Morinaga & Co., Ltd.v.Crown Confectionery, Co., Ltd.

Trademark Trial and Appeal Board

Feb 17, 2011

No. 91171726 (T.T.A.B. Feb. 17, 2011)

Hearing: September 23, 2010 Mailed: February 17, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Morinaga & Co., Ltd.
v.
Crown Confectionary, Co., Ltd.
_______

Opposition No. 91171726
to Application No. 78615145
filed on April 22, 2005
_______

Jess M. Collen and Jeffrey A. Lindenbaum of Collen IP for
Morinaga & Co., Ltd.

Steven M. Rabin of Rabin & Berdo for Crown Confectionary,
Co., Ltd.
_______

Before Walters, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Morinaga & Co., Ltd. filed its opposition to the
application of Crown Confectionary, Co., Ltd. to register
the mark shown below for “chewing gum; candy; caramels,” in
International Class 30.1 The application includes the

1 Application Serial No. 778615145, filed April 22, 2005, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91171726
2
statements that “[t]he color blue is claimed as a feature of
the mark” and “[a]ll of the letters are in the color blue.”

As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered mark
shown below as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.
Registration No. 26263962
[Registered September 24, 2002; Sections 8 and 15
declarations accepted and acknowledged]
Goods: “Candy,” in International Class 30
Mark:

Applicant, in its answer, denied the salient
allegations of the claim.

2 Opposer asserted in its pleading an additional trademark registration
and two pending applications, which subsequently matured to
registration. Applicant submitted a copy of opposer’s pleaded
registration no. 3097367 by notice of reliance and, therefore, we
consider that this registration is properly of record and that applicant
has conceded the status and ownership of that registration. However,
opposer discussed only registration no. 2626396 at trial and in its
brief. We consider opposer’s reliance on its additional pleaded
applications/registrations to be waived and we have given them no
consideration. Moreover, had the additional registrations been of
record, we would restrict our likelihood of confusion analysis to
Registration No. 2626396 as it is the most relevant mark in this case.
Opposition No. 91171726
3
Preliminary Issues
1. Applicant’s Counterclaims
Applicant filed counterclaims to cancel the two
registrations pleaded by opposer. On February 7, 2007, the
Board granted opposer’s motion to dismiss the counterclaims
with prejudice. Thus, the counterclaims have not been
addressed further herein.
2. Applicant’s Affirmative Defenses
Applicant asserted in its answer that “international
comity” requires the Board to recognize the registrability
decisions in favor of applicant, vis-à-vis opposer, of the
Korean Intellectual Property Office and the Japanese Patent
Office; and the judgment against opposer on unfair
competition in the Seoul Central District, Civil Division XI
and the Intellectual Property Tribunal, Division 1.
Applicant also asserts affirmatively that the opposition is
barred by United States membership in the World Trade
Organization, which “prohibits the U.S. from giving local
preferences.”
Opposer made of record applicant’s answer to Opposer’s
Interrogatory No. 25, stating that applicant did not intend
to rely on these affirmative defenses. Applicant did not
dispute this statement, nor did applicant address these
affirmative defenses in its brief. Therefore, we consider
Opposition No. 91171726
4
these defenses to have been waived and we have given them no
consideration.3
Moreover, even if we had considered applicant’s
affirmative defense regarding foreign decisions, it is not
well taken. Foreign decisions regarding trademark
registrability in the United States have no effect in the
United States and are not relevant to this opposition
proceeding. See Double J of Broward Inc. v. Skalony
Sportswear GmbH, 21 USPQ2d 1609 (TTAB 1991) and cases cited
therein. Trademark rights are territorial by their very
nature. Applicant is well aware of this as evidenced by its
contention in its brief that the Board should give no effect
to the finding of the Japanese Patent Office regarding the
alleged renown of opposer’s mark.
Opposer objected to the admissibility of the noted
foreign decisions by applicant’s notice of reliance. This
objection is moot, as we have already indicated that the
documents have not been considered. Also, for the reasons
stated, we have given no consideration to any assertion or
reliance by opposer on its use, registration or litigation
pertaining to its pleaded mark in countries other than the

3 Even if we were to consider applicant’s WTO-based affirmative defense,
it is not well taken. The trademark registration opposition system in
the United States provides equal treatment for all opposers and
applicants, regardless of their national origin or status in the United
States.

Opposition No. 91171726
5
United States, including any reference to the renown of its
mark in Japan by the Japanese Patent Office.
3. Opposer’s Objections to Evidence
Opposer objects to the lists of third-party
registrations submitted by applicant by notice of reliance
on the ground that the registrations listed thereon have not
been properly introduced into evidence, have not been
authenticated, and the lists are of no probative value.
Opposer contends that copies of search result lists from the
USPTO’s TESS database are not a proper way of making such
registrations of record. Opposer also objects to (1)
consideration of the third-party registrations submitted by
applicant because applicant has submitted them to establish
use of the registered marks; and (2) consideration of third-
party applications and cancelled registrations because they
are of no probative value.
Opposer’s objection to the admissibility of the lists
of registrations and applications is granted. As opposer
correctly states, third-party registrations may not be made
of record by a mere listing of the registrations; rather, a
copy of each registration from the electronic records of the
USPTO is required. Therefore, we have not considered the
lists of registrations submitted by applicant. An
application, even if properly of record, is evidence only of
the fact that an application has been filed. Interpayment
Opposition No. 91171726
6
Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467 n.6
(TTAB 2003). Similarly, a cancelled registration, even if
properly of record, is evidence only of the fact that the
registration is cancelled.
Applicant has made several third-party registrations
properly of record by submitting, by notice of reliance,
copies of the registrations from the records of the USPTO
TESS database. See, Weyerhaeuser Co. v. Katz, 24 USPQ2d
1230 (TTAB 1992). However, as opposer correctly states,
third-party registrations are not evidence of use of the
marks shown therein, nor are they proof that consumers are
familiar with the marks. Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423 (TTAB 1992).
Thus, the Board has not considered the third-party
registrations for this purpose. On the other hand, third-
party registrations may be relied on to show that a word
common to each of the marks has a readily understood and
well-known meaning and that it has been adopted by third
parties to express that meaning. Ritz Hotel Ltd. v. Ritz
Closet Seat Corp., 17 USPQ2d 1467 (TTAB 1990). Whatever
probative value the properly submitted third-party
registrations may have is discussed in the Board’s analysis
supra.
Applicant has also submitted copies of the specimens of
use from the registration files of a small number of the
Opposition No. 91171726
7
third-party registrations. With respect to the use of these
registered marks, we can not draw any conclusions about the
use of these marks subsequent to submission of the
specimens, the manner or nature of any use, the extent of
any use, or consumer exposure to the marks. As such, these
registrations are of very limited probative value.
In its reply brief, opposer has objected to
consideration of applicant’s trial brief on the ground that
it exceeds the page limitations. The main portion of
applicant’s brief is 49 pages, not including the cover pages
or certificate of service, but including the tables of
contents and authorities. There is a seven-page appendix
attached to the brief. The main text in the brief is
double-spaced in 11-point Times New Roman; and the 53
footnotes and approximately six pages of tables in the main
brief are single-spaced in 10-point Times New Roman.
Trademark Rule § 2.126(b), 37 CFR § 2.126(b), provides:
… Text in an electronic submission must be in at
least 11-point type and double-spaced ….

Trademark Rule § 2.128(b), 37 CFR § 2.128(b), provides:
Briefs must be submitted in written form and must
meet the requirements prescribed in § 2.126. Each
brief shall contain an alphabetical index of cases
cited. Without prior leave of the Trademark Trial
and Appeal Board, a main brief on the case shall
not exceed fifty-five pages in length in its
entirety, including the table of contents, index
of cases, description of the record, statement of
the issues, recitation of the facts, argument, and
summary; …

Opposition No. 91171726
8
Extensive single-spaced footnotes may not be used as a
subterfuge to avoid the page limit. Consorzio del
Prosciutto di Parma v. Parma Sausage Products Inc., 23
USPQ2d 1894, 1896 n.3 (TTAB 1992) (warned that single-spaced
footnotes containing substantial discussion may be viewed as
a subterfuge to avoid page limit). Exhibits or appendices
to a brief are not part of the brief itself and are not
included within the page limit. Harjo v. Pro-Football Inc.,
45 USPQ2d 1789 (TTAB 1998) (raising evidentiary objections
in appendices was not viewed as subterfuge to avoid page
limit; although extensive argument in appendices could be
seen as subterfuge). In addition, evidentiary objections
that may properly be raised in a party’s brief on the case
may instead be raised in an appendix or by way of a separate
statement of objections. Id. See also, Marshall Field &
Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB
1992).
Applicant’s brief is within the noted page limitations.
Applicant’s brief has many single-spaced footnotes and a
table in a type size that is ten-point and smaller. The
footnotes include argument that could have been made in the
body of the brief, although we are not troubled by their
single-spacing, as this is usual in most briefs. However,
rather than undertaking to determine which footnotes should
have been in the body of the brief and whether applicant’s
Opposition No. 91171726
9
brief would then exceed the page limitations, we find, on
balance, that applicant’s brief is an acceptable length and
we have considered it in its entirety.
We have also considered applicant’s appendix to its
brief as it properly contains corrections to its evidentiary
record, a response to opposer’s objections, and its own
objections to opposer’s evidence. Therefore, opposer’s
objection to consideration of applicant’s brief is denied.
4. Applicant’s Objections to Evidence
The testimony of opposer’s witness, Mr. Shimada, was
taken in the form of responses to written questions.
Opposer objected to almost all of applicant’s 79 questions
on cross examination, although Mr. Shimada did respond to
the questions. Opposer failed to renew its objections in
its main brief and applicant, in the appendix to its brief,
requests that opposer’s objections be considered waived. In
its reply brief, opposer states that “[o]pposer maintains
(and does not waive) the objections it raised during the
trial testimony cross-examination of its witness Mr.
Shimada.” (Reply, p. 12.)
Applicant’s request is granted and none of opposer’s
objections to the cross examination questions during the
testimony of Mr. Shimada has been considered. We have given
Mr. Shimada’s answers whatever probative value they merit.
First, the renewal of these objections in opposer’s reply
Opposition No. 91171726
10
brief is too late. Such objections must be renewed in the
main brief so that, in fairness, applicant has an
opportunity to respond. Moreover, opposer’s renewal of its
objections must be specific. Opposer’s general statement
renewing all objections made to testimony is inadequate to
preserve individual objections.
The Record
By operation of the Trademark Rules, the record
includes the pleadings and the file of the involved
application. Opposer submitted a copy of Registration No.
2626396 showing status and title; and the testimony
deposition by opposer of Tetsuo Shimada, opposer’s general
manager of the business development division and head of the
general affairs center of opposer, with accompanying
exhibits. Each party submitted the other party’s responses
to interrogatories and admissions, along with supplemental
responses, by notice of reliance. Applicant also submitted
by notice of reliance, copies of third-party registrations
and specimens of record for some of those registrations, as
discussed infra. Both parties submitted excerpts from
various dictionaries and texts.4 Both parties filed briefs
on the case.

4 The Board has not identified in this section the evidence that is
merely duplicative or that has been excluded or discounted as being of
no probative value, as discussed infra.

Opposition No. 91171726
11
Factual Findings
Opposer is a Japanese company that sells, inter alia,
candy. Opposer sells candy in the United States under the
mark HI-CHEW, shown in a stylized script in its trademark
registration and on packaging. The type of candy currently
sold under this mark is described by opposer’s witness, Mr.
Shimada, as fruit chews.
In 1994, opposer began using a stylized mark in
Japanese Katakana characters in connection with sales of its
fruit chews candy in the United States. A translator note
accompanying the translation of Mr. Shimada’s testimony
explains that the Japanese language consists of Kanji
characters (Chinese characters), Hiragana characters
(characters used for Japanese language words), and Katakana
characters (characters used for non-Japanese words that have
become part of the Japanese language). This fact is
confirmed in the Japanese/English dictionary and text
excerpts of record. It appears from the various
Japanese/English dictionaries submitted by the parties, that
HI-CHEW is a close approximation of the pronunciation of
opposer’s Japanese Katakana character mark.
In April 2004, opposer began using its stylized HI-CHEW
mark in connection with the sales of its fruit chews candy
in the United States. It sells its HI-CHEW candy in candy
displays at 7-11 convenience stores, Costco, Sam’s Club, ABC
Opposition No. 91171726
12
Store and Long’s Drug. The candy is sold in packs costing
from $.63 to $1.29. Opposer submitted as confidential,
information and figures about its annual promotion and
advertising efforts and sales of its HI-CHEW candy in the
United States. These numbers are significant, but there is
no evidence about what constitutes usual annual sales in
this product field, nor is there information about the
nature and extent of consumer awareness of this brand.
Applicant does not have a business presence in the
United States; its does not sell any goods in the United
States under the stylized MYCHEW design mark shown in its
application; and it has done no advertising in the United
States.
The record includes a definition from Merriam-Webster’s
New Collegiate Dictionary (11th ed. 2005) of “chew” as “vt
1. to crush, grind, or gnaw (as food) with or as if with the
teeth: masticate” and “n 1. the act of chewing 2. something
for chewing.”
Analysis
Standing
Because opposer has properly made its pleaded
registration of record, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
Opposition No. 91171726
13
1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
In view of opposer’s ownership of the established valid
and subsisting registration, there is no issue regarding
opposer’s priority. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, the only issue to decide herein is likelihood of
confusion.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be 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. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence.
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
Opposition No. 91171726
14
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein. The relevant du
Pont factors in the proceeding now before us are discussed
below.
The Goods
To support a holding of likelihood of confusion, it is
sufficient that the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods
and/or services, but rather whether there is a likelihood of
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984). The question of
likelihood of confusion must be determined based on an
analysis of the goods and/or services recited in applicant’s
Opposition No. 91171726
15
application vis-à-vis the goods and/or services identified
in opposer’s pleaded registration(s). Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed.
Cir. 1992.
Applicant’s identified goods are “chewing gum; candy;
caramels.” The goods identified in opposer’s registration
for the mark HI-CHEW are “candy.” Thus, there is no
question that the parties’ goods are, in part, identical
(i.e., “candy”). We do not need to consider applicant’s
remaining goods because the fact that one of the products
listed in applicant’s description of goods is identical is
sufficient to support a finding that there is a likelihood
of confusion. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to
be confusion with respect to any items that come within the
identification of goods in the application).
This du Pont factor strongly favors opposer.
Trade Channels, Purchasers and Conditions of Sale
As indicated above, opposer’s and applicant’s
identified “candy” is legally identical. Thus, we must
presume that they are rendered in identical trade channels
and are purchased by the same consumers. The purchasers
comprise the general public, and these ordinary consumers
would use nothing more than ordinary care in making their
Opposition No. 91171726
16
purchasing decisions, particularly in view of the modest
price of the respective goods.
These du Pont factors also favor opposer.
The Marks
Considering, next, the marks, we note that in
determining likelihood of confusion, a lesser degree of
similarity between two marks is required when the marks are
applied to identical goods or services. HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). See
also In re J.M. Originals, 6 USPQ 1393 (1987).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692.
We begin with opposer’s contention that its mark is
famous because fame, when found, is entitled to great weight
in a likelihood of confusion analysis. Recot Inc. v.
Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); Kenner
Parker Toys, Inc. v. Rose Art Indus., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992). In determining whether a mark
is famous, we may consider sales, advertising expenditures,
and the length of time the mark has been used. Bose Corp.
v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
Opposition No. 91171726
17
1309 (Fed. Cir. 2002). This information, however, must be
placed in context (e.g., a comparison of advertising figures
with competitive products, market share, reputation of the
product, etc.). Bose Corp. v. QSC Audio Products Inc.,
supra. We find that opposer’s evidence falls far short of
establishing that its mark is famous. In particular,
opposer has provided no context for its advertising and
sales figures.
To compare the marks at issue, we reproduce them below:
Applicant’s Mark: Opposer’s Mark:

Applicant argues that CHEW is merely descriptive in
connection with opposer’s fruit chew candies and, therefore,
the marks are easily distinguished by the initial syllables
MY and HI. Applicant’s third-party registrations, for
several very different marks containing the word “chew” and
other wording for a variety of goods, are split fairly
evenly between those that contain disclaimers of “chew” and
those that do not. Because of the differences among the
third-party marks, the differences among the identified
goods, including goods similar to candy, and the
inconsistent entry of disclaimers, we draw no conclusions
about the descriptiveness of “chew” from these third-party
registrations.
Opposition No. 91171726
18
Opposer’s witness, Mr. Shimada, referred to the type of
candy sold under the HI-CHEW mark as “fruit chews.” Both
applicant’s and opposer’s goods are identified as “candy,”
which for both applicant and opposer would encompass “fruit
chews” candy. Obviously, a consumer may “chew” a candy as
he or she would any food item. “Chew” is such a common word
and such an obvious action in relation to any food that we
do not find “chew” to merely describe a significant feature
or purpose of the goods. For example, a main purpose of
many dog toys is to provide an outlet for dogs to chew. In
this context, “chew” may be merely descriptive of a
significant feature of a dog toy. However, “chewing” food
is merely incidental to the experience of eating the food.
In this regard, we find that “chew” is suggestive in
connection with candy, but it does not rise to the level of
descriptiveness.
Even though the “chew” portion of the respective marks
is suggestive and, thus, weak, it still remains part of the
mark and we must consider the marks in their entireties.
Moreover, ours is not a simple side-by-side comparison;
rather, we must consider the recollection of the average
purchaser, who is unlikely to see the marks side-by-side and
who normally retains a general rather than a specific
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975).
Opposition No. 91171726
19
In this case, we find that the similarities between the
marks outweigh their differences. The font used for the two
marks is very similar, despite the fact that opposer’s mark
includes an outline around the word. Both marks are
compound words consisting of the word CHEW preceded by two-
letter words/syllables, MY and HI. While MY and HI are
actual words in the English language, as modifiers of CHEW
and in connection with candy, the terms are arbitrary. MY
and HI rhyme, which consumers are likely to remember,
especially since the “Y” and long “I” are phonetically
interchangeable. Opposer’s mark contains a hyphen between
HI and CHEW, but this is of minimal significance, as is the
blue color of the lettering in applicant’s mark.
We find that, when considered in their entireties, the
marks are substantially similar in sound, appearance,
connotation and commercial impression. This du Pont factor
favors opposer.
Conclusion
Having considered all of the evidence and all of the
parties’ arguments, including those not discussed herein, we
find that the du Pont factors, on balance, weigh in favor of
a finding of likelihood of confusion. We conclude that
consumers familiar with opposer’s candy sold under the
stylized design mark HI-CHEW, would be likely to believe,
upon encountering applicant’s stylized design mark MYCHEW,
Opposition No. 91171726
20
that the goods originate from or are associated with or
sponsored by the same entity.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.