In re Franciscan Vineyards

The opposer lost in this trademark appeal at the CAFC.



Domaines Pinnacle, a Canadian corporation and pro- ducer of alcoholic ice apple wines, filed an intent-to-use application at the PTO, seeking to register a DOMAINE PINNACLE mark for “apple juices and apple-based non- alcoholic beverages.” Opinion at *1. Franciscan opposed the registration, alleging that Domaines Pinnacle’s mark would likely cause confusion with Franciscan’s previously registered and used marks PINNACLES for “wine” and PINNACLES RANCHES for “wines.” Id.
The Board evaluated the following DuPont factors: (1) the similarity or dissimilarity of the marks in their entireties (“the first DuPont factor”); (2) the similarity or dissimilarity and nature of the goods or services as de- scribed in an application or registration or in connection with which a prior mark is in use (“the second DuPont factor”); (3) the similarity or dissimilarity of established, likely-to-continue trade channels (“the third DuPont factor”); (4) the conditions under which and the buyers to whom sales are made (“the fourth DuPont factor”); (5) the fame of the prior mark (“the fifth DuPont factor”); (6) the number and nature of similar marks in use on similar goods (“the sixth DuPont factor”); and (7) the market interface between the applicant and the owner of a prior mark (“the tenth DuPont factor”). Id. at *3–8; see also In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (listing factors relevant to likelihood of confusion determination).