Green Spot (Thailand) Ltd.v.Vitasoy International Holdings Limited

Trademark Trial and Appeal Board

Feb 21, 2008

No. 91165010 (T.T.A.B. Feb. 21, 2008)

Wolfson

Mailed: February 21, 2008

Opposition No. 91165010

Green Spot (Thailand) Ltd.

v.

Vitasoy International Holdings
Limited

Before Quinn, Drost and Mermelstein,
Administrative Trademark Judges.

By the Board:

Opposer, Green Spot (Thailand) Ltd., filed a notice of
opposition against registration of the mark VITAMILK, filed
by Vitasoy International Holdings Limited, in international
classes 29, 30 and 32 for, inter alia, “soy beverages,
namely, fruit juices and fruit drinks made with soy.”1 The
opposition is based on opposer’s alleged prior use of the
mark VITAMILK for “a variety of beverage products” and its
claim that a likelihood of confusion exists between the
marks. Applicant filed an answer denying the salient
allegations in the complaint and setting forth several

1 Trademark application serial no. 78436520 filed June 16, 2004
on the basis of applicant’s bona fide intent to use the mark in
commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91165010

2
affirmative defenses, in particular that opposer’s action is
barred by the “Morehouse” defense.2
This case now comes before the Board for consideration
of opposer’s motion for summary judgment on its pleaded
ground of priority and likelihood of confusion under Section
2(d) of the Trademark Act. The motion has been fully
briefed. For the reasons set forth below, opposer’s motion
is granted.
A motion for summary judgment is a pretrial device,
intended to save the time and expense of a full trial when a
party is able to demonstrate, prior to trial, that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Opryland USA
Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992); and TBMP § 528.01 (2d ed. rev.
2004). The Board may not resolve issues of material fact,
but can only ascertain whether genuine disputes exist
regarding such issues. The Board views the evidence in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA, supra.

2 Also known as the prior registration defense, the doctrine was
first enunciated in Morehouse Mfg. Corp. v. J. Strickland & Co.,
407 F.2d 881, 160 USPQ 715 (CCPA 1969).

Opposition No. 91165010

3
Likelihood of Confusion
There is no genuine issue of material fact as to
likelihood of confusion in this case. The marks are
identical and the goods overlap; both parties assert use or
a bona fide intent to use the mark VITAMILK on soy-based
beverages. On page 8 of its brief, applicant states that it
“does not dispute that there is a likelihood of confusion
between its mark and [opposer’s] purported mark.” Again, on
page 15 of its brief, applicant confirms that it “does not
dispute that [opposer’s] use of the Latin character VITAMILK
mark and [applicant’s] use of the Latin character VITAMILK
mark on their respective products concurrently in the United
States would result in consumer confusion. There is no
doubt that it would.”
Opposer is thus entitled to a finding in its favor on
the issue of likelihood of confusion.
Priority

There is also no genuine issue of material fact as to
opposer’s priority of use of its mark in the United States.
Opposer proved that it first used its mark in the
United States on December 20, 2003. To establish this date,
opposer submitted the declaration of the Chairman of its
Executive Board, Mr. Chote Sophonpanich, who attests that
opposer made a sale of 1480 cartons of its “VITAMILK To Go”
beverage product to its United States distributor on
December 20, 2003; that opposer’s distributor “in turn, sold
Opposition No. 91165010

4
those products bearing the VITAMILK mark to retail outlets
around the United States;” and that opposer has engaged in
more than 20 such sales. Sophonpanich declaration, para.
8.3 While the volume of opposer’s sales during this period
was not large, we find as a matter of law that the extent of
its use was sufficient to constitute use of the mark in
commerce with the United States, and was not token use made
merely to reserve rights in the mark.
On the other hand, applicant has made no use of its mark
in United States commerce. In response to opposer’s requests
for admission, applicant admits “[t]hat applicant has not
offered, sold, marketed or distributed any goods under the
English language/Latin character VITAMILK mark, as reflected
in U.S. Serial No. 78/436,520, in the United States.”
Applicant’s Response to Request for Admission No. 33, March
7, 2006. Applicant does, however, argue that its mark is
famous in other countries, but that fact alone cannot
establish priority in the United States. See Person’s Co.
Ltd. v. Christman, 14 USPQ2d 1477, 1479 and 1480, fn. 18

3 Attached to Mr. Sophonpanich’s declaration are copies of an
invoice showing the 2003 sale to its distributor and copies of
approximately 24 additional invoices showing sales to the U.S.
distributor from January through September 2004. Although
applicant contends that opposer’s use of its mark in the United
States from 2003-2004 was de minimis, such sales were sufficient
to come to applicant’s attention, and in 2004, applicant sent
cease and desist letters to “various wholesale and retail outlets
in the United States that were offering and selling [opposer’s]
product bearing the VITAMILK mark.” Sophonpanich declaration,
para. 9. A copy of one such letter is attached to Mr.
Sophonpanich’s declaration.

Opposition No. 91165010

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(Fed. Cir. 1990)(“The concept of territoriality is basic to
trademark law; trademark rights exist in each country solely
according to that country’s statutory scheme. ... Although
Person’s did adopt the mark in Japan prior to Christman’s use
in United States commerce, the use in Japan cannot be relied
upon to acquire U.S. trademark rights. Christman is the
senior user as that term is defined under U.S. trademark
law.”).4
Accordingly, the earliest date upon which applicant can
rely for priority is the filing date of its intent to use
application (contingent upon registration). See Section 7(c)
of the Trademark Act; Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991)(“[T]here can
be no doubt but that the right to rely upon the constructive
use date comes into existence with the filing of the intent-
to-use application and that an intent-to-use applicant can
rely upon this date in an opposition brought by a third party
asserting common law rights”); and 2 McCarthy on Trademarks
and Unfair Competition § 16:17 (4th ed. 2007). Inasmuch as

4 Applicant also raised the affirmative defense of unclean hands,
based on its contention that opposer adopted its mark with
knowledge of applicant’s reputation overseas. Such knowledge,
even if proved, would not raise an unclean hands defense. See
Person’s Co, supra. On the other hand, applicant has neither
pleaded nor established that its mark is well-known in the United
States, within the meaning of Article 6bis of the Paris
Convention. Paris Convention for the Protection of Industrial
Property, Mar. 20, 1883, as rev. at Stockholm, July 14, 1967, 21
U.S.T. 1583, Art. 6bis, 828 U.N.T.S. 305. See Aktieselskabet af
21. November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861, 1864 (TTAB
2006).

Opposition No. 91165010

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the subject application was filed on June 16, 2004, and
opposer has established use of its mark beginning in December
2003, opposer is entitled to a finding in its favor on the
issue of priority.
Standing
A party may establish its standing to oppose by showing
that it has a “real interest” in the case, that is, a direct
and personal stake in the outcome of the opposition. See
Ritchie v. Simpson, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999);
and Lipton Industries, Inc. v. Ralston Purina Co., 213 USPQ
185, 189 (CCPA 1982). Opposer has established its standing
to bring this opposition as the prior user of the mark
VITAMILK for beverages.
There being no genuine issues of material fact with
respect to opposer’s standing, priority or claim of
likelihood of confusion, we turn now to a discussion of
applicant’s Morehouse defense.
The Morehouse Defense
The Morehouse defense is an equitable doctrine that
applies where an applicant owns a prior registration for
essentially the same mark identifying essentially the same
goods (or services) that are the subject mark and goods of
the proposed application. Morehouse Mfg. Corp., 160 USPQ
715 (CCPA 1969). In such case, “the opposer cannot be
further injured because there already exists an injurious
registration,” and therefore the additional registration
Opposition No. 91165010

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does not add to the injury. O-M Bread, Inc. v. U.S. Olympic
Comm’n, 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995);
see also 3 McCarthy, J. Thomas, McCarthy on Trademarks and
Unfair Competition § 20:38 (4th ed. 2007); and TBMP
§ 311.02(b)(2d ed. rev. 2004).
Applicant contends that its ownership of
Registration No. 1147761,5 for the mark shown below,
precludes any further harm to opposer under the Morehouse
defense.

Whether opposer will suffer added damage from registration
of applicant’s mark VITAMILK can be determined by comparing
the appearance, pronunciation, meaning, and commercial
impression of the marks. Ultimately, we must determine if
the marks at issue here are “essentially the same” mark.
See Continental Nut Co. v. Le Cordon Bleu, 494 F.2d 1395,
181 USPQ 646 (CCPA 1974) (failure of Cordon Bleu cooking
school to oppose BLUE RIBBON for nuts does not preclude
opposition to CORDON BLEU for nuts); Lincoln Logs, Ltd. v.
Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d
1701 (Fed. Cir. 1992) (failure to object to THE ORIGINAL
LINCOLN LOGS with house eaves design does not preclude

5 Registration No. 1147761 for “vegetable based milk substitute
made from soya beans in Class 29;” registered February 24, 1981
under Section 44(e) of the Trademark Act; Section 8 affidavit
accepted; Section 15 affidavit acknowledged; renewed May 19,
2001.
Opposition No. 91165010

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opposition to LINCOLN LOGS LTD. with profile of Abraham
Lincoln and log house design).
Turning to a comparison of applicant’s prior Chinese
character mark and the mark VITAMILK, there is no question
that the marks are dramatically different in appearance. As
for the pronunciation of applicant’s Chinese registration,
applicant contends that the first two characters would be
pronounced “vi” and “ta,” and the third character would be
pronounced “lai” or “nai.”6 This differs significantly in
sound from the mark in the subject application, which would
be pronounced “vi ta milk.”
As for the meaning of applicant’s previously registered
mark, the parties agree that the first two characters have
no relevant meaning in Chinese, and that the third character
means “milk.” Under the doctrine of foreign equivalents,
foreign words from common languages are translated into
English for the purpose of comparing them to other marks in
the context of a likelihood of confusion determination or in
deciding whether the mark is descriptive or generic in its
foreign language.7 Applicant argues that it is entitled to

6 Applicant has submitted the declarations of its Company
Secretary, Tong Ah Hing, and Qing Yuan Sun, a site supervisor
employed by Merrill Legal Solutions in San Francisco, California
in support of its contention that its mark would be pronounced
“vi ta lai” or “vi ta nai.” A third declaration submitted by
applicant did not address the issue of pronunciation of the mark.

7 See e.g., In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB
1986)(Chinese characters translated as “Oriental Daily News” are
descriptive of a newspaper under the doctrine of foreign
Opposition No. 91165010

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rely upon the doctrine of foreign equivalents, by which the
third character of its Chinese mark would be translated into
“milk.” Applicant argues that this translation, together
with the transliteration or sound of the first two
characters is essentially the same mark as in its currently-
pending VITAMILK application.
We disagree. As a matter of law, the doctrine of
foreign equivalents does not apply to a foreign mark
partially comprised of characters that have no English
translation, at least with respect to a Morehouse analysis.
Applicant’s Chinese character mark simply cannot be
“translated” into English and considered as an English
language mark. The fact that the first two characters of
the mark have no meaning in English makes the mark overall
incapable of translation.8
The precedent most analogous to the present case is
Continental Nut, supra, 181 USPQ at 647. In Continental
Nut, the Board, rejecting applicant’s Morehouse defense,
refused registration of the mark CORDON BLEU for edible
shelled nuts on the basis of likelihood of confusion with
opposer’s prior registration for the mark LE CORDON BLEU for
educational services and magazines relating to cooking. The

equivalents); 2 McCarthy, J. Thomas, McCarthy on Trademarks and
Unfair Competition § 11:34 (4th ed.).

8 In so holding, we have not ignored the three declarations
applicant has submitted in support of its argument that relevant
Opposition No. 91165010

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Court affirmed the refusal despite the existence of a prior
incontestable registration owned by applicant for the mark
BLUE RIBBON for the same goods, because the marks CORDON
BLEU and BLUE RIBBON “would not have the same significance
to the American public [but would] create different
commercial impressions.” Continental Nut, 181 USPQ at 647.
The marks in the present case, like those in
Continental Nut, create wholly different commercial
impressions; here the marks are so different in their visual
impressions that even if we were to agree with applicant
that the marks are similar in pronunciation or meaning, any
similarities are outweighed by the differences.9 In
considering the closely analogous doctrine of “tacking,” the
Federal Circuit has held that it may not be necessary to
consider all points of potential similarity of the marks
(i.e., appearance, sound, meaning and commercial impression)
when one factor alone is enough to find that the marks are

consumers would immediately know to sound out the first two
characters of the mark and translate the third.

9 In Palm Bay, supra, the doctrine of foreign equivalents was
applied (directly) to a likelihood of confusion analysis.
However, even a case where the doctrine of foreign equivalents
may equate the meaning of two marks being compared, a likelihood
of confusion may still not be found. See e.g., In re Sarkli,
Ltd. 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983)(“[S]uch
similarity as there is in connotation [between the marks
REPECHAGE and SECOND CHANCE] must be weighed against the
dissimilarity in appearance, sound, and all other factors, before
reaching a conclusion on likelihood of confusion as to source.”)
Again, we note that Morehouse requires that the marks be
essentially the same rather than merely confusingly similar - a
more stringent requirement than might be necessary to support a
likelihood of confusion claim.
Opposition No. 91165010

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not legally identical. Van Dyne-Crotty Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991)
(“It does not appear that the Board entertained any other
evidence concerning the legal equivalence of these two marks
except for the visual or aural appearance of the marks
themselves. However, no more was necessary. Merely from
review of the marks, it is clear that they create different
commercial impressions.” (citations and footnote omitted)).
In the case at bar, the marks differ significantly in their
appearance, sound, commercial impression and meaning, any
one of which would rule out application of the Morehouse
defense.
In order for the Morehouse doctrine to apply, whatever
injury opposer may have sustained or may sustain from the
registered mark cannot be increased by registration of a
second mark. Here, the Chinese character mark is a stylized
representation of three Chinese characters that creates a
commercial impression wholly different from that created by
the English-language mark. Opposer would still sustain
enhanced injury if applicant were allowed to register the
mark VITAMILK, because confusion (if any may exist) would no
longer be limited to potential purchasers who speak both
Chinese and English. In view thereof, there are no genuine
issues of material fact that the marks are not “essentially

Opposition No. 91165010

12
the same,” and applicant may not rely on the Morehouse
defense.
Accordingly, there being no issue as to priority or
likelihood of confusion, opposer’s motion for summary
judgment is granted. Judgment is hereby entered against
applicant, the opposition is sustained and registration to
applicant is refused.