Pan American Grain Mfg. Co. Inc.

This Opinion is Not a
Precedent of the TTAB
Mailed: June 25, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Pan American Grain Manufacturing Company Inc.
_____
Serial No. 98003349
Serial No. 98003380
(Consolidated)
_____
Samuel F. Pamias of Hoglund & Pamias, PSC for Pan American Grain
Manufacturing Company Inc.
Martha Santomartino, Trademark Examining Attorney, Law Office 112,
Matthew Cuccias, Managing Attorney.
_____
Before Lykos, Larkin, and Brock,
Administrative Trademark Judges.
Opinion by Larkin, Administrative Trademark Judge:
Pan American Grain Manufacturing Company Inc. (“Applicant”) seeks
registration of the following two proposed marks on the Principal Register for “Retail
store services featuring wine; Online retail store services featuring wine” in
International Class 35: (1) the composite word-and-design mark shown below

Serial Nos. 98003349 and 98003380 (Consolidated)
- 2 -
1
and (2) the standard-character mark TODO VINO.2
The Trademark Examining Attorney has refused registration of Applicant’s
proposed standard-character mark shown in the ’380 Application on the ground that
TODO VINO is “merely descriptive” of a feature, attribute, or characteristic of the
services within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), and has refused registration of Applicant’s composite mark shown in the
’349 Application under Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), for
1 Application Serial No. 98003349 (the “’349 Application”) was filed on May 18, 2023 under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed first use
and first use in commerce at least as early as March 31, 2023. Applicant described its mark
as follows: “The mark consists of the wording ‘TODO VINO’, where the wording ‘TODO’ is on
top of the wording ‘VINO’ in gray stylized letters. In the wording ‘TODO’, the letter ‘T’ is in
the stylized form of a corkscrew and first ‘O’ has a stylized design of a glass inside with a
heart outlined in red. In the wording ‘VINO’, the letter ‘I’ is in the stylized form of a torch
and the letter ‘O’ has various stylized lines inside and the shape of a glass with various drops
in red and yellow. To the right lower side of the word ‘VINO’ is the wording ‘BY PAWS’ in
gray stylized letters. The color white represents background, outlining, shading and/or
transparent areas and is not part of the mark.” The colors gray, red, and yellow are claimed
as features of the mark. Applicant stated in the ’349 Application that “[t]he English
translation of ‘TODO VINO’ in the mark is ‘ALL WINE’.”
2 Application Serial No. 98003380 (the “’380 Application”) was also filed on May 18, 2023
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed
first use and first use in commerce at least as early as March 31, 2023. Applicant stated in
the ’380 Application that “[t]he English translation of ‘TODO VINO’ in the mark is ‘ALL
WINE’.”

Serial Nos. 98003349 and 98003380 (Consolidated)
- 3 -
failure to comply with a requirement to disclaim the merely descriptive phrase TODO
VINO.
When the Examining Attorney made the refusals final, Applicant appealed in both
cases and requested reconsideration, which requests were denied. After it filed its
two appeal briefs, Applicant moved to consolidate the two appeals, 13 TTABVUE
(’349 Application), and the Board granted Applicant’s motion. 14 TTABVUE (’380
Application). The consolidated appeals are fully briefed.3 We affirm both refusals to
register.
I. Prosecution Histories and Records on Appeal4
The applications were assigned to the same Examining Attorney and were
examined in parallel. We summarize their respective prosecution histories below
because they provide useful background to our disposition of the appeals.
The ’380 Application
Applicant filed the ’380 Application to register the proposed TODO VINO
standard-character mark based on the specimen of use shown below, which Applicant
described as “a picture of the Applicant’s store”:5
3 Citations in this opinion to the briefs and other materials in the appeal dockets refer to
TTABVUE, the Board’s online docketing system. The number preceding TTABVUE
corresponds to the docket entry number, and any numbers following TTABVUE refer to the
page(s) of the docket entry where the cited materials appear. In both appeals, Applicant’s
appeal brief appears at 12 TTABVUE, and its reply brief appears at 18 TTABVUE, and the
Examining Attorney’s brief appears at 15 TTABVUE.
4 Citations in this opinion to the application records are to pages in the downloadable .pdf
version of the Trademark Status & Document Retrieval (“TSDR”) database of the United
States Patent and Trademark Office (“USPTO”).
5 May 18, 2023 Application at 2.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 4 -
6
The Examining Attorney refused registration of Applicant’s proposed word mark
on the ground that it was merely descriptive of the services,7 and suggested
amendment of the application to seek registration on the Supplemental Register,
with a disclaimer of VINO.8 The Examining Attorney also required a translation of
the words “todo vino,” suggesting a translation as “all wine.”9
The Examining Attorney made of record pages from the COLLINS DICTIONARY
translating the Spanish-language words “todo” and “vino” into English as “all” and
“wine,” respectively,10 pages from Applicant’s website at panamericanwines.com
captioned “All Wine” and “Todo Vino,” pertinent portions of which we display below:
6 Id. at 7.
7 February 20, 2024 Office Action at 2-3.
8 Id. at 3.
9 Id. at 3-4.
10 Id. at 5-13.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 5 -
11
12
and a dictionary definition of the word “all.”13
11 Id. at 14.
12 Id. at 16.
13 Id. at 18-29 (MERRIAM-WEBSTER DICTIONARY).

Serial Nos. 98003349 and 98003380 (Consolidated)
- 6 -
Applicant responded to the Office Action by entering a translation of “todo vino”
as “all wine,”14 and arguing against the mere descriptiveness refusal.15 Applicant
made of record pages from the MERRIAM-WEBSTER DICTIONARY showing no entry for
the words “all wine” and discussing definitions of, and synonyms for, the word
“wine,16 and a photograph captioned “OTHER PRODUCTS SOLD” that Applicant
claimed showed that it “sells other goods such as rum, vodka, tequila, whiskey, among
others.”17
The Examining Attorney then issued an Office Action accepting Applicant’s
translation statement,18 making final the mere descriptiveness refusal to register,19
and withdrawing the option of amending the application to seek registration on the
Supplemental Register based on an advisory that the proposed mark appeared to be
generic.20 The Examining Attorney made of record USPTO electronic records
regarding third-party registrations “containing marks with disclaimers of the
wording ‘ALL-’ combined with another descriptive or generic term for the relative
14 May 20, 2024 Response to Office Action at 3.
15 Id. at 8-14.
16 Id. at 15-29.
17 Id. at 14, 31.
18 July 1, 2024 Final Office Action at 3.
19 Id. at 3-7.
20 Id. at 7. “[A]dvisory statements are not refusals subject to appeal,” In re Sheet Pile, LLC,
No. 97010763, 2024 WL 1175785, at *6 (TTAB 2024) (quoting In re Nat’l Ass’n of Veterinary
Technicians in Am., Inc., No. 87171093, 2019 WL 3246967, at *2 n.11 (TTAB 2019)), and
“genericness is not at issue in this appeal.” Id. (quoting Nat’l Ass’n of Veterinary Technicians,
2019 WL 3246967, at *2 n.11).

Serial Nos. 98003349 and 98003380 (Consolidated)
- 7 -
identified goods or services . . . .;”21 third-party websites that she claimed show that
“when grouping all of the wines together, [third-party sellers] will name the group,
section or selection ‘All Wines’ or ‘All Wine’;”22 pages from Instagram;23 an article on
the website at viajesyvinos.com discussing “TODO VINO, the new home that Pan
American Wine & Spirits has been [sic] created to enhance its wine offering and
provide a new multipurpose oasis for wine lovers;”24 a dictionary definition of “all;”25
a dictionary definition of “vino;”26 a dictionary translation of “todo;”27 pages from
census.gov discussing the frequency with which Spanish is spoken in the United
States;28 and a Wikipedia entry captioned “Spanish language in the United States.”29
Applicant appealed and simultaneously requested reconsideration. In its Request
for Reconsideration, Applicant argued against the mere descriptiveness refusal,30 and
made of record USPTO electronic records regarding third-party registrations of what
Applicant called “similar marks that have been allowed for registration,” including
marks containing “all” or “todo,”31 and third-party webpages that Applicant claimed
21 July 1, 2024 Final Office Action at 6, 9-56.
22 Id. at 5, 57-115, 184-234.
23 Id. at 116-17.
24 Id. at 118-23.
25 Id. at 124-27 (THE AMERICAN HERITAGE DICTIONARY).
26 Id. at 128-34 (MERRIAM-WEBSTER DICTIONARY).
27 Id. at 135-48 (COLLINS DICTIONARY).
28 Id. at 149-62.
29 Id. at 163-83.
30 October 1, 2024 Request for Reconsideration at 78-83.
31 Id. at 10-51, 53-77, 81.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 8 -
showed that “[t]he phrase TODO VINO is not a common or natural translation to
describe the entirety of wine offerings in retail stores.”32
The Examining Attorney denied Applicant’s Request for Reconsideration,33 and
made of record pages from Applicant’s website;34 pages from Instagram;35 pages from
amazon.com displaying a Spanish-language book entitled “Todo Vino;”36 pages from
the website at ortain.com captioned “Vino, fraude, y ciencia forense,” which contain a
Spanish-language discussion that begins with the words “Todo vino habla de su
tierra,” and pages captioned “Wine, fraud, and forensic science,” which contain an
English-language discussion that begins with the words “Every wine speaks of its
land;”37 USPTO electronic records regarding third-party registrations of marks
containing the word ALL that issued based on a showing of acquired distinctiveness
under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), or marks containing the
word TODO and another Spanish word and a translation statement regarding the
meaning of the words;38 pages from the websites at translate.com and
dictionary.cambridge.org translating “todo” from Spanish into English as “all” and
32 Id. at 52, 80.
33 May 25, 2025 Denial of Request for Reconsideration at 2-7.
34 Id. at 8-10.
35 Id. at 11-12.
36 Id. at 13-14.
37 Id. at 19-26.
38 Id. at 27-64.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 9 -
“vino” from Spanish into English as “wine;”39 and pages from the websites at
spanishdict.com and translate.google.com translating “todo vino” as “all wine.”40
The appeal was resumed, 5 TTABVUE, but Applicant then requested remand of
the application to the Examining Attorney to “reevaluate its trademark application
in light of the precedential decision made by this Board in In re Taverna Izakaya LLC,
[No. 88612441,] 2021 WL 5411210 [(TTAB 2021)]” and to “include additional evidence
in support of its arguments in favor of registration, in connection with the Taverna
Costera case.” 6 TTABVUE 3.41 The “additional evidence” included a dictionary entry
defining “vino” as “wine,” and discussing its etymology, id. at 7 (THE AMERICAN
HERITAGE DICTIONARY); USPTO electronic records regarding third-party
registrations of, or applications to register, marks containing the word VINO for retail
store services featuring wine, or other goods and services, including bar and
restaurant services and wine, id. at 8-280; pages from the CAMBRIDGE DICTIONARY
Spanish-language dictionary regarding the Spanish word “todo,” id. at 281-300; pages
from deepl.com translating various Spanish-language phrases containing the words
“todo” and “vino” into English and various English-language phrases containing the
words “all” or “everything” and “wine” into Spanish, id. at 301-18; pages from Google
Translate translating the words “todo vino” in various phrases as “all came” or “all of
39 Id. at 65-80.
40 Id. at 81-85.
41 Applicant frequently refers to the Taverna Izakaya case as the “Taverna Coserna” case.
TAVERNA COSERNA was the involved mark. We will cite the case as Taverna Izakaya. We
note that the decision in the case issued more than three years before Applicant asked the
Board to remand the application so that the Examining Attorney could consider Applicant’s
evidence and arguments directed to the case.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 10 -
it came,” or as “every wine,” id. at 319-31; and USPTO electronic records regarding
registrations of marks containing the word “TODO,” id. at 332-40. The Board granted
Applicant’s request, suspended the appeal, and remanded the application to the
Examining Attorney for further examination. 7 TTABVUE 1.
On remand, the Examining Attorney issued a Subsequent Final Office Action in
which she maintained and continued the final refusal to register under Section
2(e)(1).42 The Examining Attorney made of record USPTO electronic records
regarding third-party registrations of marks containing the word VINO that include
both a translation and disclaimer of the word;43 an entry from the COLLINS
DICTIONARY defining “vino” as a noun of Italian and Spanish origin meaning “wine;”44
pages from census.gov captioned “Language Use in the United States: 2011”
regarding languages spoken in the United States;45 and entries from THE AMERICAN
HERITAGE DICTIONARY and Wikipedia regarding Puerto Rico.46 The appeal was again
resumed, 9 TTABVUE 1, and following its consolidation with the appeal in the ’349
Application, 14 TTABVUE, it is now ready for decision.
42 June 25, 2025 Subsequent Final Office Action at 2-8. The Examining Attorney also objected
to Applicant’s third-party application evidence on the ground that applications are evidence
only of their filing, id. at 3 (citation omitted), an objection that she renewed on appeal. 1
TTABVUE 6-7. We decide that objection below.
43 Id. at 10-81.
44 Id. at 82-86.
45 Id. at 87-89.
46 Id. at 90-117.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 11 -
The ’349 Application
Applicant applied to register its composite mark based on the same specimen of
use shown above.47 The Examining Attorney issued an Office Action refusing
registration under Section 6(a) of the Trademark Act without the entry of a disclaimer
of the words TODO VINO and a statement translating those words into English as
“All Wine,”48 and requiring a clarification of Applicant’s description of its mark.49 The
Examining Attorney made of record webpages regarding translations of the phrase
“todo vino” from Spanish to English as “all wine,” and the words “todo” as “all” and
“vino” as wine, respectively,50 the pages from Applicant’s website displaying the
words “All Wine” and “Todo Vino” shown above,51 and definitions of the word “all.”52
Applicant responded to the Office Action by entering the requested translation of
the words “Todo Vino” as “All Wine,”53 and arguing against the disclaimer
requirement.54 Applicant made of record the results of searches of the merriam-
webster.com website showing no entries for the phrase “all wine by paws” and “all
wine,”55 pages from the online MERRIAM-WEBSTER DICTIONARY regarding synonyms
47 May 18, 2023 Application at 7.
48 February 20, 2024 Office Action at 2-3.
49 Id. at 3.
50 Id. at 5-14 (COLLINS DICTIONARY).
51 Id. at 15-17.
52 Id. at 18-29 (MERRIAM-WEBSTER DICTIONARY).
53 May 20, 2024 Response to Office Action at 4, 9.
54 Id. at 9-16.
55 Id. at 17-22.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 12 -
for and definitions of “wine,”56 and the photograph captioned “OTHER PRODUCTS
SOLD” discussed above.57
The Examining Attorney then issued an Office Action accepting Applicant’s
translation statement and amended mark description, but making final the refusal
to register without a disclaimer of TODO VINO.58 The Examining Attorney made of
record USPTO electronic records regarding third-party registrations “containing
marks with disclaimers of the wording ‘ALL-’ combined with another descriptive or
generic term for the relative identified goods or services;”59 the third-party websites
discussed above that she claimed show groupings of wine called “All Wines” or “All
Wine”;”60 definitions of or translations of the words “all,”61 “vino,”62 and “todo;”63 the
pages from census.gov discussed above;64 and the Wikipedia entry discussed above
regarding the use of Spanish in the United States.65
Applicant appealed and simultaneously requested reconsideration. In its Request
for Reconsideration, Applicant argued against the disclaimer refusal,66 and made of
56 Id. at 23-35
57 Id. at 15, 36.
58 July 1, 2024 Final Office Action at 2-7.
59 Id. at 6, 8-55.
60 Id. at 4, 56-126, 187-237.
61 Id. at 127-30 (THE AMERICAN HERITAGE DICTIONARY).
62 Id. at 131-37 (MERRIAM-WEBSTER DICTIONARY).
63 Id. at 138-51 (COLLINS DICTIONARY).
64 Id. at 152-65.
65 Id. at 166-86.
66 October 1, 2024 Request for Reconsideration at 10-15.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 13 -
record USPTO electronic records regarding third-party registrations of what
Applicant called “similar marks that have been allowed for registration,” including
marks containing “all” or “todo,”67 and third-party webpages that Applicant claimed
showed that “[t]he phrase TODO VINO is not a common or natural translation to
describe the entirety of wine offerings in retail stores.”68
The Examining Attorney denied Applicant’s Request for Reconsideration,69 and
made of record pages from Applicant’s website;70 pages from Instagram;71 pages from
amazon.com displaying the Spanish-language book entitled “Todo Vino;”72 pages from
website at ortain.com captioned “Vino, fraude, y ciencia forense” discussed above;73
USPTO electronic records regarding third-party registrations of marks containing
the word ALL that issued based on a showing of acquired distinctiveness or marks
containing the word TODO and another Spanish word and a translation statement
regarding the meaning of the words;74 pages from the websites at translate.com and
dictionary.cambridge.org translating “todo” from Spanish into English as “all” and
67 Id. at 13, 16-72, 74-83.
68 Id. at 12, 73.
69 March 25, 2025 Denial of Request for Reconsideration at 2-7.
70 Id. at 8-10.
71 Id. at 11-12.
72 Id. at 13-18.
73 Id. at 19-26.
74 Id. at 27-64.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 14 -
“vino” from Spanish into English as “wine;”75 and pages from the websites at
spanishdict.com and translate.google.com translating “todo vino” as “all wine.”76
The appeal was then resumed, 9 TTABVUE, but as in the appeal in the ’380
Application, Applicant requested remand of the ’349 Application to the Examining
Attorney to consider the same evidence described above in our discussion of the
appeal in the ’380 Application. 6 TTABVUE 1-341. As in that appeal, the Board
granted Applicant’s request and remanded the ’349 Application to the Examining
Attorney, who issued a Subsequent Final Office Action maintaining and continuing
the final refusal to register and making of record the same evidence described above
in our discussion of the appeal in the ’380 Application.77 The appeal in the ’349
Application was then resumed, and is now also ready for decision.
II. Analysis of Mere Descriptiveness Refusal (’380 Application)78
A. Applicable Law
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits registration
on the Principal Register of “a mark which, (1) when used on or in connection with
75 Id. at 65-80.
76 Id. at 81-85.
77 June 25, 2025 Subsequent Final Office Action at 10-117.
78 We will begin with the ’380 Application to register the proposed standard-character mark
TODO VINO, in which registration has been refused on the ground that the mark as a whole
is merely descriptive, rather than with the ’349 Application to register the composite mark,
in which a disclaimer of the words TODO VINO has been required, because for purposes of a
disclaimer requirement, “[t]he mere descriptiveness of a word [or words] in a mark is assessed
in the same manner as the mere descriptiveness of an entire mark.” In re Korn Ferry, No.
90890949, 2024 WL 3219482, at *2 (TTAB 2024) (citing In re UST Glob. (Sing.) Pte Ltd., No.
87657822, 2020 WL 2093068, at *2 (TTAB 2020)).

Serial Nos. 98003349 and 98003380 (Consolidated)
- 15 -
the goods of the applicant is merely descriptive . . . of them,” unless the mark has
acquired distinctiveness under Section 2(f) of the Act.79
“A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use of the goods or services.” In
re Nursecon, LLC, No. 88052194, 2024 WL 5265079, at *5 (TTAB 2024) (quoting In
re Zuma Array Ltd., No. 79288888, 2022 WL 3282655, at *3 (TTAB 2022) (internal
quotations and citations omitted)). It is not necessary that a proposed mark “describe
each feature of the goods or services, only that it describes a single, ingredient,
quality, characteristic, function, feature, purpose or use of the goods or services.”
Hangzhou Menku Tech. Co. v. Shanghai Zhenglang Tech. Co., No. 91272143, 2024
WL 5265081, at *9 (TTAB 2024) (citing In re Chamber of Com. of the U.S., 675 F.3d
1297, 1300 (Fed. Cir. 2012)). In addition, “‘a mark need not be merely descriptive of
all recited goods or services in an application. A descriptiveness refusal is proper ‘if
the mark is descriptive of any of the [goods or services] for which registration is
sought.’” Zuma Array, 2022 WL 3282655, at *3 (quoting Chamber of Com., 675 F.3d
at 1300 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005)).
“Whether a mark is merely descriptive is evaluated in relation to the particular
[goods or services] for which registration is sought, the context in which it is being
used, and the possible significance that the term would have to the average purchaser
79 Applicant does not claim that its proposed TODO VINO word mark is currently eligible for
registration on the Principal Register on the basis of acquired distinctiveness.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 16 -
of the [goods or services] because of the manner of its use or intended use . . . and not
in the abstract or on the basis of guesswork.” Id. (quoting In re Fallon, No. 86882668,
2020 WL 6255423, at *8 (TTAB 2020) (internal quotations omitted)). “We ask whether
someone who knows what the goods and services are will understand the mark to
convey information about them.” Id. (internal quotation omitted). “A mark is
suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods [or services] are to reach
a conclusion about their nature from the mark.” Nursecon, 2024 WL 5265079, at *5
(internal quotation and citation omitted).
“Whether a mark is merely descriptive or not is determined from the viewpoint of
the relevant purchasing public.” Zuma Array, 2022 WL 3282655, at *4 (quoting In re
Omniome, Inc., No. 87661190, 2019 WL 7596207, at *7 (TTAB 2019) (cleaned up)).
Evidence that a term is merely descriptive to the relevant purchasing public may be
“obtained from any competent source, such as dictionaries, newspapers, or surveys,”
Heritage All. v. Am. Pol’y Roundtable, 133 F.4th 1063, 1068 (Fed. Cir. 2025)
(quotation omitted), “as well as ‘advertising material directed to the [goods or
services].’” Zuma Array, 2022 WL 3282655, at *3 (quoting Fallon, 2020 WL 6255423,
at *8). “It may also be obtained from websites and publications.” Id. (quoting Fallon,
2020 WL 6255423, at *8) (quoting In re N.C. Lottery, 866 F.3d 1363, 1368 (Fed. Cir.
2017)). “Evidence that a term is merely descriptive similarly may come from an
applicant’s own usage . . . .” Id. (quoting Omniome, 2019 WL 7596207, at *7).

Serial Nos. 98003349 and 98003380 (Consolidated)
- 17 -
B. Summary of Arguments
1. Applicant’s Appeal Brief
Applicant’s core argument is that “‘TODO VINO’ is a registrable suggestive
composite unitary mark.” 12 TTABVUE 16. According to Applicant, “the phrase
‘TODO VINO’, analyzed as a whole and in connection with the applied for services, is
not merely descriptive but rather suggestive, susceptible of registration” because
“[t]he phrase ‘TODO VINO’ is a registrable suggestive composite unitary mark
conveying a [sic] one complete idea—an evocative reference to the world of wine—
such that consumers are unlikely to dissect its literal parts.” Id. at 18.
Applicant further argues that the word VINO in its proposed mark “is an English
loanword, hence the doctrine of foreign equivalents does not apply.” Id. Applicant
notes that “[u]nder the doctrine of foreign equivalents, foreign words from common
languages are translated into English to assess descriptiveness,” id. at 19 (citing
Taverna Izakaya, 2021 WL 5411210, at *3), but argues that the “Examining
Attorney’s reliance on the doctrine of foreign equivalents is misplaced because the
relevant term ‘VINO’ has been assimilated into ordinary English usage as a loanword
meaning ‘wine’” and that “[u]nder established precedent, when a foreign term has
entered common English usage and would be readily understood by U.S. consumers
without translation, the doctrine of foreign equivalents does not apply.” Id. at 20.
According to Applicant, “[a]s recognized by the Board in [the] Taverna Izakaya case,
terms that have become familiar to American purchasers—such as ‘TAVERNA’ in
that case—are perceived directly, not through translation,” and the “same principle

Serial Nos. 98003349 and 98003380 (Consolidated)
- 18 -
applies here” because “‘VINO’ appears extensively in English-language trademarks
and marketing for wine and wine-related goods and has entered common parlance as
a stylistic synonym for ‘wine’.” Id.
Applicant claims that
the Examining Attorney’s “attempt [during prosecution] to
distinguish [the] Taverna Costera case, on the ground that
the loanword in that case (“taverna”) appeared at the
beginning of the mark, while “VINO” appears second in
“TODO VINO,” is unpersuasive. The Board in the Taverna
Costera case did not limit its reasoning to the placement of
the loanword within the mark; rather, it focused on how
the relevant public perceives the foreign term. The
controlling principle is that the doctrine of foreign
equivalents applies only when ordinary American
purchasers would stop and translate the term, not when
they would recognize it directly as part of English usage.
The Board’s reasoning in the Taverna Costera case turned
on whether “TAVERNA” had been assimilated into English
as a loanword, not on its syntactic position. The same
analysis applies here: “VINO” is a recognized loanword in
English, commonly used in phrases. The placement of the
loanword at the end of the phrase “TODO VINO” does not
alter consumer perception or cause consumers suddenly to
“stop and translate.” U.S. consumers familiar with the
wine industry recognize “VINO” directly as “wine” in its
English usage. The mark “TODO VINO” therefore conveys
its meaning immediately and stylistically in English, just
as “TAVERNA COSTERA” did in the Taverna Costera case.
The determinative issue is perception, not syntax, and the
evidence demonstrates that “VINO” functions as an
English loanword regardless of its position within the
mark. Accordingly, the doctrine of foreign equivalents
remains inapplicable.
Id. at 21.
Applicant also claims that
[t]he Examining Attorney’s attempt to distinguish [the]
Taverna Costera case [during prosecution], on the ground
that “TODO VINO” is entirely a Spanish phrase, and not a

Serial Nos. 98003349 and 98003380 (Consolidated)
- 19 -
“multi-language mark” is unpersuasive. The word “vino” is
. . . of Spanish and Italian origin. Also, the word “taverna”
is the phonetic equivalent of the Spanish word “taberna”,
and both refers [sic] to the same place. “Taverna Costera”
is practically a phrase in Spanish. The similitudes between
the present case and the Taverna Costera case are
staggering.
Id.
Apart from its arguments regarding the inapplicability of the doctrine of foreign
equivalents, Applicant argues alternatively that TODO VINO is a “double entendre
mainly understood by native Spanish speakers.” Id. According to Applicant,
[i]t is reasonable to assume that ordinary American
consumers would not stop and translate the mark “TODO
VINO” into “ALL WINE” but would instead perceive it as
a brand name evoking sophistication and a general
reference to wine. Because consumers would recognize the
mark directly, rather than by mental translation, the
doctrine of foreign equivalents does not apply, and the
mark must be evaluated based on its overall commercial
impression as perceived in the U.S. marketplace.
Evaluated as such, “TODO VINO” functions as a unitary
expression conveying a single, distinctive idea, not merely
a descriptive phrase. Furthermore, even if some
translations were possible, the mark “TODO VINO”
creates a single integrated commercial impression rather
than two separable elements. The phrase is concise,
rhythmic, and conveys one complete idea—an evocative
reference to the world of wine—such that consumers are
unlikely to dissect its literal parts. . . . Consumers
encountering the mark would not divide it into individual
words, but would instead perceive it as a single, self-
contained expression functioning as a brand name. The
combination creates a unified commercial impression that
is more than the sum of its parts. Furthermore, “TODO
VINO” does not merely describe a feature, quality, or
ingredient of the goods, but instead evokes a broad
conceptual idea that is suggestive and imaginative. The
mark invites consumer curiosity rather than describing the
goods with immediacy or specificity. Accordingly, “TODO
VINO” is unitary and inherently distinctive.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 20 -
Id. at 22.
Applicant also argues that even though it translated “todo vino” as “all wine” in
the ’380 Application, “[i]t is a fact that ‘todo vino’ have several translations and uses,”
id. at 23, and that “[t]he phrase in Spanish ‘todo vino’ can also literally mean
‘everything came’, if the word ‘vino’ is used as the verb ‘venir’ that translates to
‘came’ in English, and not as the noun ‘vino’.” Id. (most emphasis in bold here in
italics in Applicant’s brief). According to Applicant, “[f]or native Spanish speakers,
the phrase ‘todo vino’ has at least two (2) different meanings, both commonly used
ordinarily in conversation” and “[f]or most Spanish speakers the phrase ‘todo vino’
is a double entendre,” “making it a suggestive mark.” Id. (emphasis in bold here in
italics in Applicant’s brief).
Applicant concludes that “[t]he phrase ‘TODO VINO’ is a composite unitary mark
conveying a [sic] one complete idea—an evocative reference to the world of wine—
such that consumers are unlikely to dissect its literal parts.” Id. at 25.
2. The Examining Attorney’s Brief
The Examining Attorney begins by arguing that the doctrine of foreign
equivalents applies and “is used ‘to ascertain if a non-English word mark is
impermissibly generic or descriptive by translating the mark into English and then
considering its genericness or descriptiveness.’” 15 TTABVUE 4 (quoting In re
Vetements Grp. AG, 137 F.4th 1317, 1332 (Fed. Cir. 2025), cert. denied, 2026 WL
79820 (Jan. 12, 2026)). The Examining Attorney argues that the doctrine applies
because Spanish is a common modern language spoken by millions of people in the
United States, and that the evidence, including Applicant’s own website, confirms

Serial Nos. 98003349 and 98003380 (Consolidated)
- 21 -
that Applicant’s translation of “Todo Vino” as “All Wine” is accurate and should be
considered for purposes of assessing the mere descriptiveness of the proposed mark.
Id. at 4-7. The Examining Attorney argues that even assuming that “vino” is a
“loanword” in American English, the translation of “todo vino” as “all wine” was
required because the proposed mark is a unitary expression, and “[t]his unitary
expression requires translation ‘that reflects the true meaning of the non-English
wording made by the entire phrase’,” id. at 8 (quoting TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) Section 809.01(b)(1) (emphasis in bold here in
italics in the Examining Attorney’s brief), and that “[o]nce translated, the translation
is considered for descriptiveness under Section 2(e)(1).” Id. The Examining Attorney
distinguishes the Taverna Izakaya case because “[u]nlike consumers in Taverna
Izakaya, consumers in the present case would be more likely to translate the entire
expression here, due to the fact that the first term (‘TODO’) is a Spanish term
followed by a second Spanish term (‘VINO’) comprising a unitary Spanish
expression,” id. (emphasis in bold here in italics in the Examining Attorney’s brief),
and the “Board in Taverna Izakaya determined that consumers’ recognition of ‘the
first word in Applicant’s mark’ as being English and connoting a particular type of
restaurant, specifically led to a situation in which ‘those consumers would not be
inclined to stop and translate the next word.’” Id. (citation omitted) (emphasis in
bold here in italics in the Examining Attorney’s brief).
The Examining Attorney concludes that the Board in Taverna Izakaya “clearly
stated that its decision should not be broadly applied: ‘We hasten to add that our

Serial Nos. 98003349 and 98003380 (Consolidated)
- 22 -
determination rests on the particular facts of this case, and the situation could differ
with another multi-language mark or a different evidentiary record . . . .,” id. at 10
(quoting Taverna Izakaya, 2021 WL 5411210, at *5 n.22), and that Applicant “has
failed to adequately align itself with the ‘particular facts of’ Taverna Izakaya, and the
doctrine of foreign equivalents does apply here.” Id.
The Examining Attorney then argues that “[t]he wording ‘TODO VINO’,
translated to ‘ALL WINE’, immediately conveys to the consumer of the services, i.e.,
a purchaser of wine, that the retail store services feature all, every, or nothing but
wine.” Id. at 11. The Examining Attorney cites dictionary definitions of “all,” evidence
from instagram.com and Applicant’s website, an article about Applicant’s brick-and-
mortar retail store, and third-party retail websites displaying wines, id. at 11-12,
which the Examining Attorney argues show “that the relevant public will perceive
wording such as ‘all wine’ to be indicative as inclusive of every and/or all types of
wine(s).” Id. at 12.
The Examining Attorney argues that TODO VINO is not a double entendre in
Spanish and rejects Applicant’s argument that “the wording ‘TODO VINO’ means
‘everything came’ in Spanish, and that native Spanish speakers will understand this
double entendre meaning.” Id. at 16. The Examining Attorney further argues that
Applicant
has shown no evidence that the relevant consumers in
the United States would make any other interpretation or
association with the wording ‘TODO VINO’ in relation to
the services other than the translation it submitted,
namely, ‘ALL WINE’. Applicant appears to be confusing a
double entendre with terms possibly having more than one

Serial Nos. 98003349 and 98003380 (Consolidated)
- 23 -
meaning or translation. The translation ‘everything came’
holds no double entendre meaning as to retail stores or
wine, and applicant has not shown any evidence that it
does. Descriptiveness is considered in relation to the
relevant goods and/or services.
Id. at 16-17 (emphasis in bold here in italics in the Examining Attorney’s brief).
The Examining Attorney concludes that
[i]n the present case, the fact that the wording ‘TODO
VINO’ may also be loosely translated from Spanish into the
English ‘everything came’, which has another meaning in
another context not relevant here, does not make the
phrase a double entendre in relation to the services.
There is no double entendre here, and the wording ‘TODO
VINO’ is not ambiguous in meaning when viewed in
connection with the identified services, meaning
applicant’s argument as to double entendre is
unpersuasive.
Id. at 17 (emphasis in bold here in italics in the Examining Attorney’s brief).
3. Applicant’s Reply Brief
In its reply brief, Applicant argues that “the translation ‘all wine’ proposed by the
Examiner is a literal single translation of the two words ‘todo’ and ‘vino’ put together
without any context.” 18 TTABVUE 4. Applicant also argues that “the Board should
find appropriate to find the word ‘vino’ as an English loan-word that originates from
the Spanish and Italian languages.” Id. at 6. Applicant concludes that
[t]he evidence of records [sic] supports a finding that
consumers are unlikely to stop and translate Appellant’s
marks TODO VINO (standard character) and TODO
VINO BY PAWS (design mark), as each combine the
Spanish word “todo” with the English loan-word “vino”.
Instead, the customers will perceive TODO VINO as it is.
Considering all of the above, Appellant’s marks TODO
VINO (standard character) and TODO VINO BY PAWS
(design mark), analyzed as a whole and in connection
with the applied-for-services, are not merely descriptive

Serial Nos. 98003349 and 98003380 (Consolidated)
- 24 -
but rather suggestive, susceptible of registration with a
disclaimer of the word “vino” only.
Id. at 11 (emphasis in bold here in italics in Applicant’s reply brief).
C. Analysis
1. Does the Doctrine of Foreign Equivalents Apply?
We begin with the issue of the applicability of the doctrine of foreign equivalents
in view of the Taverna Izakaya case cited by Applicant, and the Federal Circuit’s more
recent Vetements decision cited by the Examining Attorney. “The doctrine of foreign
equivalents is used to ascertain if a non-English word mark is impermissibly generic
or descriptive by translating the mark into English and then considering its
genericness or descriptiveness.” Vetements, 137 F.4th at 1322 (citing In re N. Paper
Mills, 64 F.2d 998, 998-99 (CCPA 1933)). It applies where “the ordinary American
purchaser would stop and translate the mark into English. . . .” Id. at 1326. “Such
‘ordinary American purchaser’ in a case involving a foreign language mark includes
purchasers knowledgeable in English as well as the pertinent foreign language(s).”
Taverna Izakaya, 2021 WL 5411210, at *3.
In Taverna Izakaya, the Board declined to apply the doctrine of foreign
equivalents to the mark TAVERNA COSTERA for “restaurant, cafe and bar services.”
Id. at *5. The Board noted that “the mark present[ed] an unusual scenario as a
polyglot in which the evidence of record indicates that the two words in the mark
TAVERNA COSTERA come from different languages, and Applicant and the
Examining Attorney disagree over what languages are involved.” Id. at *3. The
“evidence show[ed] that the mark may consist of an English word (TAVERNA)

Serial Nos. 98003349 and 98003380 (Consolidated)
- 25 -
coupled with a Spanish word (COSTERA), or may consist of a Greek transliteration
(TAVERNA) or Italian word (TAVERNA) coupled with a Spanish word (COSTERA),”
but that “[u]ltimately, both Applicant and the Examining Attorney agree that the
mark consists of the combination of words from different languages.” Id. at *4. The
Board stated that “[i]n the context of this mark, we find it appropriate to treat
‘taverna’ as an English word.” Id. at *5.80
Here, Applicant argues that its proposed mark TODO VINO consists of a Spanish
word (TODO) followed by the word VINO, which Applicant characterizes both as an
English “loanword meaning ‘wine’,” 12 TTABVUE 20, and “a word of Spanish and
Italian origin.” Id. at 19 (emphasis supplied by Applicant).81 Applicant’s primary
argument is that because VINO is a loanword in English, the proposed mark TODO
80 The Board found that “taverna” was a loanword in English based on dictionary definitions
of the word as “[a] café or small restaurant serving Greek food,” “a café in Greece,” and
a “small Greek restaurant or café,” Taverna Izakaya, 2021 WL 5411210, at *5, and ten “third-
party registrations with disclaimers of ‘taverna,’” five of which translated “taverna” and five
of which did not. Id.
The record here is chock full of third-party registrations offered by both Applicant and the
Examining Attorney. “It is axiomatic that the ‘Board must assess each mark on its own facts
and record,’” Korn Ferry, 2024 WL 3219482, at *5 (quoting In re Am. Furniture Warehouse
Co., No. 86407531, 2018 WL 1942214, at *7 (TTAB 2018) (citing In re Nett Designs, Inc., 236
F.3d 1339, 1342 (Fed. Cir. 2001)), and that ‘“the prior decisions and actions of other
trademark examining attorneys in registering other marks are not binding upon the USPTO
or the Board.’” Id. (quoting In re Dolce Vita Footwear, Inc., No. 88554717, 2021 WL 2285577,
at *2 n.6 (TTAB 2021)). The Board considered third-party registrations in Taverna Izakaya
for the limited purpose of determining whether the TAVERNA portion of the involved mark
TAVERNA COSTERA was a loanword in English, and here we will consider the third-party
registrations of marks containing the word VINO for the same limited purpose with respect
to the word VINO in the proposed mark TODO VINO.
81 In Taverna Izakaya, the applicant entered a “Miscellaneous Statement” in the application
that stated that “the word TAVERNA is Greek and Italian, while the word COSTERA is
Spanish.” Taverna Izakaya, 2021 WL 5411210, at *1. Here, Applicant did not enter similar
statements in either application regarding the origin of the words TODO and VINO. Instead,
it simply translated the phrase “Todo Vino” as “All Wine.”

Serial Nos. 98003349 and 98003380 (Consolidated)
- 26 -
VINO is not subject to the doctrine of foreign equivalents under Taverna Izakaya. Id.
at 21. For the reasons discussed below, we disagree.
The record shows that “vino” is defined in both Spanish-language and English-
language dictionaries as “wine.”82 The record also contains multiple third-party
registrations of marks containing the word VINO for various goods and services.83
Applicant claims that they show “that the word ‘vino’ is always disclaimed in
international classes 033, and 035 (if the business is related to wine), but it is not
always the applicant translated it [sic].” Id. at 13 (emphasis in bold here in italics
or underscoring in Applicant’s brief). Applicant further argues that “all of them
disclaim the word ‘vino’, and forty (40) of them do not translate the word ‘vino’, which
represents that around forty-two percent (42%) of them accepted ‘vino’ as an
English word.” Id. (emphasis supplied by Applicant).
Applicant discusses three specific registrations of VINO-formative marks for
retail store services featuring wine. Id. Applicant focuses on Registration No. 3244131
of the mark SOLO VINO for “retail store services featuring wine,” id. (citing 6
82 February 20, 2024 Office Action at 11; 6 TTABVUE 7 (THE AMERICAN HERITAGE
DICTIONARY).
83 As noted above, Applicant also made of record pending third-party applications to register
VINO-formative marks. The Examining Attorney objected to them in her Subsequent Final
Office Action and renewed that objection in her brief. 15 TTABVUE 6-7. In its reply brief,
Applicant claims that three of the applications have matured into registrations, 18
TTABVUE 9, but there is no supporting record evidence, and the Board’s well-established
practice is to not take judicial notice of registrations on appeal, even where, unlike here, it is
asked to do so. In re Weiss, No. 88621608, 2024 WL 3617597, at *1 (TTAB 2024). We sustain
the Examining Attorney’s objection, and have given no consideration to the third-party
applications because “[a]n application is not evidence of anything except that [it] was filed on
a certain date . . . .” Wet Seal, Inc. v. FD Mgmt. Inc., No. 91157022, 2007 WL 458529, at *5
n.13 (TTAB 2007).

Serial Nos. 98003349 and 98003380 (Consolidated)
- 27 -
TTABVUE 8-10), arguing that the owner of that registration “translated its mark as
‘only wine’, and that was not [an] obstacle for it to be registered.” Id. This registration
undercuts rather than support’s Applicant’s position, however, because the USPTO
treated the word VINO in the context of the structurally-similar mark SOLO VINO
for identical “retail store services featuring wine” as a Spanish word, not an English
loanword,84 and required (1) translation of the entire mark as “only wine,” (2) a
disclaimer of VINO, and (3) proof that SOLO VINO had acquired distinctiveness to
obtain registration on the Principal Register, indicating that the USPTO did not
consider the structurally-similar SOLO VINO mark for identical services to be
inherently distinctive. 6 TTABVUE 8-10.
Ten of the third-party registrations of VINO-formative marks in the record cover
the retail store services at issue here, or equivalent retail services.85 Id. at 8-10 (SOLO
VINO), 11-12 (VINO 100), 16-19 (TERRE DA VINO), 20-22 (VINO 50), 70-72
(VINOSHARES and design), 76-78 (RAE VINO), 85-87 (AMANTI VINO and design),
88-90 (VM VINO MAS and design), 91-95 (VINO VOLO), and 104-06 (AVIVA VINO).
The word VINO is translated in all but one of them, indicating that the USPTO
almost uniformly did not treat VINO as an English loanword in the context of the
involved services; it was apparently treated as a loanword in one case. In contrast, in
84 In its reply brief, Applicant acknowledged that SOLO is a Spanish word. 18 TTABVUE 7.
85 Most of the other third-party registrations cover bar and restaurant services, or wine itself.
The word VINO is translated in about 60% of these other registrations. The Examining
Attorney also made of record third-party registrations of VINO-formative marks for various
goods and services in which the word “VINO” was translated, June 25, 2025 Subsequent
Final Office Actions at 10-81 (’349 and ’380 Applications), most of which were also made of
record by Applicant.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 28 -
Taverna Izakaya, the word TAVERNA was translated in only half of the third-party
registrations, leading to the inference that TAVERNA was treated as a loanword in
fully half of the registrations. Thus, the third-party registrations made of record by
Applicant here do not have the same probative value as those in Taverna Izakaya,
and are instead evidence that VINO is not a loanword in connection with the involved
services.
Moreover, the proposed word mark here is not VINO, or VINO TODO, but TODO
VINO, which Applicant describes as a “unitary composed [sic] mark that include [sic]
in it the English loanword ‘vino’.” 12 TTABVUE 5. Applicant argues that “[t]he
Trademark Attorney must examine [the] commercial impression of the
mark in its totality; they cannot dissect and evaluate each word separately.
The test is ‘overall impression’, not a ‘dissection of individual features’.” Id.
at 17-18 (emphasis supplied by Applicant) (citation omitted).
We need not resolve the dispute between Applicant and the Examining Attorney
about the significance of the fact that the word TAVERNA was the first word in the
mark in Taverna Izakaya because the evidence here, including Applicant’s own
website, shows that TODO VINO, when considered “in its totality,” id. at 17, is a
Spanish phrase that means “all wine.” The Board in Taverna Izakaya noted that its
“determination rest[ed] on the particular facts of this case, and the situation could
differ with another multi-language mark or a different evidentiary record.” Taverna
Izakaya, 2021 WL 5411210, at *5 n.22. Both cases before us here involve such a
“different evidentiary record.” “In the context of th[e] [TODO VINO] mark,” we do not

Serial Nos. 98003349 and 98003380 (Consolidated)
- 29 -
“find it appropriate to treat [‘VINO’] as an English word,” id. at *5, because the record
here shows that TODO VINO would be understood as a Spanish phrase, not a
combination of a Spanish (or Italian) word and a lead English loanword.86 We agree
with the Examining Attorney that ordinary wine consumers in the United States are
likely to “stop and translate” the entire Spanish-language phrase “Todo Vine” (just
as Applicant itself did in its applications and on its website) as “All Wine.”87
“[T]he burden is on the party opposing translation to show that it is unlikely the
ordinary American purchaser would stop and translate the word into its English
equivalent.” Vetements, 137 F.4th at 1331. Applicant did not carry that burden, and
86 In that regard, it is exceedingly unlikely that Applicant’s customers, particularly those
purchasing its “retail store services featuring wine” at its brick-and-mortar store in Puerto
Rico, a United States territory where Spanish is the predominant language, would view
“VINO” as the Italian word for wine rather than the Spanish word for wine.
87 The notion that U.S. consumers of Applicant’s services would “stop and translate” TODO
VINO from Spanish into English is complicated here by two aspects of the “commercial
context” of Applicant’s use of the proposed mark TODO VINO, which we must consider “to
determine the public’s perception” of the mark. In re Berkeley Lights, Inc., No. 88895703,
2022 WL 15733123, at *6 (TTAB 2022) (quoting N.C. Lottery, 866 F.3d at 1367). First, we can
safely assume that most of the current consumers of Applicant’s “Retail store services
featuring wine” and “Online retail store services featuring wine” live in Puerto Rico, a United
States territory where Spanish is the language of everyday life. June 25, 2025 Subsequent
Final Office Action at 92-117 (’349 and ’380 Applications). There is no need for Puerto Rican
Spanish-speaking Americans, or for primarily Spanish-speaking consumers elsewhere in the
United States, to “stop and translate” the mark from Spanish to English; instead, in a literal
(not legal) sense, they would “take [the mark] as it is,” Vetements, 137 F.4th at 1323, and
understand “Todo Vino” to mean “All Wine” without translating it from Spanish into English.
That does not matter in the final analysis, however, because a “descriptive word, used in one
of the modern languages of the principal nations of the world, cannot be properly registered
as a trade-mark.” Id. at 1326 (quoting N. Paper Mills, 64 F.2d at 999).
Second, Applicant has itself effectively “stopped and translated” “Todo Vino” as “All Wine” on
its website, making it unnecessary for its English-speaking consumers who also speak
Spanish to do so themselves. But we must also consider Applicant’s possible uses of the
proposed mark beyond the use on its website, and in situations where a translation is not
provided, we find that it is likely that English-speaking consumers who also speak Spanish
would stop and translate the proposed mark TODO VINO as “all wine.”

Serial Nos. 98003349 and 98003380 (Consolidated)
- 30 -
we will apply the doctrine of foreign equivalents to the proposed mark TODO VINO
and translate it as “all wine” for purposes of assessing whether it is merely descriptive
of one or both of the services identified in the ’380 Application.88
2. Is TODO VINO (“All Wine”) Merely Descriptive of a
Characteristic or Feature of “Retail store services
featuring wine” or “Online retail store services featuring
wine”?
As discussed above, Applicant’s main argument in its appeal brief is that “[t]he
phrase ‘TODO VINO’ is a registrable suggestive composite unitary mark conveying a
[sic] one complete idea—an evocative reference to the world of wine—such that
consumers are unlikely to dissect its literal parts,” 12 TTABVUE 18, and Applicant
devotes its reply brief to a discussion of the doctrine of foreign equivalents and
arguments regarding the possible meanings of TODO VINO discussed above. 18
TTABVUE 2-11. Applicant does not explain in its briefs why “all wine” is not merely
descriptive of “Retail store services featuring wine” or “Online retail store services
featuring wine.”
88 As noted above, Applicant argues that “[t]he phrase in Spanish ‘todo vino’ can also
literally mean ‘everything came’, if the word ‘vino’ is used as the verb ‘venir’ that
translates to ‘came’ in English, and not as the noun ‘vino’.” 12 TTABVUE 23 (most emphasis
in bold here in italics in Applicant’s brief). According to Applicant, “[f]or native Spanish
speakers, the phrase ‘todo vino’ has at least two (2) different meanings, both commonly used
ordinarily in conversation,” and “[f]or most Spanish speakers the phrase ‘todo vino’ is a
double entendre.” Id. (emphasis in bold here in italics in Applicant’s brief). These arguments
are meritless because Applicant did not translate “Todo Vino” as “Everything Came” either
in its translation statements, or on its website, which promotes its “Retail store services
featuring wine” and which provides the platform through which it renders its “Online retail
store services featuring wine.” As discussed above, we “must consider a mark in its
commercial context to determine the public’s perception,” N.C. Lottery, 866 F.3d at 1367
(citations omitted), and in the commercial context of Applicant’s website, there is no doubt
that Applicant’s alternative translation of TODO VINO as “everything came” is inapplicable.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 31 -
The Examining Attorney argues that “all wine” “immediately conveys to the
consumer of the services, i.e., a purchaser of wine, that the retail store services
feature all, every, or nothing but wine.” 15 TTABVUE 11. Applicant’s own website
establishes this meaning. We again reproduce below the portion of Applicant’s
website at panamericanwines.com that is captioned “All Wine”:89
90
This portion of Applicant’s website shows the following photographs on the same page
as the text set forth above:
89 As shown above, Applicant’s composite mark containing the words TODO VINO also
appears on the “All Wine” page.
90 February 20, 2024 Office Action at 14. This page provides an English translation of the
portion of the page captioned “Todo Vino” that contains the words “De PanAmerican Wine &
Spirits” followed by a quotation in Spanish. Id. at 16.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 32 -
91
Applicant describes itself as a “winery” whose focus is to “always have the best
wine labels for each and every customer who visits us,” and its website displays
multiple arrays of wine available for purchase through services provided under the
proposed mark TODO VINO and its English counterpart All Wine. The services for
which Applicant seeks registration of its proposed marks are “Retail store services
featuring wine” and “Online retail store services featuring wine.” The “commercial
context” of Applicant’s own use of the proposed mark TODO VINO, see N.C. Lottery,
866 F.3d at 1367, shows that the public will understand Applicant to be a retailer
who sells all, nothing but, or only, wine, with the objective, as Applicant puts it on its
“All Wine” website, always to “have the best wine labels for each and every customer
who visits us,” either in-store or online.92
91 Id. The same wine displays appear in the portion of Applicant’s website captioned Todo
Vino that contains a quotation in Spanish. Id. at 16.
92 As discussed above, Applicant made of record a photograph captioned “OTHER
PRODUCTS SOLD” that Applicant claimed shows that it “sells other goods, such as rum,
vodka, tequila, whiskey, among others.” May 20, 2024 Response to Office Action at 14, 31.
There is no explanation regarding the origin of the photograph, which shows five narrow
shelves containing spirits bottles, and there is no evidence from Applicant’s website or
elsewhere in the record that Applicant actually displays these products under the proposed
TODO VINO mark. The record instead shows that TODO VINO is used only with wine.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 33 -
The record contains third-party materials indicating such public perception of the
proposed TODO VINO mark, including the following Instagram post touting “300+
rotating labels of wine”:
93
and an article regarding TODO VINO in Travel & Wine, which begins as follows:
93 July 21, 2024 Final Office Action at 116.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 34 -
94
The article goes on to state that Applicant “has around 300 wine labels in its portfolio
that are also renewed cyclically, with the incorporation of new proposals from Old
and New Worlds, including less disclosed areas for still wines such as Andalusia and
Bulgaria, and both mono wines as plurivarietal.”95
The Instagram post states that at TODO VINO, a consumer can purchase more
than 300 “rotating labels of wine from all over the world.” The Travel & Wine article
describes TODO VINO as a new portion of Applicant’s business that “has been
created to enhance its wine offering and provide a new multipurpose oasis for wine
lovers,” and states that TODO VINO is “a new kingdom of wine . . . that celebrates
94 Id. at 118.
95 Id. at 121.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 35 -
the coming of age of this importer, who in just over five years has managed to position
himself as one of the main ones on the wine scene in Puerto Rico with an offer of an
amalgamation of budgets, audiences and points of sale, and that with its new
headquarters offers a circular wine experience in which one goes for the wine or
integrates the wine into other experiences not related to it.” Against the backdrop of
Applicant’s website description of Todo Vino as a “winery” that seeks always to “have
the best wine labels for each and every customer who visits us,” this third-party
evidence reflects the purchasing public’s understanding that Todo Vino describes
retail sales services featuring wine and involving all, nothing but, or only wine.
We find that the proposed mark TODO VINO for “Retail store services featuring
wine” and “Online retail store services featuring wine” merely describes a
characteristic or feature of those services, namely, that they involve all, nothing but,
or only wine. Applicant’s proposed word mark is thus ineligible for registration on
the Principal Register absent a showing that TODO VINO has acquired
distinctiveness under Section 2(f) of the Trademark Act, a showing that Applicant
has not attempted. Accordingly, we affirm the refusal to register the proposed TODO
VINO mark shown in the ’380 Application.
III. Analysis of Disclaimer Refusal (’349 Application)
We reproduce again below the drawing of the composite mark shown in the ’349
Application:

Serial Nos. 98003349 and 98003380 (Consolidated)
- 36 -
A. Applicable Law
“‘Under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), an applicant may
be required to disclaim an unregistrable component of a mark otherwise registrable.
The [USPTO] can condition the registration of a larger mark on an applicant’s
disclaimer of an unregistrable component of a mark otherwise registrable.” Korn
Ferry, 2024 WL 3219482, at *2 (quotation and quotation marks omitted). As discussed
above, “[m]erely descriptive terms are unregistrable under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1), and are therefore subject to disclaimer if the mark is
otherwise registrable.” Id. “‘Failure to provide the required disclaimer constitutes a
ground for refusing registration.’” Id. (quoting In re Lego Juris A/S, No. 88698784,
2022 WL 1744613, at *2 (TTAB 2022) (citing Stereotaxis, 429 F.3d at 1041; Am.
Furniture Warehouse, 2018 WL 1942214, at *2).
B. Summary of Arguments96
1. Applicant
Applicant’s arguments in its briefs in the appeal in the ’349 Application largely
repeat those made in its briefs in the appeal in the ’380 Application, including with
96 As discussed above, the record in the ’349 Application is substantively the same as the
record in the ’380 Application.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 37 -
respect to the inapplicability of the doctrine of foreign equivalents. 12 TTABVUE 18-
26; 18 TTABVUE 3-11. The main difference is highlighted by Applicant’s argument
that “[t]he phrase ‘TODO VINO BY PAWS’ is a unitary composed [sic] mark that
includes (4) words total having the Spanish word ‘todo’, the English loanword ‘vino’
and two English words ‘by’ and ‘paws’.” 12 TTABVUE 5. Applicant argues that this
makes Taverna Izakaya controlling and the doctrine of foreign equivalents
inapplicable. Id. at 5-6. According to Applicant:
It is reasonable to assume that ordinary American
consumers would not stop and translate the mark “TODO
VINO BY PAWS” into “ALL WINE BY PAWS” but would
instead perceive it as a brand name evoking sophistication
and a general reference to wine. Because consumers would
recognize the mark directly, rather than by mental
translation, the doctrine of foreign equivalents does not
apply, and the mark must be evaluated based on its overall
commercial impression as perceived in the U.S.
marketplace.
Id. at 24.
Applicant also argues that “the phrase ‘TODO VINO’ in Appellant’s design mark
‘TODO VINO BY PAWS’, analyzed as a whole, including the terms ‘BY PAWS’, and
in connection with the applied-for services, is not merely descriptive but rather
suggestive, making a disclaimer of both terms is unwarranted.” Id. at 20. According
to Applicant, its “design mark ‘TODO VINO BY PAWS’ is a registrable suggestive
composite unitary mark conveying a [sic] one complete idea—an evocative reference
to the world of wine—such that consumers are unlikely to dissect its literal parts.”
Id. Applicant asserts that “[t]he Examining Attorney concluded that Appellant’s
mark is completely in Spanish which is incorrect, as it is composed by one Spanish

Serial Nos. 98003349 and 98003380 (Consolidated)
- 38 -
word, one English loanword, and two English words, even if they are in smaller
letters,” id. at 25, that “[i]t will not make any sense to translate it and read it as ‘all
wine by paws’,” id. at 25-26, and that the “Examining Attorney failed to prove the
consumers’ perception of the mark.” Id. at 26.
2. The Examining Attorney
The Examining Attorney’s arguments in the appeal in the ’349 Application are
also very similar to those in the appeal in the ’380 Application, including regarding
the applicability of the doctrine of foreign equivalents. 15 TTABVUE 4-20. With
respect to the nature of Applicant’s composite mark, the Examining Attorney argues
that “Applicant asserts the wording ‘TODO VINO BY PAWS’ will be perceived as a
unitary expression, but gives no evidentiary support for how or why.” Id. at 15.
According to the Examining Attorney,
it is clear that the wording “TODO VINO” is separable from
the wording “BY PAWS”, and that the wording “TODO
VINO” visually dominates the overall mark in that it
appears substantially larger than the wording “BY PAWS”,
which is written in much smaller font, and sits
underneath the letter “O” of the wording “VINO”.
Id. (emphasis in bold here in italics in the Examining Attorney’s brief). The
Examining Attorney concludes that
[t]he online use of the mark carries the same commercial
impression: the wording “TODO VINO” wholly dominates
the mark, and the two literal elements, “TODO VINO” and
“BY PAWS”, are not equal. The mark’s two literal elements
are clearly separate and distinct from each other, such that
not only can a requirement be made for translation of the
non English wording “TODO VINO”, but disclaimer of
that wording can properly be required as well.
Id. at 16 (emphasis in bold here in italics in the Examining Attorney’s brief).

Serial Nos. 98003349 and 98003380 (Consolidated)
- 39 -
C. Analysis
1. Does the Doctrine of Foreign Equivalents Apply to the
Words TODO VINO in Applicant’s Composite Mark?
As discussed above, Applicant argues that the doctrine of foreign equivalents does
not apply to its composite mark, which it describes in its appeal brief as “[t]he phrase
‘TODO VINO BY PAWS’ . . . a unitary composed [sic] mark that includes (4) words
total having the Spanish word ‘todo’, the English loanword ‘vino’ and two English
words ‘by’ and ‘paws’.” 12 TTABVUE 5. Applicant described its composite mark
differently in the ’349 Application itself:
The mark consists of the wording “TODO VINO”, where the
wording “TODO” is on top of the wording “VINO” in gray
stylized letters. In the wording “TODO”, the letter “T” is in
the stylized form of a corkscrew and first “O” has a stylized
design of a glass inside with a heart outlined in red. In the
wording “VINO”, the letter “I” is in the stylized form of a
torch and the letter “O” has various stylized lines inside
and the shape of a glass with various drops in red and
yellow. To the right lower side of the word “VINO” is the
wording “BY PAWS” in gray stylized letters. The color
white represents background, outlining, shading and/or
transparent areas and is not part of the mark.”
Applicant’s mark, in its entirety, does not “consist[ ] [solely] of the wording ‘TODO
VINO’ where the wording ‘TODO’ is on top of the wording ‘VINO’ in gray stylized
letters,” as Applicant’s description begins, but neither is it “a unitary composed [sic]
mark that includes (4) words total having the Spanish word ‘todo’, the English
loanword ‘vino’ and two English words ‘by’ and ‘paws’.” 12 TTABVUE 5.
A “unitary mark” “simply has no ‘unregistrable component,’ but is instead an
inseparable whole.” Korn Ferry, 2024 WL 3219482, at *6 (finding that the standard-
character mark KORN FERRY ARCHITECT was not a unitary mark) (quoting Lego

Serial Nos. 98003349 and 98003380 (Consolidated)
- 40 -
Juris, 2022 WL 1744613, at *3). “A unitary mark’s ‘elements are inseparable. In
a unitary mark, these observable characteristics must combine to show that the mark
has a distinct meaning of its own independent of the meaning of its constituent
elements. In other words, a unitary mark must create a single and distinct
commercial impression.’” Id. (quoting Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d
1555, 1561 (Fed. Cir. 1991)).
Several factors inform the unitariness analysis: the
physical connection of the potentially unregistrable
component to other elements of the proposed mark by lines
or other design features; the relative location of the
respective elements of the proposed mark; and the
significance of the terminology as used on or in connection
with the goods or services.
Id. (citing Lego Juris, 2022 WL 1744613, at *3).
The drawing of Applicant’s mark in the ’349 Application, and Applicant’s specimen
of use, reproduced again below for ease of reference,
97
97 May 18, 2023 Application at 7.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 41 -
make it clear that the mark is not a “unitary” mark under the standards discussed
above. The Spanish phrase TODO VINO, displayed in huge stylized lettering in a
stacked presentation, dwarfs the separate words BY PAWS, displayed horizontally
beneath TODO VINO in miniscule lettering that is barely visible in Applicant’s
specimen. The words “BY PAWS” appear to refer to Applicant’s trade name “Pan
American Wine & Spirits,” and “[c]ases have frequently held that an applicant’s use
of its corporate name or house mark along with another trademark or trade name
does not create a unitary mark.” Korn Ferry, 2024 WL 3219482, at *6 (quoting In re
Royal Bodycare, Inc., No. 78976265, 2007 WL 616034, at *2 (TTAB 2007)).
Contrary to Applicant’s argument on appeal, its composite mark is not “[t]he
phrase ‘TODO VINO BY PAWS’ . . . a unitary composed [sic] mark,” 12 TTABVUE 5,
but rather a composite mark that is dominated by the stylized words TODO VINO,
which create a separate commercial impression from the other elements.98 For the
reasons discussed above in the appeal in the ’380 Application, we find that the
doctrine of foreign equivalents applies to the dominant Spanish-language phrase
TODO VINO in the composite mark, and we will apply it and translate that phrase
as “All Wine” for purposes of the disclaimer refusal.
98 We note in that regard that Applicant submitted the same specimen of use to support
registration of its proposed standard-character mark TODO VINO. If the composite mark
shown on the common specimen were indeed a “unitary” mark, Applicant’s application to
register the proposed standard-character mark might have involved “mutilation” of the
composite mark, which “boils down to a judgment as to whether th[e] designation for which
registration is sought comprises a separate and distinct ‘trademark’ in and of itself.’”
Bodycare, 2007 WL 616034, at *2 (quoting Institut National des Appellations D’Origine v.
Vintners Int’l Co., 958 F.2d 1574, 1582 (Fed. Cir. 1992) (internal quotation omitted)). Because
Applicant’s composite mark is not a unitary mark, its application to register TODO VINO
separately was not improper due to mutilation.

Serial Nos. 98003349 and 98003380 (Consolidated)
- 42 -
2. Is TODO VINO (“All Wine”) Merely Descriptive of a
Characteristic or Feature of “Retail store services featuring
wine” or “Online retail store services featuring wine,” Such
That It Must Be Disclaimed in Applicant’s Composite Mark?
As noted above, for disclaimer purposes, “[t]he mere descriptiveness of a word [or
words] in a mark is assessed in the same manner as the mere descriptiveness of an
entire mark.” Korn Ferry, 2024 WL 3219482, at *2. On virtually the same record as
in the ’349 Application, we have found above in the appeal in the ’380 Application
that the proposed word mark TODO VINO is merely descriptive of the “Retail store
services featuring wine” and “Online retail store services featuring wine” identified
in the ’349 and ’380 Applications. The composite mark shown in the ’349 Application
appears on the “Todo Vino” and “All Wine” pages on Applicant’s website, which are
the most potent evidence of the mere descriptiveness of the phrase for the reasons
discussed above, and the stylized words TODO VINO that appear in the composite
mark also appear in the Instagram post shown and discussed above, which
corroborates that the phrase TODO VINO merely describes retail store sales services
featuring wine that involve all, nothing but, or only wine. There is nothing in the
nature of the composite mark itself, or in the record in the ’349 Application, to show
that the phrase TODO VINO does not have the same descriptive meaning in
Applicant’s composite mark. We find that the words TODO VINO in Applicant’s
composite mark merely describe a characteristic or feature of “Retail store services
featuring wine” and “Online retail store services featuring wine,” namely, that the
services involve all, nothing but, or only wine, and must be disclaimed. We affirm the

Serial Nos. 98003349 and 98003380 (Consolidated)
- 43 -
refusal to register the mark shown in the ’349 Application without a disclaimer of
TODO VINO.
Decision: The refusal to register the standard-character TODO VINO mark
shown in ’380 Application is affirmed.
The refusal to register the composite mark shown in the ’349 Registration without
a disclaimer of the words TODO VINO is affirmed, but if Applicant submits a properly
worded disclaimer of TODO VINO to the Board within 30 days of the date of this
decision and prior to the filing of any appeal of this decision, the disclaimer refusal
will be set aside and the ’349 Application will proceed to publication for opposition,
as amended to add the disclaimer. The appropriate standardized disclaimer text is as
follows: No claim is made to the exclusive right to use “TODO VINO” apart from the
mark as shown.