Vitasoy International Holdings Limitedv.Caffe Vita, Inc.

Trademark Trial and Appeal Board

Nov 30, 2015

No. 91214495 (T.T.A.B. Nov. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Vitasoy International Holdings Limited
v.
Caffe Vita, Inc.
_____

Opposition No. 91214495
to Application Serial No. 85643555
_____

Doreen L. Costa, Suzanne M. Hengl, and Julie Beth Albert of Baker Botts L.L.P. for
Vitasoy International Holdings Limited.

Leslie C. Ruiter and Theresa H. Wang of Stokes Lawrence, P.S. for Caffe Vita, Inc.
_____
Before Zervas, Kuczma and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Caffe Vita, Inc. (“Applicant” or “Caffe Vita”) seeks registration on the Principal
Register of the mark VITA (in standard characters) for coffee in International Class
Opposition No. 91214495

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30 (“Application”).1 Vitasoy International Holdings Limited (“Opposer” or “Vitasoy”)
opposed registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as
likely to cause confusion with its following registered marks:

Mark Reg. No. Reg. Date First Use Goods
VITA 1833973 May 3, 1994 Jun. 24, 1992 Tea drinks (Class 30).
VITA 1893224 May 9, 1995 Oct. 15, 1980 Fruit juices, vegetable juices
(Class 32).

Translation of
record: The
foreign
characters in the
mark transliterate
to “WEI TA”
and this means
“VITA” in
English.
1747259 Jan. 19, 1993 Oct. 15, 1980 Vegetable based food beverage
used as a milk substitute made
from soya beans; tofu; and
soybean curd (Class 29);
Soybean based, non-carbonated,
non-alcoholic drinks; namely,
fruit and vegetable juice
beverages; concentrates for
making non-alcoholic, non-
carbonated drinks, namely, fruit
and vegetable juice beverages;
and extracts of fruits and
soybeans for making non-
alcoholic, non-carbonated
drinks; namely, fruit and
vegetable juice beverages (Class
32).

Translation of
record: The
Ch inese
cha rac t e r s i n
t he mark
translate to
“VITA.”
1900795 Jun. 20, 1995 Jun. 24, 1993 Tea drinks (Class 30).

1 Application Serial No. 85643555, filed June 5, 2012, includes a claim of first use in
commerce on January 1, 1995.
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Translation of
record: The
Chinese
characters in the
mark are
translated in
English as
“VITA.”
1990485 Jul. 30, 1996 Aug. 2, 1995 Soybean curd desserts, namely
pudding (Class 30).

4454517 Dec. 24, 2013 May 1, 2013 Fruit drinks and fruit juices
(Class 32).

In its answer, Applicant denies the salient allegations in the notice of opposition.2
I. Standing and Priority

Opposer must prove standing by showing a real interest in the outcome of the
proceeding and a reasonable basis for believing that it would suffer damage if the
mark is registered. See 15 U.S.C. § 1063; Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1026 (Fed. Cir. 1999). Opposer’s pleaded registrations showing
current status and title set forth above and made of record through its Notice of
Reliance establish its standing.3 See Coach Services v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012).
Because opposer has properly made its pleaded registrations of record, § 2(d)
priority is not an issue in this case as to the marks and the goods covered by these
registration. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182

2 4 TTABVUE.
3 5 TTABVUE at 10-79.
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USPQ 108, 110 (CCPA 1974); Miss Universe L.P. v. Community Marketing Inc., 82
USPQ2d 1562, 1566 (TTAB 2007).
II. Evidentiary Issues and the Record

Opposer moves to strike numerous exhibits in Applicant’s Notice of Reliance and
Supplemental Notice of Reliance.4 Applicant counters each of the grounds of the
motion to strike.5 Even if we were to rule for Applicant on all points raised in the
motion to strike and consider all of Applicant’s evidence, we nonetheless would not
find in Applicant’s favor on the merits. In light of that and given the number and
nature of Opposer’s objections and arguments in its motion to strike, in the interest
of administrative efficiency, we deny the motion to strike and consider all of
Applicant’s exhibits. See Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323,
1326 (TTAB 2011) (evidentiary estoppel sanction may be denied where infractions
do not prejudice opponent).
We address Opposer’s request in its Trial Brief for judicial notice of the fact that
“prominent beverage chains like Dunkin’ Donuts and Starbucks regularly offer both
coffee and tea products,” for which Opposer provided links to their respective
websites.6 Judicial notice may be taken of facts not subject to reasonable dispute
because they are generally known or “can be accurately and readily determined
from sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201.
While the Board frequently exercises its discretion to take judicial notice of

4 10 TTABVUE (Opposer’s Motion to Strike).
5 11 TTABVUE (Applicant’s Response to Opposer’s Motion to Strike).
6 18 TTABVUE at 16.
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dictionary definitions or entries from reference works, particularly given the late
timing of the request7 and in view of the nature of this factual assertion about the
retail activity of particular entities, we do not deem it appropriate for judicial
notice. The factual assertion does not appear to be generally known, and the
internet URLs provided for particular retail websites do not constitute the types of
sources whose accuracy cannot reasonably be questioned, as contemplated by the
rule. See UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1874 (TTAB
2011) (rejecting request for judicial notice of webpages); Motion Picture Ass'n of
Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1558 (TTAB 2007) (denying
judicial notice of internet search engine results and eBay postings).
Thus, the record consists of: the pleadings; the file of the opposed application,
trademark application Serial No. 85643555; Exhibits 1-44 from Opposer’s Notice of
Reliance; Exhibits 1-16 from Applicant’s Notice of Reliance; Exhibit 17 from
Applicant’s Supplemental Notice of Reliance; and the testimony deposition of
Michael McConnell, President of Applicant, and accompanying exhibits.
III. Applicable Law

The determination under § 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. duPont, 177 USPQ at 567;
see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). A likelihood of confusion analysis often focuses primarily on the

7 See TBMP § 704.12(b) (June 2015) (requests for judicial notice “should be made during the
requesting party’s testimony period, by notice of reliance accompanied by the necessary
information.”).
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similarities between the marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). With respect to the marks, we must compare them “in
their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting duPont, 177 USPQ at
567). As to the goods, we must determine whether their degree of relatedness rises
to such a level that consumers would mistakenly believe the parties’ goods emanate
from the same source. The comparison of goods must be assessed as they are
identified in the application and registrations. See Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014);
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
IV. Analysis

We focus our analysis on Opposer’s Registration No. 1833973 for the standard
character mark VITA for tea drinks (hereinafter, the Registration) because if we
find no likelihood of confusion with the mark in the Registration, then it follows
there would be no likelihood of confusion with the marks in the other pleaded
registrations, in which the marks and/or the goods bear less similarity to the mark
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and goods in the Application. See In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
Similarity of the Marks VITA and VITA
Turning first to the similarity of the marks, this factor favors likely confusion
because the marks are identical. Majestic Distilling, 65 USPQ2d at 1204. “‘[E]ven
when goods or services are not competitive or intrinsically related, the use of
identical marks can lead to the assumption that there is a common source,’ In re
Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).” Id.
While acknowledging that the marks consist of the same word, Applicant makes
misguided arguments that VITA and VITA differ in appearance and sound.8
Applicant attempts to rely on particular renditions of the standard character marks
at issue and associated trade dress with which they are sometimes used to limit the
depiction of the marks and to argue that the appearance differs. However, we reject
Applicant’s proffered distinctions because “[r]egistrations with typed drawings are
not limited to any particular rendition of the mark and, in particular, are not
limited to the mark as it is used in commerce”. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). “It is settled ... that
distinction in trade dress cannot weigh against likelihood of confusion with respect
to the registration of a simple word mark .... The reason is that such dress might
well be changed at any time; only the word mark itself is to be registered.”

8 Given our focus on the standard character VITA registration, we need not reach the
arguments relating to Opposer’s other registrations that include Chinese characters.
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Kimberly-Clark Corp. v. H. Douglas Enters., 774 F.2d 1144, 227 USPQ 541, 543
(Fed. Cir. 1985).
Applicant contends that the identical VITA marks differ in sound because
Opposer’s mark would be pronounced with a long “I” sound, while its mark would be
pronounced with a short “I” sound. As support for this factual contention, Applicant
first points to the alleged transliteration of Chinese characters that appear in
Opposer’s other registrations of marks but not the standard character VITA
Registration on which we base our analysis. Thus, the Chinese character
considerations are irrelevant. See id. Applicant also points to a design it calls a
“Pulcinella,” an “Italian character” that is not part of the mark in the Application,
but that Applicant claims to use on at least some of its coffee packaging. According
to Applicant, the design proves that consumers would pronounce VITA in the
Italian manner.9 As an initial matter, Applicant provides no proof that the design of
an older man in a hat would be recognizable by consumers as the Italian Pulcinella
character.10 In addition, we decline to limit either the mark in the Application or
the Registration based on particular examples of their use in commerce. See id.
Turning back to the proper consideration of the identical VITA standard character

9 19 TTABVUE at 13-15.
10 In fact, the figure lacks some of the typical characteristics attributed to the stock
Pulcinella character of the commedia del’arte, who is “depicted as large, shambling, and
stupid-looking, dressed in a loose white shirt and very full trousers.” We take judicial notice
of the Encyclopedia Britannica Online entry for “Punch” or “Pulcinella” (accessed November
19, 2015 at http://www.britannica.com/topic/Punch-puppet-character). Moreover, outside a
theatrical context, the features of Applicant’s character design seem rather nondescript and
unlikely to be recognized by consumers as pointing uniquely to the Italian version of the
stock character, who apparently also has similar adaptations in other European countries.
See id.
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marks, we conclude that they sound identical, as we remain mindful that “there is
no correct pronunciation of a trademark, and consumers may pronounce a mark
differently than intended by the brand owner.” In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1912 (Fed. Cir. 2012).
Clearly, the identical nature of these marks in appearance, sound, and
commercial impression weighs heavily in favor of likely confusion.
Number and Nature of Similar Marks in Use on Similar Goods
Applicant argues that the duPont factor focusing on the number and nature of
similar marks in use on similar goods means that the VITA mark in the
Registration must be considered “weak and entitled to a narrow scope of
protection.”11 Applicant introduced a number of printouts of search results,
registrations and applications from the USPTO database in support of its claim.
Applicant indicates that it intends its TESS listings and “representative” printouts
of some registrations to show “widespread registration of marks utilizing the word
‘vita’ in conjunction with food products, drinks and edible goods,” and responds that
this is an acceptable way to show the term is weak.12 Even where the record lacks
proof of actual third-party use and the extent of third-party use, third-party
registration evidence may show that a term carries a highly suggestive connotation
in the relevant industry and therefore may be considered somewhat weak. Juice
Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675
(Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium

11 19 TTABVUE at 10.
12 11 TTABVUE at 6 (Applicant’s Response to Opposer’s Motion to Strike at p. 5).
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Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). However,
many of Applicant’s examples concern marks registered under §66(a) or §44(e) for
which no maintenance documents evincing use have been filed, see Mucky Duck,
6 USPQ2d at 1470, n.6 (registrations issued pursuant to Trademark Act § 44 “have
very little, if any, persuasive value” for this purpose) or pending applications filed
under the §1(b) intent to use basis with no use allegation filed, see Wet Seal, Inc. v.
FD Management, 82 USPQ2d 1629, 1634 (TTAB 2007) (“An application is not
evidence of anything except that the application was filed on a certain date.”).13 The
probative value of such evidence remains minimal. Similarly, the TESS listings
offered by Applicant do not serve to introduce the listed registrations or
applications, and therefore also have little, if any, persuasive value. See Edom
Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012). Ultimately,
active registrations in evidence that include the term VITA and for which the record
includes a claim of use, consist of: five registrations in International Class 29 for
goods such as fish products, canned tomatoes and olive oil;14 four registrations in
International Class 30 for goods such as pasta, pasta sauces, bakery desserts,
chocolate, and, in one registration for VITA FREE and design, herbal tea and
coffee;15 and ten registrations in International Class 32 for goods such as powders

13 For example, Registration Nos. 3927925, 4359701, and 4647018 registered under §66(a)
and lack any affidavit of use under §71. Reg. Nos. 4572574 and 4416991 registered under
§44(e) and lack an affidavit of use under §8. Application Serial Nos. 86054540, 86189602
and 85467383, intent to use applications, have no statement of use filings.
14 8 TTABVUE 208-238.
15 Id. at 251-273; VITA FREE and design Registration No. 4614781 covers a variety of food
products, including caffeine-free coffee and herbal tea.
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used in the preparation of fruit and tea flavored drinks, juices, smoothies, syrups for
making soft drinks, coconut water, meal replacement drinks, energy drinks, and
soda pops.16
Considering our focus on the Registration, which identifies only tea drinks, we
note that with the exception of a single registration, Applicant’s third-party
registration evidence does not involve the same goods as are in the Registration.
Thus, unlike in Juice Generation and Jack Wolfskin, where the third-party evidence
involved the very same restaurant services and clothing at issue, here the third-
party registration evidence relied upon relates to a broader range of goods, a variety
of food and beverage products. Although weakness may be shown by extensive use
on similar, as well as identical goods, we do not agree with Applicant that many of
these goods qualify as similar. Separately, in arguing against relatedness, Applicant
itself describes various beverages as “entirely different products marketed to
different consumers.”17 We find this evidence only somewhat probative as to alleged
suggestiveness of the term in relation to tea drinks. In addition, the third-party
evidence here appears less voluminous than that in Juice Generation, which
addressed at least 26 uses or registrations of the same phrase for restaurant
services.18 Finally, unlike the Application and Registration at issue in this case, the
vast majority of these third-party registrations do not consist solely of the term

16 Id. at 286-318.
17 19 TTABVUE at 17.
18 Neither the Court nor the Board in Jack Wolfskin provided a number of registrations or
uses under consideration, though the Court referred to the evidence as “voluminous.” Jack
Wolfskin, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).
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VITA. Instead, they include other distinguishing matter, such as additional wording
or a design. Thus, given the smaller number of 19 active registrations with claims of
use in commerce and the lesser degree of relevancy to the marks and goods at issue,
we find the evidence for this duPont factor weighs only very slightly against likely
confusion.
Relatedness of the Coffee and Tea Drinks
Goods need not be identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the goods are related in some
manner or that some circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under circumstances which would
give rise, because of the marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same producer or that there
is an association between the producers of each party’s goods. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991), and the cases cited therein. If the marks of the
respective parties are identical as they are here, the relationship between the goods
need not be as close to support a finding of likelihood of confusion. In re Shell Oil
Co., 26 USPQ2d at 1689.
Turning to the relatedness of Applicant’s coffee to Opposer’s tea drinks, the
evidence includes: 38 active use-based registrations covering both coffee and tea;19
testimony by Applicant’s president that Applicant’s CAFFE VITA retail outlets sell

19 5 TTABVUE at 80-159.
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both coffee and tea;20 and a Wikipedia entry about Opposer submitted by Applicant
that indicates Opposer’s products include both teas and coffee drinks.21 Third-party
registrations which cover the same types of goods and are based on use in commerce
suggest that the listed goods may emanate from the same source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Applicant makes the
obvious point that they are different products, but goes on to argue that although a
U.S. store might sell both coffee and tea drinks, “coffee beans and tea leaves come
from different countries and have been distributed in vastly different channels of
trade for centuries.”22 First, Applicant points to no supporting evidence and makes
no showing that consumers necessarily distinguish source based on the geographic
origin of goods. Second, Applicant’s characterizations of the goods as coffee beans
(rather than “coffee”) and tea leaves (rather than “tea drinks”) that are not reflected
in the identifications of goods in the Application and Registration may not be
considered. Octocom, 16 USPQ2d at 1787 (identifications are controlling). We find
that the evidence of Applicant’s and Opposer’s sales of both goods and the third-
party registrations suggesting that numerous entities may provide coffee and tea
under the same mark suffice to demonstrate the relatedness of coffee and tea. Thus,
this factor weighs in favor of likely confusion.

20 15 TTABVUE at 49 (McConnell deposition).
21 8 TTABVUE at 346-351.
22 19 TTABVUE at 17.
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Trade Channels
We presume that Opposer’s “tea drinks” and Applicant’s “coffee,” for which the
identifications contain no trade channel restrictions, travel through all usual
channels of trade. See Cunningham, 55 USPQ2d at 1846. The trade channels for
both products include wholesale sales to coffee and tea retailers and retail sales to
member of the general public.23 Applicant’s claims about the trade channels, such
as that “the vast majority of Applicant’s coffee beans are sold at the wholesale
level,” or that Opposer “operates in Asian channels of trade for soy products,”24 fail
to withstand scrutiny for the same reason. “The authority is legion that the
question of registrability of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant's goods, the particular channels of
trade or the class of purchasers to which sales of the goods are directed.” Octocom,
16 USPQ2d at 1787. Applicant’s President even acknowledged that it sells both
coffee and tea together in its retail outlets.25 Thus, we conclude that the channels of
trade for these goods are similar, and this factor weighs in favor of likely confusion.
Actual Confusion Factors
Based exclusively on testimony by its President, Applicant also argues that it
knows of no instances of actual confusion with Opposer during its approximately 20

23 15 TTABVUE at 24-27, 49-50.
24 19 TTABVUE at 18, 19; see also 15 TTABVUE at 24 (Applicant’s President estimating
that 70% of its business is wholesale and 30% is retail).
25 15 TTABVUE at 49.
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years of sales under the VITA mark.26 See duPont, 177 USPQ at 567 (identifying
seventh and eighth duPont factors as “the nature and extent of any actual
confusion,” and “the length of time during and conditions under which there has
been concurrent use without evidence of actual confusion”). However,
“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value.” In re Majestic Distilling Co., 65 USPQ2d at 1205; see also In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 530 (CCPA 1973) (stating that
self-serving testimony of appellant’s corporate president’s unawareness of instances
of actual confusion was not conclusive that actual confusion did not exist or that
there was no likelihood of confusion); Herbko Int'l v. Kappa Books, 308 F.3d 1156,
64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“[A] showing of actual confusion is not
necessary to establish a likelihood of confusion”). Accordingly, given the nature of
the evidence, we find this factor neutral.
Conclusion
The marks are identical, the goods are related, and they travel in the same trade
channels. Even taking into account the third-party registration evidence as to VITA,
it does not overcome the likely confusion. Considering that the Application and
Registration are not for marks with a shared term along with other distinguishing
matter, but rather are identical marks consisting solely of the term VITA, used on
very similar goods, this factor does not outweigh the others. The neutral lack of
actual confusion factors support neither conclusion. Applicant and Opposer have not

26 19 TTABVUE at 8; 15 TTABVUE at 25.
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presented evidence or argument as to other duPont factors and, accordingly, we also
treat those factors as neutral. Balancing the relevant factors, we consider the
Application likely to result in consumer confusion based on the Registration.
Decision: The opposition is sustained and registration to Applicant is refused.