Docket No. 2016-1103
LOURIE, MOORE, CHEN
June 24, 2016
Brief Summary: Board decision of no likelihood of confusion of wine-related marks MAYA and MAYARI affirmed.
Summary: Oakville appealed PTO Board dismissal of its opposition to Georgallis’ application to register the mark MAYARI in standard characters for use on its wine (Int. Class (IC) 33). Oakville argued it would be confused with its previously registered and used mark MAYA in typed form, also for use on wine and in IC 33. The Board evaluated the ten DuPont factors (CCPA 1973) and found that the 2nd (similarity or dissimilarity of the goods), 3rd (similarity or dissimilarity of trade channels) and 4th factors (conditions under which and buyers to whom sales are made) favored finding a likelihood of confusion but that the 1st (similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression) “favored a finding of no likelihood of confusion” and the remaining factors neutral. It found MAYA and MAYARI to be “visually similar only in part” (sharing the first four letters) but “no reason to perceive any separation, visual or otherwise, between the MAYA- and –RI portions” (“[t]he letter RI, alone, have no relevant meaning, providing no reason for a customer to view the mark logically as MAYA plus RI, rather than as a single unitary expression”). It also found “no evidence…that [the marks] would be pronounced alike” and that customers would perceive “MAYA as a femal personal name or the name of pre-Columbian civilization” and “MAYARI as a coinage without meaning”. It also found “the marks create significantly different commercial impressions” and “are sufficiently different that…confusion is not likely.” The FC panel reviewed the Board decision without deference and its factual findings for substantial evidence (In re Pacer Tech, FC 2003) and the likelihood of confusion using the DuPont factors. The FC panel agreed with the Board’s decision, finding the marks to be “sufficiently dissimilar as to appearance, sound, meaning, and commercial impression” (e.g., “Oakville failed to demonstrate to the Board why the dissection would be ‘MAYA-RI,’ not ‘MAY-ARI’ or ‘MA-YARI….substantial evidence supports the Board’s finding that MAYA is a familiar word, whereas MAYARO has no recognized meaning to U.S. consumers.”) It also noted that “a single DuPont factor may be dispositive…especially when that single factor is the dissimilarity of the marks” (Odom’s Tenn., FC 2010). The Board decision was therefore affirmed.