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Combining the names of your children to create new marks can avoid confusion in the wine industry

Winemakers often name their wines after family members.  But what if the name of one of your children is already registered by another winemaker?  If you have more than one child, consider combining it with the other child’s name to create a new mark.  In addition to appeasing both children, it may reduce the likelihood that your mark will be confused with the registered mark.

In Oakville Hills Cellar, Inc., dba Dalla Valle Vineyards v. Georgallis Holdings, LLC. (Fed. Cir. June 24, 2016), the Federal Circuit considered the appeal of Oakville’s challenge of the registration of MAYARI by Georgallis based on its current registration of the mark MAYA for wine.  Although both marks at issue were word marks not limited to any particular style, the two marks are shown below as they have been used by the parties.

Maya mayari

Despite starting with the same four letters, the Federal Circuit rejected Oakville’s assertion that MAYARI is confusingly similar to MAYA because it would be dissected by consumers as MAYA + RI.  Although originating as a portmanteau of the names of the owner’s daughters (Maya and Arianna), the Federal Circuit agreed with the Board that the word MAYARI—appears as a unitary mark and would be perceived by US customers as a “coinage without meaning.”

This is not the first time that Oakville has failed to prevail on a challenge relating to the mark MAYA.  In 2013, the Trademark Trial and Appeal Board (TTAB) of the USPTO dismissed Oakville’s opposition for the registration of TAMAYA for wine.  See Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards v. Vina Casa Tamaya S.A., Opposition No. 91189443 (April 15, 2013).

Oakville Hills Cellar v. Georgallis Holdings

 

Posted on 06/26/2016 by Deakin T. Lauer