Vitasoy Int’l. Holdings Ltd.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75465778 (T.T.A.B. Jun. 19, 2001)

6/19/01
Paper No. 15
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Vitasoy International Holdings Limited
________
Serial No. 75/465,778
_______
Carole F. Barrett of Coudert Brothers for Vitasoy
International Holdings Limited.
Carol A. Spils, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______
Before Chapman, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Vitasoy International Holdings Limited has filed an
application to register VITA as a trademark in
International Class 30 for goods identified, following
amendment, as "soybean curd desserts, namely pudding,
custard and ice cream."1
1 Serial No. 75/465,778, filed April 9, 1998, based on
applicant's allegation of a bona fide intention to use the mark
in commerce. During prosecution, applicant stated, in response
to an inquiry from the Examining Attorney regarding the meaning
of applicant’s mark, that, to applicant’s knowledge, the mark has
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/465,778
2
The Examining Attorney has made final a refusal of
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d). The ground is that applicant's mark, if
used in connection with the identified goods, would be
likely to cause confusion or mistake or to deceive
consumers, in view of the prior registration of the mark
VITALITE for "frozen yogurt and ice milk."2
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm
the refusal.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion for this case, key
considerations are the similarities of the marks and of the
identified goods, and the number and nature of similar
no meaning in any foreign language. After the Examining Attorney
made an Italian dictionary entry of record, the applicant acceded
to the Examining Attorney’s request that applicant confirm that
VITA is an Italian word that translates in English to "life."
2 Registration No. 1,817,037, issued January 18, 1994 to Vitamilk
Dairy, Inc.; Section 8 and 15 affidavits accepted and
acknowledged, respectively, as of June 22, 1999. The
registration does not include a translation statement.
Ser. No. 75/465,778
3
marks that have been adopted and used on or in connection
with similar goods.
In regard to the goods, applicant has concluded that,
because registrant is a dairy, the goods identified in the
cited registration are "dairy-based" and "originate from a
dairy and are therefore unlikely to be confused with the
non-dairy, soy-based food products of Applicant." The
Examining Attorney, however, has noted that registrant's
goods cannot be read so restrictively and must be presumed
to include both dairy-based and soy-based frozen yogurt and
ice milk. We agree, as our analysis of the similarity or
relatedness of the goods is based on the identifications in
the involved application and registration. See Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990), and Canadian
Imperial Bank of Commerce, National Association v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed.
Cir. 1987). The identification in the registration is not
restricted in any way and could include soy-based products.
Moreover, we agree with the Examining Attorney that it is
likely the same consumers would be exposed to the
identified goods, since registrant's frozen yogurt and ice
milk and, at a minimum, applicant's ice cream are
competitive goods. Cf. In re National Dairy Products
Ser. No. 75/465,778
4
Corporation, 158 USPQ 55 (TTAB 1968) (applicant's mark for
ice cream, ice cream sandwiches and ice cream bars refused
registration in view of similarity to registered mark for
frozen confections).
Finally, while applicant relies to some extent on the
Asian origin of its products, there are no restrictions on
channels of trade in the identification of goods for either
applicant or registrant. Thus, we cannot assume that
applicant's goods will be marketed solely in stores
specializing in Asian products. Rather, we must assume
that applicant's goods will be offered in all the usual
channels of trade for pudding, custard and ice cream,
including channels of trade for registrant's frozen yogurt
and ice milk.
Turning to the marks, the Examining Attorney
essentially argues that VITA is the dominant portion of the
registered mark, because the LITE portion is descriptive of
the reduced-calorie or low-fat nature of registrant's
goods, and that applicant has "appropriated" the dominant
element of registrant's mark. Applicant does not dispute
that its mark consists of the dominant portion of
registrant's mark, though it does note that it already owns
registrations for VITA and for Chinese characters that
Ser. No. 75/465,778
5
translate to VITA.3 In addition, applicant argues that VITA
is weak, "is used in nineteen federally registered marks by
eleven different registrants for food products [and] the
scope of protection for each VITA-formative mark is
narrowed by the crowded filed [sic] of VITA-based marks
used in connection with food-related products."4
The Examining Attorney generally discounts the
relevance of the registrations obtained by applicant,
because they are for marks consisting of “non-Latin”
characters "and/or" are for goods different from those in
3 Applicant claims to own six (brief p. 7) or seven (brief p. 4)
prior registrations for VITA or "design" marks composed of
Chinese characters that translate to VITA. In fact, one of the
prior registrations (No. 1,147,761) is for a mark consisting of
three Chinese characters, and includes a translation statement
that explains that the first two characters are the phonetic
equivalent of "VITA" and the third is "MILK."
Applicant's other registrations for marks consisting of Chinese
characters include varying translation statements. One, No.
1,747,259, states that the characters "transliterate to 'WEI TA'
and this means 'VITA' in English." Another, No. 1,900,795,
states that the Chinese characters "translate to 'Vita'. The
term 'Vita' is a coined expression." Unlike the application now
before us, neither of applicant's two registrations for the
English letters VITA, Nos. 1,833,973 and 1,893,224, includes a
translation statement.
Thus, for purposes of our considering the probative value of
applicant's prior registrations, we consider applicant to have
two prior registrations for VITA, four prior registrations for
Chinese characters which, for those who are bilingual in Chinese
and English, will be pronounced as WEI TA and may translate in
English to VITA, and one prior registration for Chinese
characters which will be translated to VITAMILK.
4 Because applicant's list of these registrations, set forth
infra, omits one of applicant's prior registrations and the cited
registration, we consider the claim to be that there are 21
existing registrations by 11 different registrants for VITA-
formative marks (including applicant's Chinese character marks).
Ser. No. 75/465,778
6
applicant’s current application. However, the Examining
Attorney does not explain why applicant's Chinese character
registrations should be discounted and does not discuss the
relevance of any of the particular third-party
registrations referenced by applicant. In regard to the
third-party registrations, the Examining Attorney only
recites the oft-proclaimed maxim that third-party
registrations are of little probative value because they
are not evidence that the marks shown therein are in use or
that consumers are familiar with them.
Reproduced below is the list of registered marks
supplied by applicant in both its earlier response to an
Office action by the Examining Attorney and its brief on
appeal;5 the "VITA (Design)" marks are applicant's prior
registrations for marks consisting of Chinese characters.
Footnoted material has been added to reflect changes in
status of some registrations, based on information in
Office databases:
5 The Examining Attorney did not object to applicant's failure to
introduce most of this evidence in the proper manner, i.e., its
failure to file copies of the certificates of registration or
printouts from the Office's computerized data base of registered
marks. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974); see also
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Accordingly, we have considered all the registrations.
Ser. No. 75/465,778
7
MARK GOODS/
SERVICES
REG.
NO.
OWNER
VVFP INC VAL
VITA
Canned fruits
and vegetables,
canned fruit
juice for food
purposes,
canned
vegetable juice
for food
purposes,
tomato paste,
tomato sauce,
canned port and
beans
0396814 Hunt-Wesson,
Inc.
LA DOLCE VITA Tomato paste 0552146 Springfield
Sugar &
Products
Company
CAFFE D’VITA
“THE
MAGNIFICENT
CAPPUCINO”
Coffee 1036322 Brad Barry
Company, Ltd.
VITA Processed fish
products
1087024 Vita Food
Products, Inc.
NU VITA6 Breakfast
cereals and
flour
1119745 Nu Vita Foods,
Inc.
VITA (Design) Vegetable based
milk substitute
made from soy
beans
1147761 Vitasoy
International
Holdings,
Limited
VITA LITE Cream and milk
combinations
1469903 Vitamilk Diary,
Inc.
VITA (Design) Vegetable based
food beverage
used as a milk
substitute made
from soya
beans; tofu;
and canned,
dried, soybean
curd
1747259 Vitasoy
International
Holdings
Limited
6 Registration expired on July 3, 2000.
Ser. No. 75/465,778
8
PASTA DELLA
VITA7
Pasta 1758578 Food Services
of America,
Inc.
PIZZA VITA8 Frozen pizza 1797204 Pizza concepts,
Inc.
CHOCO VITA
D’LITE
Cocoa mix 1803344 Paradise Valley
Foods, Inc.
VITA Coffee and tea
drinks
1833973 Vitasoy
International
Holdings
Limited
POMODORI DELLA
VITA9
Tomatoes which
have been
canned, cooked
or otherwise
processed;
tomato paste;
tomato puree
1856352 Food Services
of America,
Inc.
VANA VITA
D’LITE
Non-dairy,
chilled, rice-
based food
beverage with
vanilla
flavoring
1891789 Paradise Valley
Foods, Inc.
VITA Soy-based
beverage used
as a milk
substitute10
1893224 Vitasoy
International
Holdings
Limited
VITA (Design) Coffee and tea
drinks
1900795 Vitasoy
International
Holdings
Limited
7 Registration cancelled under Section 8 of the Trademark Act on
September 20, 1999.
8 Registration cancelled under Section 8 of the Trademark Act on
December 28, 2000.
9 Mark registered on September 27, 1994. The Section 8 affidavit
is overdue, and the grace period for its filing has passed. See
Trademark Rule 2.160.
10 Registration 1,893,224 was issued in two classes, for "soy-
based beverage used as a milk substitute" and "fruit juices,
vegetable juices, and soft drinks." The registration, however,
is the subject of a recent filing in the Office's Post
Registration section; and it appears from the TRAM database that
it is now limited to "fruit juices, vegetable juices, and soft
drinks."
Ser. No. 75/465,778
9
VITA (Design) Soybean curd
desserts,
namely pudding
and custard
1990485 Vitasoy
International
Holdings
Limited
VITA LEAN Fish in patty
form
2041165 Vita Food
Products, Inc.
VITA GREEN Herbal extracts
in capsule
form; dietary
food
supplements;
liquid
concentrates,
namely, health
tonic
concentrates
made from a
honey and
mushroom-like
fungus for use
as a
nutritional
supplement
2087986 Vita Green
Health Products
Company Limited
Applicant analogizes the case at hand to In re
Hamilton Bank, 222 USPQ 174 (TTAB 1984). In that case, an
Examining Attorney refused registration of a stylized
version of the word KEY based on the prior registration of
five KEY-formative marks for various banking services. The
applicant therein entered into the record 15 additional
registrations for KEY-formative marks, for various types of
banking, lending or financial services. The Board stated:
In the case at hand we are presented with a total
of twenty registered marks owned by fourteen
different entities which contain the word "KEY"
in combination with other word and design
elements. Each registration is for some sort of
financial service. Most relate specifically to
banking services; all are related closely enough
Ser. No. 75/465,778
10
so that use of confusingly similar marks to
identify the services would create a likelihood
of confusion.
It is clear that the term "KEY" has been widely
adopted in the financial field. We attribute
this to the suggestive quality of the term as
applied to such services. …Because the term "KEY"
has been widely adopted and registered and
because it may be considered suggestive of the
services in this case, it is a weak element in
the various marks in which it appears.
… The term has weak trademark significance in
this field because of its suggestiveness, which
is evidenced by its widespread adoption and
registration. In the case at hand the
applicant's mark is no more likely to cause
confusion with the five cited registered marks
than the five cited marks are likely to cause
confusion with the fifteen other registered marks
which contain the term "KEY."
Id. at 178-79.
Though the Hamilton Bank case at least appears to
present an apt analogy to the case at hand, the Examining
Attorney made no attempt to distinguish it. Nonetheless,
we find the instant case not as analogous to Hamilton Bank
as does applicant.
First, of the 21 prior registrations of or including
VITA (including the cited registration), three are now
cancelled or expired. A fourth shortly will be cancelled
because a Section 8 affidavit was not filed to maintain it
and it is long past the grace period under the statute for
filing of such affidavit.
Ser. No. 75/465,778
11
Second, we agree with the Examining Attorney's
conclusion that less weight should be given to the five
prior registrations obtained by applicant which are set
forth in Chinese characters, because it is unlikely that
consumers who cannot read Chinese characters will view
these as "VITA" marks. Moreover, even for those who can
read such characters, they may perceive the marks solely as
the pictorial representation of WEI TA and may not make a
further translation into "VITA," as an Italian or English
word.11
Third, the marks in some of the third-party
registrations, e.g., LA DOLCE VITA and CAFFE D'VITA "THE
MAGNIFICENT CAPPUCINO," would clearly be perceived as
Italian phrases, such that the term VITA, as used therein,
would be viewed as an Italian word. The marks in still
other registrations, e.g., VITA for processed fish products
and VITA LEAN for fish in patty form, and even VITALITE in
the cited registration, may be viewed as arbitrary or
suggestive.12
11 See footnote 3, supra, in regard to translation statements in
applicant's prior registrations. See footnote 12, infra in
regard to statements in third-party registrations.
12 The record is unclear as to how members of the public would
view the term "VITA" in many of the previously-registered marks.
As noted earlier, in footnote 3, the translation statements
included in applicant's prior registrations are varied. Also
varying in their explanations of the significance of "VITA" are
Ser. No. 75/465,778
12
In short, this case presents different circumstances
than the Board had to consider in Hamilton Bank, wherein
the "KEY" element of each of the cited and third-party
marks presented the same commercial impression. In this
case, the various third-party marks will not all be readily
perceived as having an identical element. Thus, we do not
view the prior registrations on which applicant relies as
unequivocal evidence that "VITA" is a commonly adopted
element for marks for food products, and one which always
presents the same commercial impression, so that it should
be viewed as weak and entitled to only a narrow scope of
protection.
Finally, we agree with the Examining Attorney that
even if some of the third-party registrations were viewed
as having an identical element, they coexist on the
register because of differences in the goods. In Hamilton
Bank, in contrast, the services covered by the third-party
the third-party registrations referenced by applicant. Some
include a translation statement that acknowledges "VITA" as an
Italian word, while others do not.
We take judicial notice of the following dictionary definitions
of "vita" as an English word and as an Italian word:
vita n, pl vitae : a brief autobiographical sketch (as
in a thesis for a doctorate). Webster's Third New
International Dictionary 2558 (1993); and
vita, n.f. Life; existence; spirit, animation,
liveliness, vitality; livelihood, living; body, waist.
Cassell's Italian/English Dictionary 565 (1977).
Ser. No. 75/465,778
13
registrations were identical or closely related and the
many KEY-formative marks coexisted because of differences
in the marks.13
We readily acknowledge that the existence of numerous
third-party registrations for VITA-formative marks for
numerous food items at first glance appears unusual.14
Nonetheless, as articulated above, we find them largely
able to coexist based on differences in the respective
goods or cumulative differences in the goods and the marks.
However, when consumers who are familiar with registrant's
VITALITE mark for frozen yogurt and ice milk (whether soy-
or dairy-based), encounter VITA for a soy-based ice cream,
we believe confusion is likely. Moreover, even if we
consider the third-party registrations as evidence that the
cited mark is highly suggestive and somewhat weak, the
13 The mere fact that the prior registrations we have considered
in this case all cover various food products does not dictate a
finding that the various VITA-formative marks are for virtually
identical goods or services and therefore coexist based on
differences in the marks. Not all food products are related or
would readily be perceived as having a common source. See Hi-
Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169,
1171-72 (TTAB 1987); see also, Federated Foods, Inc. v. Fort
Howard Paper Company, 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
14 While the Examining Attorney is entirely correct that the
registrations themselves are not evidence of use of the
registered marks in commerce, or of the extent to which consumers
have been exposed to these marks, we note that the registrations
are all either based on use in commerce or have been maintained
through a post registration filing attesting to use in commerce.
Ser. No. 75/465,778
14
owner of a registration for a weak mark still is entitled
to protection against registration by a subsequent user of
a virtually identical mark for closely related goods. See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976).15
Under the circumstances of this case, we resolve any
doubts regarding the registrability of applicant's mark in
favor of registrant. See TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315 (Fed. Cir. 1997).
Decision: The refusal of registration is affirmed.
15 To the extent applicant has relied on its prior registrations
of VITA per se (not in Chinese characters), we note that one of
these two registrations (No. 1,833,973) issued for "coffee and
tea drinks" and the other (No. 1,893,224) was issued in two
classes, for "soy-based beverage used as a milk substitute" and
"fruit juices, vegetable juices, and soft drinks." The latter
registration, however, is the subject of a recent filing in the
Office's Post Registration section; and it appears it is now
limited to "fruit juices, vegetable juices, and soft drinks."
The goods in the current application are different in type than
coffee and tea drinks, juices and soft drinks. The mere fact
that applicant may own registrations for VITA covering these
other goods does not guarantee that applicant will automatically
be able to expand registration of that mark to new types of goods
or services. See In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB
1994).