Federal Circuit Affirms Registration of MAYARI over Opposition from MAYA Trademark Holder

cafc-federal-circuit-statue-335b copyOakville Hills Cellar, Inc. v. Georgallis Holdings, LLC (Fed. Cir. June 24, 2016) (Before Lourie, Moore, and Chen, J.) (Opinion for the court, Lourie, J.)

Oakville Hills Cellar, Inc. (“Oakville”), doing business as Dalla Valle Vineyards, appealed from the decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) dismissing its opposition to a trademark application filed by Georgallis Holdings, LLC (“Georgallis”) to register a MAYARI mark for use on wine. Oakville had previously registered the mark MAYA, also for wine.  Because there was substantial evidence to support the finding of the TTAB that there would be no likelihood of confusion, the Federal Circuit affirmed a registration of the mark MAYARI for wine products, affirming the TTAB’s decision and dismissing Oakville’s opposition.

The TTAB allowed the MAYARI registration, finding that there was no likelihood of confusion.  Applying the familiar DuPont factors [1] to analyze whether there would be any likelihood of confusion, the TTAB ruled that the second, third and fourth factors weighed in favor of a finding of likely confusion, but that the first factor favored a finding of no confusion, with the other factors being neutral. Ultimately, the TTAB sided with MAYA because: (1) the marks were not identical, (2) there was no evidence that the two names share similar pronunciation, and (3) because the marks appear to have different meanings.

On appeal to the Federal Circuit, the Court rejected Oakville’s argument that the marks were too similar to allow for registration, based on its conclusion that consumers would see MAYARI as a dissimilar unitary mark, rather than as two distinct components (MAYA and RI) one of which would be identical to Oakville’s mark.  The Court also affirmed there was no evidence before the TTAB that the marks would be pronounced the same way.

Oakville further argued that the marks were identical in meaning, because both related to the names of the winemaker’s daughters and to goddesses.  However, the Federal Circuit held that consumers would be unfamiliar with names of obscure goddesses.  To the extent consumers might recognize the name “Maya” as a common name for girls, “Mayari” is not a common name and would likely be viewed by consumers as having no meaning.  The decision below was affirmed.


[1] The DuPont factors are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (2) the similarity or dissimilarity of the goods as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of trade channels; (4) the conditions under which and buyers to whom sales are made; (5) the fame of the prior mark; (6) similar marks in use on similar goods; (7) the absence of actual confusion; (8) the right to exclude others from use; (9) the extent of potential confusion; and (10) other probative facts, which in this case related to federal labelling requirements applicable to wine.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

No comments yet.