After receiving a notice of allowance for the mark VINA DEL PASO, applicant Tri Vin Imports filed a Statement of Use that included an amendment of the mark to VINO DEL PASO. Examining Attorney Sani Khouri rejected the amendment on the ground that it constituted a material alteration of the mark as originally filed, and he refused registration on the ground that the mark depicted on the specimen of use was not the mark that applicant applied to register. The Board affirmed. In re Tri Vin Imports, Inc., Serial No. 86257453 (March 14, 2017) [not precedential].
The Trademark Rules allow an applicant to amend its mark "only if: ... The proposed amendment does not materially alter the mark." Rule 2.72(b)(2). The general test is whether the altered mark would have to be republished in order to fairly present the mark for purposes of opposition. Also, the addition of any element that would require a new search generally will constitute a material alteration.
Applicant stated that VINA DEL PASO means "vineyard of steps." VINO is the Spanish word for wine. The examining attorney maintained that the change in meaning from VINA to VINO alters the commercial impression of the mark. A new search of the modified mark would have to be conducted, including a search for the English translation of the foreign words.
Although the two marks are highly similar in appearance, they are different in sound and meaning. The word "vina" does not appear in Cassell's Spanish-English dictionary, but viña, defined as "vineyard," does appear. In the word "viña," the letter "ñ" has the "ny" sound of "canyon." Thus to the extent that VINA is perceived as the Spanish word for "vineyard," its pronunciation would be notably different from that of "vino."
As to meaning, "vineyard of steps" suggests an agricultural cite characterized by steps, whereas 'wine of steps' is an incongruous expression."
Because the two marks at issue have different literal meanings and noticeably different pronunciations, the Board found that they do not create the impression of being essentially the same mark. A potential opposer would have to perform a different analysis for each of the two marks, and a proper availability search for the amended mark would have differed from a search for the original mark.
The Board therefore concluded that amendment to the proposed mark would entail a material alteration of the original mark.
Because the proposed amendment was rejected, and because the specimen of use depicted the proposed mark, not the original, the Board affirmed the refusal to register due to applicant's failure to submit an acceptable specimen of use.