estta tracking number: estta1053215 05/04/2020

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1053215

Filing date: 05/04/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91246675

Party PlaintiffVIÃ#A CONCHA Y TORO S.A.

CorrespondenceAddress

ALEX P GARENSDAY PITNEY LLPONE INTERNATIONAL PLACEBOSTON, MA 02110UNITED [email protected], [email protected], [email protected], [email protected], [email protected]

Submission Testimony For Plaintiff

Filer's Name Catherine Dugan O'Connor

Filer's email [email protected], [email protected], [email protected], [email protected], [email protected], [email protected]

Signature /Catherine Dugan O'Connor/

Date 05/04/2020

Attachments Goycoolea Declaration public_Redacted.pdf(243988 bytes )Ex 13 not confidential.pdf(2221089 bytes )Ex. 14 public.pdf(4983 bytes )Ex. 15 public.pdf(5006 bytes )Ex. 16 public.pdf(5004 bytes )Ex. 17 public.pdf(5005 bytes )

http://estta.uspto.gov

105061723.10

IN THE UNITED STATES PATENT & TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

____________________________________ )

VIÑA CONCHA Y TORO S.A., ) )

Opposer, ) Opposition No.: 91246675 )

v. ) Mark: BODEGA DEL PALACIO DE LOS ) FRONTAURA Y VICTORIA (& Design) )

BODEGAS FRONTAURA, S.L.U., ) ) Serial No.: 87/459,748 ) Class: 33

Applicant. ) ____________________________________)

TESTIMONY DECLARATION OF CRISTOBAL GOYCOOLEA

[CONFIDENTIAL/REDACTIONS]

I, Cristobal Goycoolea, declare under penalty of perjury as follows:

1. I am the Corporate Marketing Director of Opposer Viña Concha y Toro S.A.

(“CyT" or the “Company”). I submit this declaration to provide relevant information regarding

Opposer's use of the FRONTERA mark (the "FRONTERA Mark") in United States commerce

and the recognition and fame of the FRONTERA Mark among U.S. consumers. I also provide

herein relevant information concerning Applicant BODEGAS FRONTAURA, S.L.U.’s

("Applicant") BODEGA DEL PALACIO DE LOS FRONTAURA Y VICTORIA (& Design)

Mark that is the subject of Application No. 87/459,748 and this proceeding (“Applicant’s

FRONTAURA y Victoria & Design Mark”).

2. The facts set forth herein are based on my personal knowledge and on

information contained in Opposer's business records created and maintained by Opposer in the

ordinary course of, and as a regular practice during, its business and to which I have regular

2 105061723.10

access in the course of my job. Unless otherwise noted, the exhibits to which I refer and which

are attached to this Declaration are copies of documents and other materials from Opposer's

business records maintained and kept in the ordinary course of business.

I. Job Responsibilities, Experience, and Education

3. I have been employed at the Company since August 2000, when I joined the

Marketing Department. In 2008, I was named Marketing Director for Subsidiary Wineries and

in 2010, I was named Marketing Director, Global Brands. Since January 2015, I have been

Corporate Marketing Director. I obtained a degree in Business Administration from the

Universidad Adolfo Ibanez in 1996.

4. Throughout my tenure at the Company, I have had responsibility for a wide

variety of matters concerning the marketing, advertising and promotion of the Company’s wine

brands, including the FRONTERA brand. As a member of the Marketing Department, I had

day-to-day responsibility to plan and execute marketing initiatives and advertising campaigns.

As Marketing Director for Subsidiary Wineries, I became more involved in planning and brand

strategy. As Marketing Director, Global Brands, I continued to oversee planning and brand

strategy, as well as execution, of the Company’s marketing, advertising and promotion of

exported wine brands, including the FRONTERA brand at issue in this case.

5. In my current role as Corporate Marketing Director, I have overall

responsibility for the marketing of wines produced and exported by the Company, throughout

the world, including the United States.

3 105061723.10

6. In this role, I regularly interact with Company personnel involved in the

following business functions: finance, legal, advertising and promotion, publicity, forecasting,

and distributor relationships.

7. FRONTERA is one of the most important brands in the Company’s portfolio, and is

the most important brand from Chile in the Varietal category in terms of volume, distribution

and awareness around the world.

8. In support of my duties and responsibilities, I have access to and rely upon the

following types of corporate records and documents concerning the FRONTERA brand: historical

records, trademark files, sales records, advertising and promotional records, marketing records,

publicity records, market share records and reports, brand health records and reports, media reports,

corporate annual reports, documents and data relevant to the enforcement of the Company’s rights

in the FRONTERA mark, retail and distributor account records, and many other types of records,

documents and data maintained and relied upon by the Company in the ordinary course of business.

II. Opposer's Business and History of the FRONTERA Mark

9. The Company is a winery based in Santiago, Chile. Concha y Toro is the largest

producer of wines from Latin America. Founded in 1883, the Company has grown to become a

leader in global wine sales, with revenue nearing in 2019 alone.

10. The Company is the largest Chilean producer and exporter of wines, having over

thirty percent market share of the exports of Chilean bottled wine to the United States since at

least as early as 2014.

4 105061723.10

11. For nearly 20 years, the Company has offered a wide range of varietals under

the FRONTERA Mark in the U.S. and in more than 120 countries around the world. The

Company’s FRONTERA branded wines have been continuously marketed and sold in the

United States and other countries since at least as early as 1999.

12. The Company first started to export wines bearing the FRONTERA Mark to the

United States in 1999. Beginning in 1999, the principal U.S. importer for FRONTERA-

branded wines was Banfi Products Corporation, located in Old Brookville, New York. Starting

in 2011, FRONTERA branded wines were imported by Excelsior Wines, a joint venture

between Vina Concha and Banfi. As of 2018, FRONTERA branded-wines have been imported

through Fetzer Vineyards, a wholly-owned subsidiary of CyT.

13. Since 1999, the Company has sold wines under the FRONTERA Marks to its

importers for further distribution and sale in the United States. The specific products include

various white and red table wines, including Sauvignon Blanc, Chardonnay, Merlot, Cabernet

Sauvignon, Rosé, Shiraz, Pinot Grigio, Carmenere, and Syrah and Malbec blends. True and

correct copies of a sampling of labels under which the FRONTERA-branded wines have been

exported to the United States for sale in that country are attached as Exhibit 5 to Opposer’s

Third Notice of Reliance. Each of the labels prominently displays the FRONTERA Mark.

14. Through these importers and their distribution networks, wines bearing the

FRONTERA Mark have been sold in at least 48 of the United States.

15. Over the course of the past 20 years, the FRONTERA-branded wines have

achieved significant market penetration in this country through a wide network of distributors

throughout the United States.

5 105061723.10

16. In the United States, FRONTERA-branded wines are sold to end consumers

through all legal channels of trade, including numerous brick and mortar wine and liquor

stores, online wine stores, grocery stores and big box stores. These include such well known

stores as Total Wine and More, Bev Max, Sam’s Club, Target, Walmart, Costco, Price

Chopper, along with many local stores. FRONTERA-branded wines are carried at thousands of

retail locations throughout the United States, ranging from small wine shops to grocery stores.

17. The Company also promotes its FRONTERA-branded wines on the Internet,

including the dedicated website www.fronterawines.com, which has been in continuous

existence since 2009 and which prominently displays the FRONTERA Mark. A true and

correct printout of the website as of May 1, 2020 is attached as Exhibit 6 to Opposer’s Fourth

Notice of Reliance.

18. The FRONTERA-branded wines are also promoted via social media, including

Facebook, at www.facebook.com/pages/category/Wine-Spirits/Frontera-Concha-y-Toro-

632024706899159/ (with over 400,000 followers), Youtube, at

www.youtube.com/user/FronteraCYT (where its videos have received millions of views),

Twitter, at https://twitter.com/fronterawine?lang=ena and Instagram at

www.instagram.com/FronteraWine. True and correct printouts from the FRONTERA Brand’s

social media pages are attached at Exhibit 7 to Opposer’s Fourth Notice of Reliance.

19. Recent promotions include a partnership with Drizly and DrinkAR to provide an

augmented reality feature allowing consumers to access information and purchase

FRONTERA wines from their mobile phones and Spotify to allow consumers to pair wines

and music. (Attached as Exhibit 13 hereto is a true and correct copy of a press release

6 105061723.10

announcing the Drizly and DrinkAR partnership and of photos of related promotional materials

(produced with “Confidential” designation due to proprietary material on accompanying pages

of document.)

20. All of these advertisements and promotional activities prominently feature the

FRONTERA Mark.

III. Success and Public Recognition and Fame of the FRONTERA Brand

21. Opposer's wines sold under the FRONTERA Mark are targeted towards and

purchased by adults of all ages, demographics and sophistication levels. These consumers are

the typical consumers of wine in the United States.

22. The FRONTERA-branded wines have been the subject of unsolicited third party

reviews and press attention, including the following publications, each of which is available at

the Internet address located on such Exhibits:

(a) Praised by author of article published by Food & Wine in 2017, a true and

correct copy of which is attached as Exhibit 8 to Opposer’s Fourth Notice of Reliance.

(b) FRONTERA After Dark line featured in Beverage Media Wines Buzz

column in September 2016, a true and correct copy of which is attached as Exhibit 8 to

Opposer’s Fourth Notice of Reliance.

(c) Packaging design for After Dark line covered in August 17, 2016 article

“Frontera Wine Appeals to Millennials with After Dark Line,” Packaging Strategies

Magazine, a true and correct copy of which is attached as Exhibit 8 to Opposer’s Fourth

Notice of Reliance.

7 105061723.10

(d) Featured in “Wine of the Week: Frontera Moscato” by the Las Vegas

Review Journal in July 1, 2014, a true and correct copy of which is attached as Exhibit 8

to Opposer’s Fourth Notice of Reliance.

(e) FRONTERA described as one of Chile’s larger and better recognized

value wine brands in July 25, 2013 article “Chilean Wine: Learning Curve” in Drinks

International, a true and correct copy of which is attached as Exhibit 8 Opposer’s Fourth

Notice of Reliance.

(f) Noted as dominant U.S. brand of major Chilean winery Vina Concha y

Toro by economics consultant Elliott R. Morss, PhD., in article posted June 17, 2011, a

true and correct copy of which is attached as Exhibit 8 to Opposer’s Fourth Notice of

Reliance.

(g) Listed as number 30 in 2009 Wines with Momentum report published by

leading wine market analytics company Information Resources Inc. (“IRI”) on March 8,

2010. A true and correct copy of a news article reporting the same by Wines Vines

Analytics is attached at Exhibit 8 to Opposer’s Fourth Notice of Reliance.

(h) Featured in “Large Container Wines can be Good, Economical Choices,”

published in the South Florida Sun Sentinel, July 30, 2009, a true and correct copy of a

printout of which is attached at Exhibit 8 to Opposer’s Fourth Notice of Reliance

23. In addition to the above, FRONTERA wines have been featured in Wine

Enthusiast ratings as well as many blog posts. True and correct copies of such articles are

attached as Exhibit 9 to Opposer’s Fourth Notice of Reliance, each of which is available at the

Internet address shown on such Exhibit:

8 105061723.10

(a) Wine Enthusiast Rating for Concha y Toro 2003 Frontera Carmenere

(b) https://rockinredblog.com/2016/12/28/the-many-faces-of-concha-y-toro/

(c) https://www.reversewinesnob.com/2013/10/concha-y-toro-frontera-malbec.html

(d) https://www.thewinestalker.net/2017/07/fronterra.html

24. The Company overall has received a number of prestigious recognitions,

including First Place in “The World’s Most Admired Wines” survey conducted by Drinks

International in 2011-2013. A true and correct copy of an article reflecting the same is

attached as Exhibit 10 to Opposer’s Fourth Notice of Reliance.

25. Opposer’s FRONTERA-branded wines have received numerous industry

awards, including those listed below. True and correct copies of examples of these awards are

attached as Exhibit 11 to Opposer’s Fourth Notice of Reliance.

Variety Vintage Year Month Competition Award

Cabernet Sauvignon 2018 2019 March Berliner Wein Trophy Gold Medal

Cabernet Sauvignon 2016 2017 May

Concours Mondial de

Bruxelles Gold Medal

Merlot 2016 2017 March Mundus Vini Silver Medal

Carmenere 2016 2017 February Berliner Wein Trophy Gold Medal

Merlot 2016 2017 February Berliner Wein Trophy Gold Medal

Cabernet Sauvignon 2015 2017 February

Sakura Japan

Women's Wine

Awards 2017 Gold Medal

Chardonnay 2015 2017 February

Sakura Japan

Women's Wine

Awards 2017 Silver Medal

Sauvignon Blanc 2015 2017 February

Sakura Japan

Women's Wine

Awards 2017 Silver Medal

Sauvignon Blanc 2016 2016 September

International Wine &

Spirit Competition Bronze Medal

9 105061723.10

Merlot 2015 2016 May Decanter Bronze Medal

Chardonnay 2015 2016 March

Vinalies

Internationales Silver Medal

Merlot 2015 2016 March

Vinalies


Late Harvest 2013 2015 October


Spirit Competition Silver Medal

Merlot 2014 2015 October



Cabernet Sauvignon 2014 2015 October



Chardonnay 2015 2015 October



Cabernet Sauvignon 2014 2015 August Berliner Wein Trophy Gold Medal

Chardonnay 2014 2015 June

Challenge

International Du Vin Bronze Medal

Cabernet Sauvignon 2014 2015 June

Sommelier Wine

Awards Silver Medal

Chardonnay 2014 2015 June

Sommelier Wine

Awards Silver Medal

Merlot 2014 2015 June

Sommelier Wine

Awards Bronze Medal

Merlot 2014 2015 March

Vinalies


Pedro Jimenez 2013 2015 March

Vinalies

Internationales Gold Medal

Pais 2013 2015 March Mundus Vini Silver Medal

Merlot 2013 2014 September



Chardonnay 2013 2014 September



Pedro Jimenez 2013 2014 September Mundus Vini Gold Medal

Carmenere 2013 2014 September


Spirit Competition Silver Medal

Blanco 2013 2014 September



Pedro Jimenez 2013 2014 September



10 105061723.10

Pedro Jimenez 2013 2014 May

Sommelier Wine

Awards Bronze Medal

Carmenere 2013 2014 May Decanter Bronze Medal

Pedro Jimenez 2013 2014 May

International Wine

Challenge Bronze Medal

Pedro Jimenez 2013 2014 March Wine & Spirits 87 pts - Best buy

Pais 2013 2014 March Wine & Spirits 86 pts - Best buy

Cabernet Sauvignon 2013 2014 March Berliner Wein Trophy Gold Medal

Merlot 2013 2014 March Berliner Wein Trophy Gold Medal

Pedro Jimenez 2013 2014 March Mundus Vini Gold Medal

26. Since their introduction in 1999, the FRONTERA-branded wines have achieved

significant sales in the United States, totaling in the dollars. Based on

my review of accounting figures of shipment and sales revenue maintained by the Company in

the ordinary course of business, including the spreadsheet attached as Exhibit 14 hereto, gross

sales of FRONTERA-branded wines sold in the United States, at the wholesale level, have

averaged over per year since 2012.

27. Specifically, based on these records maintained by the Company (Exhibit 14

hereto), the total annual sales of FRONTERA-branded wines by the Company’s importers in

the United States for the years 2012 to 2019 were as follows:

Year Total Shipments in 9 liter case

equivalents

Gross Sales Revenue in

Dollars

2012 2013 2014 2015 2016 2017 2018 2019

11 105061723.10

28. Note that the figures for 2018 and 2019 do not include sales made in those years

for further export to Canada and the Caribbean

. I have

excluded sales for export in order to provide the total sales of FRONTERA wines for

distribution and eventual resale to end consumers located in the United States.

29. These figures represent product shipped and revenue earned from sales at the

first level of the distribution chain in the United States, that is, by the importer to its regional

distributors. The distributors in turn sell the FRONTERA wines to various retail stores for

ultimate sale to consumers, with markups added at each stage of the distribution process.

Thus, the ultimate sales to consumers in the United States exceed the gross revenue sales

numbers shown above.

30. Over the past 5 years, the Company has spent approximately per

year in advertising and promotion of the FRONTERA brand. This does not include sales and

marketing expenditures directly to the trade incurred by distributors or on the retail level by

stores that carry the brand.

31. All of the foregoing sales, advertising, and publicity of the Company’s wines

under the FRONTERA Mark have resulted in extremely strong consumer recognition of the

FRONTERA brand in the United States. Indeed, current industry reports reflect this.

32. According to research conducted by Wine Intelligence US Landscapes 2020, a

respected industry report that I and others at the Company, and I believe in the wine industry

generally, rely upon in the ordinary course of business, the FRONTERA brand is in the top 50

brands for awareness among regular wine drinkers in the United States and for wines that

12 105061723.10

regular wine drinkers surveyed purchased in the past three months. A true and correct copy of

excerpts of the Wine Intelligence US Landscapes 2020 Report is attached as Exhibit 15 hereto

(at pages 89-90).

33. The FRONTERA brand likewise places in the top 50 in the California market,

with the Wine Intelligence US-State Level Intelligence: California Report from January 2020

placing the FRONTERA brand at 37th among wines that California wine purchasers surveyed

would consider purchasing. A true and correct copy of excerpts of the Wine Intelligence US-

State Level Intelligence: California Report from January 2020 (See p. 62) is attached hereto as

Exhibit 16. FRONTERA wines are currently ranked 46 in brand awareness among regular

wine drinkers resident in California who were surveyed, as well as in the top 50 for brand

affinity. (P.59, 63.)

34. The FRONTERA brand has also recently been recognized as one of the most

well-known brands globally, placing 8th in the recent Wine Intelligence Global Wine Brand

Power Index Report, a move from 15th place in 2019. A true and correct copy of excerpts of

the Wine Intelligence Report announcing this is attached hereto as Exhibit 17.

35. Because of the overwhelming success and appeal of FRONTERA-branded

wines in the United States and the Company’s long-standing exclusive use thereof, the

FRONTERA Mark has acquired enormous value and become extremely well known to the

public and to the trade as identifying and distinguishing Opposer exclusively and uniquely as

the source of the wines offered under the mark.

13 105061723.10

IV. Opposer's United States Trademark Registrations for the FRONTERA Mark

36. As part of my duties and responsibilities for the FRONTERA brand, I keep myself

aware of the Company’s trademark holdings and have access to corporate records concerning the

same. I have reviewed those records. The Company owns U.S. Reg. No. 2,472,826 (the

“FRONTERA Registration”) for the mark FRONTERA covering “wine” in Class 33. The

application was filed July 22, 1999, registered July 31, 2001, and has a priority date of March

30, 1999. According to corporate records of the Company, the FRONTERA Registration is in

good standing and is in the name of Opposer, Vina Concha y Toro S.A. True and correct

copies of the registration certificates and printouts from the USPTO database showing the

current status and title are attached to Opposer’s Notice of Opposition as Exhibit A.

37. The Company owns the following additional U.S. Trademark Registrations and

Application featuring the FRONTERA Mark: (a) FRONTERA MOONLIGHT, U.S. Reg.

5,286,978, covering “Wine” in Class 33 (registered on September 12, 2017); FRONTERA

AFTER MIDNIGHT, U.S. Reg. 5,297,096, covering “Wine” in Class 33 (registered on

September 26, 2017); and FRONTERA AFTER DARK, U.S. App. 87/029,851, covering

“Wine” in Class 33 (Application filed on May 9, 2016 and is pending). True and correct copies

of the registration certificates and printouts from the USPTO database showing the current

status and title for each are attached to Opposer’s Notice of Opposition as Exhibit D.

38. In addition to the above, the Company has FRONTERA Marks pending and/or

registered in many jurisdictions around the world.

14 105061723.10

V. Opposer's Enforcement of the FRONTERA Mark

39. The Company actively protects its FRONTERA Mark, both through registration

and enforcement actions.

40. Opposer successfully challenged U.S. Application Serial No. 78/829,386 for the

mark FRONTARIA, covering “Alcoholic Beverages, namely, wine” in Class 33, filed by

Sociedade Quinta do Portal, SA on the grounds of likelihood of confusion. This Opposition,

TTAB Case No. 91,189,423, was filed on March 25, 2009 and was sustained, resulting in

abandonment of the Application for the mark FRONTARIA. A true and correct copy of a

printout from the USPTO database reflecting this proceeding and the abandoned status of this

application is attached to Opposer’s First Notice of Reliance as Exhibit 1.

41. Opposer also successfully challenged U.S. Application Serial Nos. 85/935,582

and 85/935,651 for the mark LA FRONTERA in Standard Character and Stylized forms,

covering “Beers, namely, lagers, porters, stouts, ales and pilsners” in Class 32, filed by Trans

Pecos Beverage Company dba Big Bend Brewery. The Applicant for those marks failed to

respond to the Notices of Opposition filed by Opposer, resulting in default and abandonment of

the applications. (See TTAB Opposition Nos. 91,236,164 and 91,235,568.) A true and correct

copy of a printout from the USPTO database reflecting this proceeding and the abandoned

status of this application is attached to Opposer’s First Notice of Reliance as Exhibit 2.

42. As a result of Opposer's enforcement activities, Opposer's use of the

FRONTERA Mark in the United States is substantially exclusive.

15 105061723.10

VI. The Application for Applicant’s FRONTAURA y Victoria & Design Mark

43. In 2018, Opposer became aware that Applicant had applied to register the below

mark:

44. Opposer has no business relationship with Applicant and has never authorized

Applicant or otherwise permitted Applicant to use or register this mark featuring the term

FRONTAURA or any other mark similar to the FRONTERA Mark.

45. The goods identified in Applicant's Application at issue in this action, namely

"Wines," are identical to Opposer's identified goods under the FRONTERA Mark.

46. Upon learning of Applicant’s application herein, Opposer wrote to Applicant,

through respective counsel, seeking withdrawal of the Application.

47. Thereafter, Opposer commenced this Opposition Proceeding.

48. If Applicant is permitted to obtain a registration for the FRONTAURA y

Victoria & Design Mark, I believe that its use of that mark is likely to cause consumer

confusion as to the source and/or affiliation of its wines and those sold under the Company’s

FRONTERA Mark, and that its use will lessen the value of the FRONTERA Mark.

17 105061723.10

VIÑA CONCHA Y TORO S.A.,

By its Attorneys,

Catherine Dugan O’Connor Alex P. Garens Woo Sin (“Sean”) Park Day Pitney LLP One International Place Boston, MA 02110 Tel: 203-977-7538 E-mail: [email protected] [email protected] [email protected] [email protected]

Dated: May 4, 2020

18 105061723.10

CERTIFICATE OF SERVICE

I hereby certify that on the date set forth below a true and correct copy of the foregoing Declaration and Exhibits was served upon the Applicant by electronic mail, as follows:

Paul Novak, Esq. Hackler Daghighian Martino & Novak 10250 Constellation Bld. Suite 2500 Los Angeles, CA 90067 [email protected]; [email protected]; [email protected]

Catherine Dugan O’Connor

Date: May 4, 2020

estta tracking number: estta1053215 05/04/2020

Documents