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  • The Morehouse defense argues that the petitioner cannot be damaged by the existence of the disputed mark because of the presence of other unchallenged registrations.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Respondent has asserted a "Morehouse" defense based on its ownership of two previously issued registrations. Respondent essentially contends that petitioner cannot be damaged by the existence of its registration of the mark GOLD SEAL sought to be cancelled herein in light of its other two, unchallenged, registrations of the same mark that will continue to exist. Morehouse Manufacturing Corporation v. Strickland & Co., supra.
  • The Morehouse defense is proper where the existing registration or registrations relied upon are for the same or substantially identical mark and the same or substantially identical goods and/or services as the challenged registration.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • The defense is proper where the existing registration or registrations relied upon are for the same or substantially identical mark and the same or substantially identical goods and/or services as the challenged registration. O-M Bread, Inc. v. United States Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995); Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing Corp., 481 F.2d 1342, 179 USPQ 81 (CCPA 1973); Key Chemicals, Inc. v. Kelite Chemicals Corp., 465 F.2d 1040, 175 USPQ 99 (CCPA 1972); La Fara Importing Co. v. F. Lil de Cesso di Filippo Fara S. Martino S.p.A., 8 USPQ2d 1143 (TTAB 1988); Mason Engineering and Design Corp. v. Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985); and Liberty & Co., Ltd. v. Liberty Trouser Co. Inc., 216 USPQ 65 (TTAB 1982).
  • Marks used in support of a Morehouse defense must be Federally registered marks.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • In regard to the second argument referenced above, i.e., that prior adoption and use by applicant's president and other shareholders in applicant of one or more of various Hornblower marks precludes a finding of priority in opposer in regard to the HORNBLOWER & WEEKS mark, we consider this as an allusion to a possible defense based on the Morehouse decision or on "tacking." The Morehouse defense, however, is inapplicable, as applicant does not claim that any of the Hornblower marks to which it has made reference have been registered. Likewise, this is not a case where tacking is applicable, since none of the referenced marks is the legal equivalent of HORNBLOWER & WEEKS. See Van Dyne-Crotty, supra, 17 USPQ2d at 1868.
  • Ownership of prior registrations do not preclude petitioner from contesting a mark where the goods and services listed for the registered marks and the contested application are different.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Nevertheless, the goods in the involved registration clearly are different from the goods and services listed in the prior registrations. Thus, respondent's ownership of the two prior registrations cannot serve to preclude petitioner from contesting respondent's right to maintain the registration petitioner seeks to cancel. TBC Corporation v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989).
  • As a matter of law, the doctrine of foreign equivalents does not apply to a foreign mark partially comprised of characters that have no English translation, at least with respect to a Morehouse analysis.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • As a matter of law, the doctrine of foreign equivalents does not apply to a foreign mark partially comprised of characters that have no English translation, at least with respect to a Morehouse analysis.
  • Case Finding: Here, the Chinese character mark is a stylized representation of three Chinese characters that creates a commercial impression wholly different from that created by the English-language mark. Opposer would still sustain enhanced injury if applicant were allowed to register the mark VITAMILK, because confusion (if any may exist) would no longer be limited to potential purchasers who speak both Chinese and English. In view thereof, there are no genuine issues of material fact that the marks are not "essentially the same," and applicant may not rely on the Morehouse defense.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Here, the Chinese character mark is a stylized representation of three Chinese characters that creates a commercial impression wholly different from that created by the English-language mark. Opposer would still sustain enhanced injury if applicant were allowed to register the mark VITAMILK, because confusion (if any may exist) would no longer be limited to potential purchasers who speak both Chinese and English. In view thereof, there are no genuine issues of material fact that the marks are not "essentially the same," and applicant may not rely on the Morehouse defense.
  • Case Finding: The fact that the first two Chinese characters of the mark have no meaning in English makes the mark overall incapable of translation.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Applicant's Chinese character mark simply cannot be "translated" into English and considered as an English language mark. The fact that the first two characters of the mark have no meaning in English makes the mark overall incapable of translation.
  • Case Finding: Turning to a comparison of applicant's prior Chinese character mark and the mark VITAMILK, there is no question that the marks are dramatically different in appearance. As for the pronunciation of applicant's Chinese registration, applicant contends that the first two characters would be pronounced "vi" and "ta," and the third character would be pronounced "lai" or "nai." This differs significantly in sound from the mark in the subject application, which would be pronounced "vi ta milk."
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Turning to a comparison of applicant's prior Chinese character mark and the mark VITAMILK, there is no question that the marks are dramatically different in appearance. As for the pronunciation of applicant's Chinese registration, applicant contends that the first two characters would be pronounced "vi" and "ta," and the third character would be pronounced "lai" or "nai."6 This differs significantly in sound from the mark in the subject application, which would be pronounced "vi ta milk."
  • Discussion of Continental Nut case which rejected applicant's Morehouse defense.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • The precedent most analogous to the present case is Continental Nut, supra, 181 USPQ at 647. In Continental Nut, the Board, rejecting applicant's Morehouse defense, refused registration of the mark CORDON BLEU for edible shelled nuts on the basis of likelihood of confusion with opposer's prior registration for the mark LE CORDON BLEU for educational services and magazines relating to cooking. The Court affirmed the refusal despite the existence of a prior incontestable registration owned by applicant for the mark BLUE RIBBON for the same goods, because the marks CORDON BLEU and BLUE RIBBON "would not have the same significance to the American public [but would] create different commercial impressions." Continental Nut, 181 USPQ at 647.
  • In considering the closely analogous doctrine of "tacking," the Federal Circuit has held that it may not be necessary to consider all points of potential similarity of the marks (i.e., appearance, sound, meaning and commercial impression) when one factor alone is enough to find that the marks are not legally identical.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • In considering the closely analogous doctrine of "tacking," the Federal Circuit has held that it may not be necessary to consider all points of potential similarity of the marks (i.e., appearance, sound, meaning and commercial impression) when one factor alone is enough to find that the marks are not legally identical. Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991) ("It does not appear that the Board entertained any other evidence concerning the legal equivalence of these two marks except for the visual or aural appearance of the marks themselves. However, no more was necessary. Merely from review of the marks, it is clear that they create different commercial impressions." (citations and footnote omitted)).
  • In order for the Morehouse doctrine to apply, whatever injury opposer may have sustained or may sustain from the registered mark cannot be increased by registration of a second mark.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • In order for the Morehouse doctrine to apply, whatever injury opposer may have sustained or may sustain from the registered mark cannot be increased by registration of a second mark.
  • Morehouse requires that the marks be essentially the same rather than merely confusingly similar - a more stringent requirement than might be necessary to support a likelihood of confusion claim.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • In Palm Bay, supra, the doctrine of foreign equivalents was applied (directly) to a likelihood of confusion analysis. However, even a case where the doctrine of foreign equivalents may equate the meaning of two marks being compared, a likelihood of confusion may still not be found. See e.g., In re Sarkli, Ltd. 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983)("[S]uch similarity as there is in connotation [between the marks REPECHAGE and SECOND CHANCE] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.") Again, we note that Morehouse requires that the marks be essentially the same rather than merely confusingly similar - a more stringent requirement than might be necessary to support a likelihood of confusion claim.
  • The Morehouse defense is an equitable doctrine that applies where an applicant owns a prior registration for essentially the same mark identifying essentially the same goods or services that are the subject mark and goods of the proposed application.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • The Morehouse defense is an equitable doctrine that applies where an applicant owns a prior registration for essentially the same mark identifying essentially the same goods (or services) that are the subject mark and goods of the proposed application. Morehouse Mfg. Corp., 160 USPQ 715 (CCPA 1969).
  • The opposer cannot be further injured because there already exists an injurious registration and therefore the additional registration does not add to the injury.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • In such case, "the opposer cannot be further injured because there already exists an injurious registration," and therefore the additional registration does not add to the injury. O-M Bread, Inc. v. U.S. Olympic Comm'n, 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995); see also 3 McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition § 20:38 (4th ed. 2007); and TBMP § 311.02(b)(2d ed. rev. 2004).
  • Where the marks are so different in their visual impressions, and even the marks are similar in pronunciation or meaning, any similarities are outweighed by the differences.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • The marks in the present case, like those in Continental Nut, create wholly different commercial impressions; here the marks are so different in their visual impressions that even if we were to agree with applicant that the marks are similar in pronunciation or meaning, any similarities are outweighed by the differences.
  • Where the marks differ significantly in their appearance, sound, commercial impression and meaning, any one of which would rule out application of the Morehouse defense.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • In the case at bar, the marks differ significantly in their appearance, sound, commercial impression and meaning, any one of which would rule out application of the Morehouse defense.
  • Whether opposer will suffer added damage from registration of applicant's mark can be determined by comparing the appearance, pronunciation, meaning, and commercial impression of the marks.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Whether opposer will suffer added damage from registration of applicant's mark VITAMILK can be determined by comparing the appearance, pronunciation, meaning, and commercial impression of the marks. Ultimately, we must determine if the marks at issue here are "essentially the same" mark. See Continental Nut Co. v. Le Cordon Bleu, 494 F.2d 1395, 181 USPQ 646 (CCPA 1974) (failure of Cordon Bleu cooking school to oppose BLUE RIBBON for nuts does not preclude opposition to CORDON BLEU for nuts); Lincoln Logs, Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992) (failure to object to THE ORIGINAL LINCOLN LOGS with house eaves design does not preclude opposition to LINCOLN LOGS LTD. with profile of Abraham Lincoln and log house design).
  • Judgment on the pleadings does not lie prior to an answer having been filed in the case.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • FOOTNOTE 1 "Judgment on the pleadings does not lie prior to an answer having been filed in the case. See TBMP 504.01 (2d ed. rev. 2004). As no answer was on record when applicant filed his motion to dismiss, the Board did not construe applicant's motion as one seeking judgment on the pleadings."
  • Unlike the laches defense, the question of whether applicant owned the prior registration does not arise with respect to the Morehouse defense.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • FOOTNOTE 5 "Unlike with the laches defense, see discussion infra, the question of whether applicant owned the prior registration does not arise with respect to the Morehouse defense. Even if applicant owned the prior registration, or could show he was a successor in interest to the registrant, because the registration has expired it may not form the basis of a Morehouse defense."
  • Inasmuch as applicant did not file any paper to maintain his registration, his rights in the prior registration were extinguished on the day after its sixth anniversary date.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • Inasmuch as applicant did not file any paper to maintain his registration, his rights in the prior registration were extinguished on the day after its sixth anniversary date. Accordingly, we will not further consider applicant's Morehouse defense.
  • The prior registration or Morehouse defense is an equitable defense to the effect that if the opposer can not be further injured because there already exists an injurious registration, the opposer can not object to an additional registration that does not add to the injury.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • The prior registration or Morehouse defense is an equitable defense, "to the effect that if the opposer can not be further injured because there already exists an injurious registration, the opposer can not object to an additional registration that does not add to the injury." O-M Bread, 36 USPQ2d at 1045 (emphasis added).
  • The proposition for which the Morehouse case stands is that, as a matter of law, an opposer cannot be damaged, within the meaning of Section 13 of the Trademark Act, by the issuance to an applicant of a second registration when applicant already has an existing, unchallenged registration of the same mark for the same goods.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • The proposition for which the Morehouse case stands is that, as a matter of law, an opposer cannot be damaged, within the meaning of Section 13 of the Trademark Act, by the issuance to an applicant of a second registration when applicant already has an existing, unchallenged registration of the same mark for the same goods. See O-M Bread, Inc. v. U.S. Olympic Comm'n, 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995); and TBMP 311.02(b)(2d ed. rev. 2004).
  • A motion for summary judgment requires that a party demonstrate, prior to trial, that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law, while a motion for judgment on the pleadings is a test solely of the undisputed facts appearing in all the pleadings such that the moving party is entitled to judgment as a matter of law.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • A motion for summary judgment requires that a party demonstrate, prior to trial, that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law, while a motion for judgment on the pleadings is a test solely of the undisputed facts appearing in all the pleadings such that the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Baroid Drilling Fluids, Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992); and TBMP 504.02 and 528.01 (2d ed. rev. 2004).
  • Because the injury contemplated under the Morehouse doctrine is injury not from a party's prior use of a mark but rather from the party's ownership of a registration for the mark, it necessarily follows that the registration must be in existence in order to form the basis for the claim of damage, and that an expired registration may not form the basis of a valid Morehouse defense.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • Because the injury contemplated under the Morehouse doctrine is injury not from a party's prior use of a mark but rather from the party's ownership of a registration for the mark, it necessarily follows that the registration must be in existence in order to form the basis for the claim of damage, and that an expired registration may not form the basis of a valid Morehouse defense. Cf. Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) ("It is well established that, pursuant to section 22 of the Lanham Act, a registration provides constructive notice for all use during the existence of the registration. However, a canceled registration does not provide constructive notice of anything.")(internal citations omitted).
  • Applicant argues that he is entitled to rely on the Morehouse defense because the Office did not cancel his registration until after he had already filed a new application for the same mark and goods. However, the date of expiration of applicant's registration is not dependent on the date the Office undertook the ministerial function of entering the cancellation into the USPTO database.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • Applicant argues that he is entitled to rely on the Morehouse defense because the Office did not cancel his registration until March 10, 2007, after he had already filed (on January 2, 2007) a new application for the same mark and goods. However, the date of expiration of applicant's registration is not dependent on the date the Office undertook the ministerial function of entering the cancellation into the USPTO database. The fact that the Office did not enter the information until March 2007 is unavailing.4
Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008) Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006) Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001) Grand Total
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 1
O-M Bread Inc. v. United States Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995) 3
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989) 1
Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992) 1
Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992) 1
Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991) 2
TBC Corporation v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989) 1
La Fara Importing Co. v. F. Lil de Cesso di Filippo Fara S. Martino S.p.A., 8 USPQ2d 1143 (TTAB 1988) 1
Mason Engineering and Design Corp. v. Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985) 1
In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983) 1
Liberty & Co., Ltd. v. Liberty Trouser Co. Inc., 216 USPQ 65 (TTAB 1982) 1
Continental Nut Co. v. Le Cordon Bleu, 494 F.2d 1395, 181 USPQ 646 (CCPA 1974) 1
Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing Corp., 481 F.2d 1342, 179 USPQ 81 (CCPA 1973) 1
Key Chemicals Inc. v. Kelite Chemicals Corp., 465 F.2d 1040, 175 USPQ 99 (CCPA 1972) 1
Morehouse Manufacturing Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969) 2
Grand Total 7 3 8 1 19
No Statutes Listed.