Vitasoy International Holdings Limitedv.Grupo Corporative Teype, S.L.

Trademark Trial and Appeal Board

Apr 17, 2008

No. 91160172 (T.T.A.B. Apr. 17, 2008)

Mailed: April 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Vitasoy International Holdings Limited
v.
Grupo Corporative Teype, S.L.
_______

Opposition Nos. 91159326 and 91160172
_______

Carole F. Barrett of Howard Rice Nemerovski Canady Falk &
Rabkin for Vitasoy International Holdings Limited.

Howard N. Aronson of Lackenbach Siegel for Grupo Corporative
Teype, S.L.
_______

Before Walters, Rogers and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Vitasoy International Holdings Limited filed
oppositions to the applications of Grupo Corporative Teype,
S.L. to register the marks shown below:
VIVA SOY (standard characters) for “soy-based food
beverage used as a milk substitute,” in
International Class 29, and for “non-alcoholic
beverages made with fruit juice and soy; fruit
beverages having fruit juice and soy,” in

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition Nos. 91159326 and 91160172
2
International Class 32.1 The application includes
a disclaimer of SOY apart from the mark as a whole
and an English translation of VIVA as “alive.”
This application is the subject of Opposition No.
91159326.

for “soy-based food beverage
used as a milk substitute,” in
International Class 29, and
for “non-alcoholic beverages
made with fruit juice and soy; fruit beverages
having fruit juice and soy,” in International
Class 32.2 The application includes a disclaimer
of SOY apart from the mark as a whole and an
English translation of VIVE as “alive.” This
application is the subject of Opposition No.
91160172.

As grounds for opposition in each case, opposer asserts
that applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered marks
shown below as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.3

1 Application Serial No. 78207777 (‘777), filed January 28, 2003, based
upon an allegation of a bona fide intention to use the mark in commerce
in connection with the identified goods.
2 Application Serial No. 78206255(‘255), filed January 23, 2003, based
upon an allegation of a bona fide intention to use the mark in commerce
in connection with the identified goods.

3 Opposer also pleaded ownership of Registration no. 1818116 for the mark
VITASOY (expired) and application Serial No. 76215286 for the mark
VITASOY and design (abandoned). Because Registration No. 1818116 has
expired, we have given it no consideration. Because an application is
only evidence that an application has been filed and, in any event,
Serial No. 76215286 has been abandoned, we have given that application
no consideration.
Opposition Nos. 91159326 and 91160172
3

Registration
Number, Status and
Information
Goods Mark
1868942

Registered 12/20/1994;
Renewed; Section 15
affidavit filed and
acknowledged
Tofu, in International
Class 29
VITASOY
2574498

Registered 5/28/2002;
Section 8 & 15
affidavits accepted
and acknowledged
Soya bean milk, in
International Class 29
VITASOY
1830741

Registered 4/12/1994;
Renewed;
Section 15 affidavit
filed and
acknowledged.

“The foreign
characters in the mark
transliterate to ‘wac
tab nab’ which means
‘vitasoy’ in English.”
Soybean-based non-
carbonated, non-
alcoholic drinks;
namely, fruit and
vegetable juice
beverages, in
International Class 32

2765529

Registered 9/16/2003
Fresh tofu; soy
beverages, namely, soy
based beverage used as
a milk substitute, in
International Class
29;

Tofu desserts, namely,
tofu based puddings
and custards made with
soy; soy beverages,
namely, teas made with
soy, in International
Class 30

In opposition no. 91160172 only, opposer asserts the
following additional registrations:
Registration No.,
Status and
Information
Goods Mark
1833973

Tea drinks, in
International Class 32
VITA
Opposition Nos. 91159326 and 91160172
4
Registered 5/3/1994;
Renewed; Section 15
affidavit filed and
acknowledged
1893224

Registered 5/9/1995;
Renewed; Section 15
affidavit filed and
acknowledged
Fruit juices,
vegetable juices, in
International Class 32
VITA

Applicant, in each of its answers, denied the salient
allegations of the respective notices of opposition.
The Record
The record in these consolidated cases consists of the
pleadings in both proceedings; the files of the involved
applications; certified status and title copies of the
pleaded, active registrations, all made of record by
opposer’s notice of reliance; and the testimony depositions
on written questions by opposer of Ah Hing (Paggie) Tong,
opposer’s corporate secretary, and Angela Ip, opposer’s
subsidiary’s National Sales and Marketing Manager, Ethnic
Division, both with accompanying exhibits. Applicant filed
no testimony or other evidence and only opposer filed a
brief.
Factual Findings
Vitasoy USA Inc. (“VUSA”) is opposer’s wholly-owned
subsidiary with offices and manufacturing facilities in the
United States. VUSA manufactures, markets, distributes and
sells opposer’s food and beverage products in the United
States, focusing on soy-based food and beverage products,
Opposition Nos. 91159326 and 91160172
5
including soy milk. VUSA also imports VITA teas and juice
drinks from its parent for sale in the United States. VUSA
has been selling soy milk and other soy-based beverages in
the United States under the VITASOY mark, including in
Chinese characters, since 1980. From the same date, VUSA
has been selling tea and juice drinks in the United States
under the VITA mark, including in Chinese characters. The
VITASOY line has been expanded since 1980 to include tofu.
Opposer’s products are sold in supermarkets, including
Whole Foods, Costco and Walmart, smaller specialty stores,
including 99 Ranch Market, and health food stores.
Opposer’s products range in price from approximately $.99 to
$2.29. Opposer conducts extensive advertising in a variety
of media, including print, television, radio, point-of-
purchase and online. Opposer advertises extensively, e.g.,
it spent $2.5 million in advertising in the past fiscal
year.4
Analysis
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton

4 While opposer alleges in its brief that its marks are famous and the
evidence shows substantial advertising expenses, we find the record
insufficient to support a finding that opposer’s marks are famous.
Opposition Nos. 91159326 and 91160172
6
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, Section 2(d) priority is not an
issue in this case as to the marks and goods covered by said
registrations. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
In considering the question of likelihood of confusion,
it is our opinion that the most pertinent of opposer’s marks
are Registration No. 2574498 (‘498) for the mark VITASOY in
standard character format for soybean milk, and Registration
No. 2765529 (‘529) for the mark VITASOY and design for a
variety of soy and tofu-based products, including a soy-
based beverage used as a milk substitute and teas made with
soy. Therefore in the remainder of our analysis, we will
focus our discussion on these marks and registrations.
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

Opposition Nos. 91159326 and 91160172
7
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
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
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.
With respect to the goods of the parties, we observe
that there is a substantial overlap in the goods identified
in the applications and in the ‘498 and ‘529 registrations.
First, both of the applications and opposer’s ‘498
registration for the mark VITASOY and ‘529 registration for
the stylized mark VITASOY, include a soy-based beverage used
as a milk substitute. Applicant’s goods in International
Class 29 are identical to the same goods in opposer’s
registrations and closely related to the soy-based, non-
alcoholic fruit juice beverages in International Class 32.
Thus, we conclude that the applications and opposer’s
registrations include goods that are either identical or
closely related.5

5 The ‘529 registration includes tofu and tofu desserts, and we note
that the record does not establish a relationship between these goods
and applicant’s goods. However, that is of no moment as the ‘529
Opposition Nos. 91159326 and 91160172
8
Further, both opposer’s and applicant’s identifications
of goods are broadly worded, without any limitations as to
channels of trade or classes of purchasers. We therefore
must presume that the goods of applicant and opposer are
sold in all of the normal channels of trade to all of the
usual purchasers for goods of the type identified. See
Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). In other words, we conclude
that the channels of trade and classes of purchasers of the
parties’ goods are the same. Additionally, we note that the
classes of purchasers encompass all general consumers; and
that these are not expensive products that will be subject
to close scrutiny upon purchase.
Considering, now, the marks involved herein, we note
that where marks appear on identical goods, the degree of
similarity of the marks necessary to support a conclusion of
likelihood of confusion decreases. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992). Moreover, while we must base our
determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a

registration also contains goods that are identical to some of the goods
in the two applications. See 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).
Opposition Nos. 91159326 and 91160172
9
conclusion on the issue of confusion, “there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Considering, first, applicant’s two marks, the mark in
the ‘777 application consists of the term VIVA SOY in
standard character format. The mark in the ‘255 application
consists of the term VIVE SOY in stylized form with the word
VIVE above the word SOY, with both words appearing in lower
case letters in a nondistinctive font style, and with a leaf
design incorporated into the “Y” in SOY and underlining that
term. Both VIVA and VIVE translate into English as “alive.”
Opposer’s marks consist of the term VITASOY in standard
character format and in a stylized form. Opposer’s stylized
mark includes nondistinctive script, a slight arch to the
wording, and a design of leaves on a branch in the “O” of
SOY.
Both the standard character and stylized marks of the
parties have differences in sound, appearance and
connotation. For example, the two words VIVA/VIVE and SOY
are separated in applicant’s marks, whereas opposer’s marks
are a single word, VITASOY; and VIVA/VIVE in applicant’s

Opposition Nos. 91159326 and 91160172
10
marks has a distinct meaning, while the VITA portion of
opposer’s marks is not an English word, although it may
suggest the word “vitamin.”
However, there are also substantial similarities in the
marks. The word portion of applicant’s standard character
mark, VIVA SOY, differs from the word portion of opposer’s
marks, VITASOY, by only a single letter in the middle of the
mark and by the space between the two words. We find these
distinctions are of little significance.
Both applicant’s VIVE SOY design mark and opposer’s
marks consist of a four-letter word beginning with “VI,”
followed by a consonant/vowel combination, and this
combination is followed by the word SOY. Further, the
significant design element in the parties’ respective design
marks consists, conceptually, of what is probably a soybean
plant leaf or leaves. We note that the test is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this context,
Opposition Nos. 91159326 and 91160172
11
we find that the similarities among the marks outweigh the
dissimilarities. Therefore, we find the overall commercial
impressions of the parties’ marks are substantially similar.
With respect to opposer’s ‘498 and ‘529 registrations,
having considered the record and the relevant likelihood of
confusion factors, we conclude that in view of the
substantial similarities in the commercial impressions of
applicant’s two VIVA/VIVE SOY marks and registrant’s VITASOY
marks, their contemporaneous use on the identical or closely
related goods involved in these two oppositions is likely to
cause confusion as to the source or sponsorship of such
goods.
Decision: Both of the oppositions are sustained.