June 24, 2016

A Mark Should be Considered a Whole, and not Dissected

By Bryan K. Wheelock, Principal

In Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, [2016-1103] the Federal Circuit affirmed the TTAB’s finding that Oakville’s registered mark MAYA and Georgallis’s applied-for mark MAYARI are sufficiently dissimilar.

The Federla Circuit expalined that the likelihood of confusion analysis considers all DuPont factors for which there is record evidence but may focus on dispositive factors, such as similarity of the marks and relatedness of the goods.

Oakville complained that the Board overlooked record evidence of the marks’ similarities in appearance, pronunciation, meaning, and overall commercial impression.  Oakville argued that MAYA dominated both marks, and that the suffix -RI in MAYARI is of minor import as a distinguishing element, particularly with the registered mark MAYA entirely subsumed within the leading portion of MAYARI, which could cause confusion.

Georgallis responds that the Board correctly declined to dissect MAYARI into MAYA and RI, an element with no meaning, and instead found that consumers would perceive MAYARI as a unitary whole and a coined term.  According to Georgallis, the Board properly considered the marks in their entireties and found that MAYA is familiar to U.S. consumers as a reference to the Mayan culture and as a popular female given name, whereas MAYARI is unfamiliar to U.S. consumers.

The Federal Circuit concluded that substantial evidence supports the Board’s finding that the marks were sufficiently dissimilar as to appearance, sound, meaning, and commercial impression. The Federal Circuit said that in determining similarity or dissimilarity, the marks must be compared in their entireties.  The Federal Circuit said that Board properly found that there is insufficient evidence that consumers would perceive MAYARI as MAYA- and -RI, agree with the Board that the letters RI, alone, have no relevant meaning, and provide no reason for a customer to view the mark logically as MAYA plus RI, rather than as a single unitary expression.  The Federal Circuit said that there no reason to break the term into MAYA-RI than MAY-ARI or MA-YARI.

The Federal Circuit said that a single DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks.  The Federal Circuit affirmed the decision of the Board dismissing Oakville’s opposition.