Vitasoy International opposed registration of the mark VITA for "coffee," asserting likelihood of confusion with its registered, identical mark VITA for "tea drinks." Applicant argued that the marks different in sound when the associated trade dress is considered, that "vita" is weak in view of third-party registrations, and that the goods are different and come from different countries and have had different channels of trade for centuries. How do you think this came out? Vitasoy International Holdings Limited v. Caffe Vita, Inc., Opposition No. 91214495 (November 30, 2015) [not precedential].

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Judicial Notice: Opposer requested that the Board take judicial notice of the fact that "prominent beverage chains like Dunkin' Donuts and Starbucks regularly offer both coffee and tea products," and it provided links to the websites of those companies. The Board refused to do so, since "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 be reasonably questions ...." 

The Marks: The Board pointed out 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." Of course, we know that "there is no correct pronunciation of a trademark" (except for common words like apple, black cat, and TTABlog).

Applicant argued that VITA is a weak mark in view of third-party uses and registrations, invoking Juice Generation and Jack Wolfskin. However, only one of the registrations included "tea."

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. *** 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.

Moreover, the vast majority of these third-party marks included matter in addition to the word "vita." "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." 

The goods: The record evidence included 38 active use-based registrations covering both coffee and tea; testimony by Applicant’s president that Applicant’s CAFFE VITA retail outlets sell both coffee and tea; and a Wikipedia entry about Opposer submitted by Applicant that indicates Opposer’s products include both teas and coffee drinks. Applicant provided no evidence that consumers distinguish the source of these goods based on geographic origin. 

Trade Channels: Applicant contended that the goods are sold in different trade channels: "the vast majority of Applicant’s coffee beans are sold at the wholesale level," and "or Opposer “operates in Asian channels of trade for soy products." Even if true, that fact is irrelevant since there are no such restriction in the opposed application or the cited registration. 

The trade channels for the identified goods include wholesale sales to coffee and tea retailers and retail sales to members of the general public. Applicant’s President acknowledged that applicant that both coffee and tea together in its retail outlets.

Therefore the Board concluded that the channels of trade for these goods are "similar," and this factor favored opposer.

Decision: Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.