any greater fame.
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`It is
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`

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`III.
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`ARGUMENT AND AUTHORITIES
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`Public Version
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`A.
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`THE DOCTRINE OF CLAIM
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`PRECLUSION REQUIRES IDENTITY OF FACTS
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`Torres argues it is entitled to summary judgment on the basis of res judicata. The Federal
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`Circuit has held that "a second suit will be barred by claim preclusion if:
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`(1) there is identity of
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`parties (or their privies);
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`(2) there has been an earlier final judgment on the merits of a claim;
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`and (3) the second claim is based on the same set of transactional facts as the first." Jet, Inc. v.
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`Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000). Here, Cantine Mezzacorona does
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`not dispute the first or second factors.
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`It is plain, however, that the cancellation Torres now
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`seeks is not based on the same transactional facts as the 1996 opposition proceeding, nor has
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`Torres made any effort in its moving papers to demonstrate that those facts are the same.4
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`The Restatement (Second) Judgments provides some guidance concerning what amounts
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`to a "set of transactional facts." See Polaroid Corp. v. C & E Vision Services, Inc., 52 USPQ2d
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`1954, 1957, 1999 WL 1186222, at *3 (TTAB 1999) (noting that the Federal Circuit looks to the
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`Restatement in determining whether a claim is barred under the doctrine of claim preclusion).
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`"What factual grouping constitutes a ‘transaction,’ and what groupings constitute a ‘series,’ are to
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`be determined pragmatically, giving weight to such considerations as whether the facts are
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`related in time, space, origin, or motivation, whether they form a convenient trial unit, and
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`whether their treatment as a unit conforms to the parties‘ expectations or business understanding
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`or usage." Restatement (Second) of Judgments § 24(2) (1982).
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`"In general, the expression
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`connotes a natural grouping or common nucleus of operative facts." Id. § 24 cmt. b. "Material
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`4 In fact, to deny summary judgment the Board need go no further than to read the 1999 district
`court opinion in Torres’ infringement suit against Cantine Mezzacorona.
`(Exh. 3.) There, on a fully-
`developed factual record made subsequent to the Board's earlier decision in the opposition proceeding,
`decidedly new transactional facts had already emerged.
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`

`
`Public Version
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`operative facts occurring after the decision of an action with respect to the same subject matter
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`may in themselves, or taken in conjunction with the antecedent facts, comprise a transaction
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`which may be made the basis of a second action not precluded by the first." Id. § 24 cmt. f.
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`Courts have defined "transaction" in terms of a "core of operative facts," the "same
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`operative facts," or the "same nucleus of operative facts," and "based on the same, or nearly the
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`same, factual allegations." Jet, 223 F.3d at 1363; see also United States v. Haytian Rep., 154
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`U.S. 118, 125, 14 S.Ct. 992, 38 L.Ed. 930 (1894) ("One of the tests laid down for the purpose of
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`determining whether or not the causes of action should have been joined in one suit is whether
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`the evidence necessary to prove one cause of action would establish the other."); Sanders
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`Confectionary Pr0ds., Inc. v. Heller Fin., Inc., 973 F.2d 474, 484 (6th Cir. 1992) ("Identity of
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`causes of action means an identity of facts creating the right of action").
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`The Jet Court further held that,
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`in deciding whether to apply the doctrine of claim
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`preclusion, it "must determine whether, for purposes of claim preclusion, a claim for trademark
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`infringement is based on the same set of factual allegations as a petition to cancel the defendant's
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`federally registered mark." Jet, 223 F.3d at 1363. Similarly, here, the Board must determine
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`whether, for purposes of claim preclusion, the opposition to Cantine Mezzacorona's prior mark
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`(Exh. 1 to Declaration of Cynthia Clarke Weber in Support of Motion for Summary Judgment
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`("Weber Decl.")) was based on the same set of factual allegations as the instant petition to cancel
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`Cantine Mezzacorona's registered trademark. Such determination must consider the material
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`facts "occurring after the decision of an action."
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`Torres offers little assistance to the Board in evaluating the sameness of the transactional
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`facts of the prior proceeding.
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`Its moving brief includes just twelve lines of argument relevant to
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`the transactional facts and lacks even a single citation to authority. (Memorandum in Support of
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`Petitioner's Motion for Summary Judgment ("Torres Brief‘) at 5-6.) Torres’ discussion of this
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`

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`Public Version
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`topic is wholly outcome determined and conclusory in nature. Such summary treatment of the
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`sole element in dispute does not satisfy Torres’ burden of showing "that the moving party is
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`entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c).
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`In view of (1) the differences between the visual appearance of the registered mark,
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`(2) the restriction of the description of the goods with which the mark will be used and (3) the
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`changed market conditions, it is apparent that the prior proceeding was not "based on the same
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`set of factual allegations."
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`B.
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`THE SUBJECT MARK IS VISUALLY
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`DISTINCT FROM THE PRIOR MARK
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`The Board determined that there was a degree of similarity between Torres’ marks5 and
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`Cantine Mezzacorona's earlier, stylized mark.
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`(See Exh. 1 to Weber Decl.) This determination
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`was predicated largely upon the central "C" of the prior Cantine Mezzacorona mark being made
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`larger and set lower than the other letters such that, in the Board's view, the CORONA portion of
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`the mark was made distinct:
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`Comparing the marks in terms of visual appearance, we note that
`applicant has chosen to depict its mark MEZZACORONA in a
`manner such that the CORONA portion of its mark is readily
`identifiable as a distinct unit. To use applicant's own words, "the
`central C [in applicant's mark is] substantially larger than these
`other
`letters"
`and is
`set
`"approximately one-third 1ower."
`(Applicant's brief page 1). While we agree with applicant that this
`presentation gives applicant's mark a "distinctive character"
`(applicant's brief page 2), by the same token, it also causes the
`mark to be viewed as consisting of two components, namely
`MEZZA CORONA. When viewed as such,
`there are obvious
`similarities between applicant's mark and opposer's marks
`CORONAS and GRAN CORONAS.
`
`5 For reasons not apparent to Cantine Mezzacorona, Torres includes reference to Registration
`No. 2,328,360, which it describes as "not relied upon in the prior Opposition," in its section entitled "The
`Material Facts Are Not in Dispute." (Torres Brief at 2.) Clearly, its registration of March 14, 2000, can
`have no bearing on a motion for summary judgment based on an argument of res judicata from 1996. If
`anything, it detracts from it.
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`(Board Opinion (Exh. 6 to Weber Decl.) at 5-6.) The Federal Circuit, in affirming the Board,
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`specifically noted the Board's reliance upon "the capitalized and offset 'C"‘ portion of the Cantine
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`Mezzacorona mark.
`
`Indeed, the Federal Circuit's affirrnance was based,
`
`in part, upon that
`
`feature:
`
`in considering Cantine's application, noted that the
`The Board,
`distinctive visual features of its mark, especially the capitalized
`and offset ”C, ” serve to emphasize the "CORONA" portion of the
`word "MEZZACORONA." The Board did not expressly designate
`that portion of the mark as its dominant feature. Nonetheless, it is
`evident
`that
`the Board did in fact consider and compare the
`dominant elements of each mark and that
`this analysis was
`properly conducted.
`
`(Cantine Mezzacorona v. Miguel Torres, S.A., No. 97-1339, 1997 WL 786911, at *2 (Fed. Cir.
`
`Dec. 17, 1997) (emphasis added) (Exh. 7 to Weber Decl.).)
`
`When, however, the mark is not viewed as consisting of two components, the similarities
`
`between the marks are absent. The instant registration (attached as Exh. 5 to Weber Decl.)
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`concerns a word mark, without any stylization, and there is no indication that the central "C" will
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`be rendered larger than the other letters. All Cantine Mezzacorona wines presently sold in the
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`United States bear labels with the word "Mezzacorona" depicted in the following manner:
`
`MEZZACOROM
`
`(See Exh. 1 at 1] 18.) There is no plan to return to the prior MEZZACORONA mark. Id.
`
`In the past, the Board has held that a finding of likelihood of confusion does not claim
`
`preclude subsequent proceedings concerning marks having some degree of similarity. Polaroid
`
`Corp. v. C & E Vision Services, Inc., 52 USPQ2d 1954, 1957, 1999 WL 1186222, at *3 (TTAB
`
`1999) (a prior Board decision holding that POLAREX in typed form is confusingly similar to
`
`certain Polaroid trademarks does not control a subsequent proceeding concerning POLAREX
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`and design); Metromedia Steakhouses, Inc. v. Pondco II, Inc., 28 USPQ 2d 1205, 1208, 1993
`
`WL 409142 (TTAB 1993) (Board decision finding likelihood of confusion between prior mark
`
`and word mark does not control second proceeding concerning same words found in design
`
`mark).
`
`Moreover, Bacardi & Co. Ltd. v. Ron Castillo, S.A., 178 U.S.P.Q. 242, 244 (TTAB
`
`1973), upon which Torres relies to support its notion that the parties are barred by res judicata
`
`from relitigating the issue of likelihood of confusion, does not support Torres‘ position.
`
`In
`
`Bacardi, the applicant, in a prior proceeding, relied on its mark "RON CASTILLO" in an attempt
`
`to cancel opposer's mark "CASTILLO." The applicant's petition to cancel was dismissed on the
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`merits because the applicant failed to take testimony or to offer any other evidence in its behalf,
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`which would establish its assertion of damage. The portion of the Board opinion cited by Torres
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`is not apposite here because it dealt with issues that the Board found were abandoned or "could
`
`have been offered" during the cancellation proceeding. Id. at 244-45.
`
`What is much more relevant about that case is that the applicant in Bacardi desired to
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`register the mark "CASTILLO DE GOES." The opposer argued that the addition of the words
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`"DE GOES" did not substantially alter applicant's prior mark, and that
`
`the applicant was
`
`therefore barred by res judicata from pleading that its mark was not confusingly similar to that of
`
`the opposer. This argument was rejected.
`
`The Board held that the applicant was not barred by res judicata from arguing that its
`
`mark is not confusingly similar:
`
`the mark for which registration is sought,
`In the instant case,
`"CASTILLO DE GOES," quite clearly differs
`from "RON
`CASTILLO," the mark relied upon by the applicant in the prior
`cancellation. Under these circumstances,
`the issues in the two
`proceedings being different, the doctrine of res judicata would be
`inapplicable even if a determination of likelihood of confusion had
`been reached in the previous proceeding.
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`178 U.S.P.Q. at 244. (emphasis added).
`
`Here, too, the issues in the two proceedings are different. It is plain that the Board's prior
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`decision was based largely upon the perceived visual similarity between the marks arising from
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`the capitalized and offset "C." Such feature is absent from the current registration and from
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`Cantine Mezzacorona's goods actually sold in commerce. Accordingly, the subject inquiry
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`concerns facts different from those at issue in the opposition proceeding some ten years ago.
`
`C.
`
`The Goods Described in the Mark at Issue
`
`Differ from Those in the Prior Board Proceeding
`
`In sustaining Torres‘ opposition to the earlier Cantine Mezzacorona trademark, the Board
`
`premised its conclusion that the goods were "legally identical" on the identical descriptions of
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`goods in both the Torres registrations and the application there at issue. Specifically, the Board
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`indicated that such conclusion was compelled because the Torres registrations and the prior
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`Cantine Mezzacorona mark "contain no limitations whatsoever on the type of wine":
`
`In this case, the goods of the parties are legally identical. Both the
`registrations and the application list wine. Nevertheless, applicant
`disputes "the suggestion by opposer that wines are wines for all
`purposes in an opposition proceeding." (Applicant's brief at page
`6). Applicant contends that "the entire thrust of applicant's mark as
`sought to be registered is an association with the Trentino region of
`Italy" (applicant's brief pages 6 and 7) and that Italian wines [like
`applicant's] tend to be grouped together and displayed separately
`from other wines including Spanish wines [such as opposer's]."
`(Applicant's brief page 8).
`
`In Board proceedings, "the
`Applicant's dispute is not well taken.
`question of likelihood of confusion must be determined based on
`an analysis of the mark as applied to the goods and/or services
`recited in applicant's application vis-a-vis
`the goods and/or
`services recited in opposer's registration, rather than what
`the
`evidence shows the goods and/or services to be." Canadian
`Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
`1 U.S.P.Q.
`1813, 1818 (Fed. Cir. 1987).
`Thus, because opposer's two
`registrations and applicant's application contain no limitations
`whatsoever on the type of wine, we must presume that the wines of
`both parties are legally identical. Moreover, we must presume that
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`in the same channels of trade and that
`they travel
`purchased by the same end users.
`
`they are
`
`(Exh. 6 to Weber Decl. at 4-5 (emphasis added).) The Federal Circuit also noted the absence of
`
`any limitation upon the type of goods:
`
`The Board's analyses of the goods and relevant channels of trade
`were simple and straightforward.
`Torres's registrations for its
`"CORONAS" and "GRAN CORONAS" marks and Cantine's
`application for
`its
`"MEZZACORONA" mark were worded
`generally,
`to cover "wines" and "wines and sparkling wines"
`respectively, with no restrictions.
`
`(Exh. 7 to Weber Decl. at 1 (emphasis added).) Having presumed that the wines of both parties
`
`were legally identical, the Board next presumed, a priori, that such goods travel in the same
`
`channels of trade and that they are purchased by the same end users.
`
`All of the foregoing resulted from the description of the goods in the Cantine
`
`Mezzacorona trademark application as "wines," without limitation. Both the Board and the
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`Federal Circuit indicated, by the language of their decisions, that a different result may obtain if
`
`the scope of goods for which registration was sought was narrowed.
`
`In the instant case, the
`
`scope of goods is restricted. The Cantine Mezzacorona registration is limited to "Italian wines
`
`and Italian spark[l]ing wines."
`
`(See Exh. 5 to Weber Decl.) Moreover, the CORONAS and
`
`GRAND CORONAS trademarks are applied only to Torres wines from Spain. Such distinction
`
`is meaningful to wine consumers. (Exh. 2 at 10-11.) This is the sort of restriction that the Board
`
`and the Federal Circuit indicated could effect a different result.
`
`In the prior proceeding, Torres
`
`successfully argued that Cantine Mezzacorona's
`
`application must be evaluated in terms of "wines," rather than "Italian wines." Having prevailed
`
`on this point, Torres now argues that the Board decision, which specifically declined to consider
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`whether there is a likelihood of confusion with Italian wines, controls as to the question of
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`whether there is a likelihood of confusion with Italian wines.
`
`Such advocacy approaches
`
`sophistry.
`
`In its motion, Petitioner anticipates that Cantine Mezzacorona will argue that describing
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`its mark for use in association with "Italian" wines rather than wines generically creates a
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`different set of transactional facts.
`
`(Torres Brief at 5.) Torres contends that such "argument is
`
`futile because Petitioner's registrations for CORONAS and GRAN CORONAS cover 'wine.'
`
`Under settled registration case law, that identification is broad enough to cover Italian wines."
`
`(Id.) Torres seems to be arguing that it is "settled" case law that Mezzacorona could never
`
`successfully restrict
`
`its registration to distinguish its mark sufficiently from the Torres
`
`registrations. Torres fails to cite this "settled" case law because the proposition is actually
`
`contrary to law. “Applicants may file new applications after adverse court decisions." Toro Co.
`
`V. Hardigg Indus, Inc., 549 F.2d 785, 789 (C.C.P.A. 1977).6
`
`In Taro, the applicant (Hardigg) first sought to register the term TORO—PAD for "plastic
`
`pads for absorbing and otherwise dissipating shocks," but was unsuccessful. Subsequently,
`
`Hardigg sought to register the same term for “plastic cushioning pads for bumpers and packaging
`
`applications." The Court of Customs and Patent Appeals held that the descriptions of the goods
`
`in the two applications was "substantially equally unrestri