Peju Province Winery L.P. v. Cesari S.R.L.

• Court: Court of Appeals for the Second Circuit
• Decided: June 8, 2026
• Docket: 24-1903
• Status: Unpublished

Opinion

24-1903(L) Peju Province Winery L.P. v. Cesari S.R.L.

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION “SUMMARY ORDER”). A PARTY CITING TO A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.

At a stated term of the United States Court of Appeals for the Second Circuit, held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the 8th day of June, two thousand twenty-six.

PRESENT: RICHARD C. WESLEY, RICHARD J. SULLIVAN, JOSEPH F. BIANCO, Circuit Judges. _____________________________________

PEJU PROVINCE WINERY L.P., a California Limited Partnership, PEJU FAMILY OPERATING PARTNERSHIP L.P., a California Limited Partnership,

Defendants-Appellants-Cross-Appellees,

PEJU PROVINCE CORPORATION, a California Corporation,

Defendant, Nos. 24-1903 (Lead) 24-2014 (XAP) v.

CESARI S.R.L., an Italian Limited Liability Company,

Plaintiff-Appellee-Cross-Appellant. _____________________________________

For Defendants-Appellants- Cross-Appellees: JOEL G. MACMULL (Brian M. Block, Mandelbaum Barrett PC, New York, NY; Martin B. Schwimmer, Stobbs, Charlotte, NC, on the brief), Mandelbaum Barrett PC, New York, NY.

For Plaintiff-Appellee- Cross-Appellant: VALERIA CALAFIORE HEALY, Healy LLC, New York, NY.

Appeal from a judgment of the United States District Court for the Southern

District of New York (Naomi Reice Buchwald, Judge).

UPON DUE CONSIDERATION, IT IS HEREBY ORDERED,

ADJUDGED, AND DECREED that the July 12, 2024 judgment of the district court

is VACATED and the case is REMANDED.

Peju Province Winery L.P. and Peju Family Operating Partnership L.P.

(together, “Peju”) appeal from a judgment following a bench trial on trademark-

infringement claims brought by Cesari S.R.L. (“Cesari”), an Italian winemaker.

In essence, Peju contends that the district court erred in giving preclusive effect to

2 a decision of the United States Patent and Trademark Office (“USPTO”) that

denied Peju’s trademark registration application on the ground that it was likely

to be confused with Cesari’s previously registered trademark. We assume the

parties’ familiarity with the underlying facts, procedural history, and issues on

appeal, to which we refer only as necessary to explain our decision.

I. Background and Procedural History

In January 2003, the USPTO granted Cesari’s trademark registration

application for the use of the mark “LIANO” in connection with wines. One

month later, Peju, a California winemaker, sought to register the trademark

“LIANA” with the USPTO for use in connection with the sale of wines. Cesari

filed an opposition to Peju’s registration application with the USPTO, which

initiated a proceeding before the Trademark Trial and Appeal Board (“TTAB”),

the USPTO’s internal adjudicatory body. See 15 U.S.C. §§ 1063, 1067. In its

opposition, Cesari contended that Peju’s LIANA mark was likely to be confused

with its LIANO mark.

In deciding whether Peju’s mark was likely to be confused with Cesari’s

mark, the TTAB conducted its analysis exclusively “on the basis of the

identification of goods set forth in [Peju’s] application,” without considering “the

3 particular nature of [Peju’s] goods, the particular channels of trade[,] or the class

of purchasers to which the sales of goods are directed.” Octocom Sys., Inc. v.

Houston Computer Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (quoted in Cesari

S.R.L. v. Peju Province, No. 91158374, 2004 WL 1703103, at *2 (T.T.A.B. July 20,

2004)). “[T]he TTAB evaluate[d] likelihood of confusion by applying some or all

of the 13 factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357

(C.C.P.A. 1973),” B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 154 (2015),

which are similar to the eight Polaroid factors considered by our Circuit to assess

the likelihood of confusion in trademark-infringement cases, see Polaroid Corp. v.

Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961). Ultimately, the TTAB

rejected Peju’s application, concluding that its mark was “almost identical” to

Cesari’s mark and “likely to cause confusion,” as both were registered as wines

without “restrictions as to the channels of trade or purchasers” and only differed

by the last letter. Cesari, 2004 WL 1703103, at *1–2.

Over a decade later, Cesari brought an action for trademark infringement

against Peju in the Southern District of New York. In Cesari’s complaint, it

alleged that “Peju, without authorization from Cesari, has used and continues to

use the infringing ‘Liana’ name in connection to Peju’s marketing, sale and

4 distribution of wines in the United States.” Dist. Ct. Doc. No. 1 at 12. This

overlap, Cesari contended, “is likely [to] cause consumer confusion, deception or

mistake as to source,” id., and thus violates the Lanham Act, see 15 U.S.C. §§ 1114,

1117.

For its part, “Peju admit[ted] that it promotes and offers California wines

for sale, including one 100% Orange Muscat dessert wine from Mendocino,

California called ‘Liana’ under the PEJU label,” but it “denie[d] that using the

word ‘Liana’ to mark and sell wines would infringe Cesari’s federally registered

trademark and damage Cesari.” Dist. Ct. Doc. No. 15 at 3. Specifically, Peju

pointed to the fact that its wines’ trade channels “are limited to its own wineries

and websites,” and therefore “even if [Cesari]’s trade channels include physical

stores or online retail websites, they do not overlap with Peju’s.” Dist. Ct. Doc.

No. 29 at 13. Moreover, “Peju offers only wines made from grapes grown in

California in the Napa Valley and Mendocino regions,” while Cesari’s “LIANO

wine comes from the well-known Rubicone IGT wine region of Central Italy.” Id.

at 12. This matters, Peju maintains, because “[f]or consumers of fine wines . . . the

combination of varietal (the grape variety or varieties from which the wine is

made), and the region or terroir in which those grapes are grown, are the primary

5 means by which consumers differentiate and distinguish among wines.” Id.; see

also id. (“Paramount among these distinctions is that of old world versus new

world wines.”).

In the district court, Cesari moved for partial summary judgment on the

issue of whether Peju was precluded from relitigating the “likelihood of

confusion” element of the trademark-infringement claim. The district court

granted summary judgment, concluding that Peju was “precluded from re-

litigating the likelihood of confusion between the parties’ marks” – an element of

Cesari’s trademark infringement claim – because the TTAB’s 2004 trademark

registration decision had settled the matter once and for all. Sp. App’x at 16, 20.

The district court subsequently held a bench trial on the remaining elements of

Cesari’s claim and its request for damages before entering a judgment in favor of

Cesari.

Peju timely appealed, arguing that the district court erred in giving

preclusive effect to the TTAB’s findings concerning the likelihood of confusion

between the marks.

6 II. Discussion

“We review de novo a district court’s decision to grant summary judgment,”

affirming only if, “construing the evidence in the light most favorable to the [non-

moving] party . . . and drawing all reasonable inferences in that party’s favor,” we

conclude that “there is no genuine dispute as to any material fact and the movant

is entitled to judgment as a matter of law.” Covington Specialty Ins. v. Indian

Lookout Country Club, 62 F.4th 748, 752 (2d Cir. 2023) (internal quotation marks

omitted). “Under the Lanham Act, a plaintiff alleging trademark infringement

must demonstrate that (1) ‘it has a valid mark that is entitled to protection’ and

that (2) the defendant’s ‘actions are likely to cause confusion with that mark.’”

Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020) (quoting The

Sports Auth. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996)).

In granting partial summary judgment, the district court gave preclusive

effect to the TTAB’s 2004 decision regarding the Lanham Act’s second prong:

likelihood of confusion. Peju asserts that was error because the TTAB “did not

consider, let alone adjudicate, the marketplace usages of the parties’ marks.” Peju

Br. at 39. We agree.

7 We have long recognized that the TTAB’s determination of likelihood of

confusion regarding a trademark application will have preclusive effect for

purposes of a Lanham Act infringement claim only if the TTAB’s assessment took

“into account, in a meaningful way, the context of the marketplace.” Levy v. Kosher

Overseers Ass'n of Am., 104 F.3d 38, 42 (2d Cir. 1997). As we noted in Levy, “where

the [TTAB] has indeed compared conflicting marks in their entire marketplace

context, the factual basis for the likelihood of confusion issue is the same, the issues

are the same, and collateral estoppel is appropriate” in the subsequent

infringement action. Id. (quoting 4 J. Thomas McCarthy, McCarthy on

Trademarks & Unfair Competition § 32.31[2], at 32–125 (3d ed. 1996)). But such

occasions are the exception, not the norm, in TTAB trademark registration rulings.

Here, the TTAB decision – on its face – did not consider the parties’ “actual

usage in the marketplace.” B&B Hardware, 575 U.S. at 157; see Cesari, 2004 WL

1703103, at *2 (citing Octocom, 918 F.2d at 942). To the contrary, the TTAB

expressly cabined its likelihood-of-confusion inquiry to the four corners of Peju’s

application and Cesari’s already-registered mark, reaching its ultimate decision

“regardless of what the record may reveal as to the particular nature of [the] applicant’s

8 goods.” Cesari, 2004 WL 1703103, at *2 (emphasis added) (quoting Octocom, 918

F.2d at 942).

Importantly, the TTAB never considered the merits of Peju’s principal

defense to Cesari’s infringement claim: “that its wine [wa]s distinguishable [from

Cesari’s] because it is a dessert wine” and therefore not likely to confuse

consumers. Id. at *2. The TTAB declined to reach that argument – and made no

attempt to consider “the context of the marketplace,” Levy, 104 F.3d at 42, as it

related to dessert wines – because Peju raised that specific usage for the first time

“[i]n response” to Cesari’s opposition motion and not in its trademark application,

Cesari, 2004 WL 1703103, at *1.

The TTAB was of course justified in doing so. But the fact remains that the

TTAB never “consider[ed] the marketplace usage of the parties’ marks,” B&B

Hardware, 575 U.S. at 156, beyond the cursory information contained in Peju’s

application and Cesari’s pleaded registration. See Octocom, 918 F.2d at 942

(holding that the TTAB “cannot take such facts [about market usage] into

consideration unless [they are] set forth in [the] application” (quoting Tuxedo

Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1337 (C.C.P.A. 1981))).

Consequently, “the factual basis for the likelihood of confusion issue [in Peju’s

9 trademark application] is [not] the same” as that of Peju’s Lanham Act defense,

making “collateral estoppel . . . [in]appropriate.” Levy, 104 F.3d at 42.

Cesari nevertheless argues that the Supreme Court’s decision in B&B

Hardware “definitively rejected” the Levy standard discussed above. Cesari Br. at

15. But Cesari mischaracterizes both the Supreme Court’s decision in B&B

Hardware and our own precedents.

In B&B Hardware, the Supreme Court held that a TTAB decision with respect

to the likely confusion associated with a proposed trademark will have preclusive

effect on a subsequent trademark-infringement claim if it looked to the “same

likelihood-of-confusion standard” as the district court, even if it evaluated slightly

“different factors to assess [such] likelihood.” 575 U.S. at 154. But B&B Hardware

expressly concluded that where “the TTAB d[id] not consider the marketplace

usage of the parties’ marks, the TTAB’s decision should have no later preclusive

effect in a suit where actual usage in the marketplace is the paramount issue.” Id.

at 156–57 (internal quotation marks omitted). B&B Hardware is thus perfectly

consistent with our own precedent in Levy, which turned on whether the TTAB

even considered the challenged marks “in their entire marketplace context.” Levy,

104 F.3d 42 (emphasis and internal quotation marks omitted); see also Jim Beam

10 Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729, 735 (2d Cir. 1991) (explaining

that “the fact that the [TTAB] had actually decided the issue of likelihood of

confusion of the marks in context makes” the difference for issue-preclusion

purposes (emphasis added)).

Unsurprisingly, our own post–B&B Hardware rulings have continued to cite

Jim Beam and Levy with approval, emphasizing that “the [TTAB] considers only

the ‘registrability of the applicant’s mark exactly as shown in the application and

only as to the goods listed, regardless of actual usage.’” Int'l Info. Sys. Sec.

Certification Consortium v. Sec. Univ., 823 F.3d 153, 163–64 (2d Cir. 2016) (quoting

Jim Beam, 937 F.2d at 734) (citing Levy, 104 F.3d at 41–42)). And the leading

trademark-law treatise – which was cited ten times by the Supreme Court in B&B

Hardware – also makes clear that Jim Beam and Levy stand for “essentially the same”

proposition as the one embraced by “[t]he high court’s decision” in B&B Hardware.

5 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 32:98 &

n.3 (5th ed. Mar. 2026 update).

The district court erred in concluding that because the TTAB had

adjudicated the likelihood of confusion with reference to the broader usage in

connection with the sale of “wine,” it necessarily adjudicated the same issue with

11 respect to every “reasonable” and “usual” subsidiary set of usages, including

Peju’s usage in connection with the sale of dessert wines, which formed part of the

basis of Peju’s defense to Cesari’s infringement claim. Sp. App’x at 10 (quoting

B&B Hardware, 575 U.S. at 154–57). We cannot agree that Peju and Cesari “each

use their mark in ways that are materially the same as the usages adjudicated by the

TTAB.” Sp. App’x at 9 (emphasis added); see also, e.g., Banfi Prods. Corp. v. Kendall-

Jackson Winery, Ltd., 74 F. Supp. 2d 188, 197–99 (E.D.N.Y. 1999) (holding “that there

is no likelihood of confusion between” two similarly sounding red wines with

different price-points that are sold through different trade channels). As shown

above, the TTAB never considered Peju’s dessert-wine argument because that

asserted usage was materially different from – and significantly narrower than –

what Peju stated in its application. See Cesari, 2004 WL 1703103, at *2 (citing

Octocom, 918 F.2d at 942). Therefore, because the issues before the TTAB and the

district court were not the same, the district court should not have given preclusive

effect to the TTAB’s ruling on the likelihood of confusion.

12 * * *

We have considered the parties’ remaining arguments and find them to be

without merit. Accordingly, we VACATE the judgment of the district court and

REMAND the case for proceedings consistent with this summary order.

FOR THE COURT: Catherine O’Hagan Wolfe, Clerk of Court