Precedential No. 10: TTAB Sustains "VITAMILK" 2(d) Opposition, Again Rejects a Morehouse Defense

I like to call it the "Toothless Tiger of Trademark Law." Others call it the "Morehouse defense." In this opposition to registration of the mark VITAMILK for "soy beverages, namely, fruit juices and fruit drinks made with soy," the Morehouse defense failed again. On summary judgment, the Board found Applicant's mark likely to cause confusion with the identical mark, previously used by Opposer Green Spot for “a variety of beverage products." Green Spot (Thailand) Ltd. v. Vitasoy Int'l Holdings Ltd., 86 USPQ2d 1283 (TTAB 2008) [precedential].


Applicant did not dispute that concurrent use of the marks in "Latin character" form on these overlapping goods would result in consumer confusion. It contended, however, that its ownership of a registration for the mark shown below (in Chinese characters) for "vegetable based milk substitute made from soya beans" precludes any further harm to opposer under the Morehouse doctrine.


The Morehouse defense, also known as the prior registration 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. v. J. Strickland & Co., 160 USPQ 715 (CCPA 1969). 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."

The issue for the Board, then, was whether Applicant's two versions of its mark (Latin and Chinese) are "essentially the same mark."

Of course, the marks differ "dramatically" in appearance. As to pronunciation, Applicant contended that the first two characters of its Chinese mark would be pronounced "vi" and "ta", and the third character as "lai" or "nai." The Board noted that this "differs significantly from the mark in the subject application, which would be pronounced "vi ta milk."

With regard to meaning, the parties agreed that the first two characters have no relevant meaning in Chinese, and that the third character means “milk.” Applicant argued that it was entitled to rely on the doctrine of foreign equivalents so that the third character would be translated into "milk," and that "this translation, together with the transliteration or sound of the first two characters is essentially the same mark" as VITAMILK. The Board disagreed:

"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 Morehouse analysis. 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."

In any case, the Board continued, "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." Indeed, "the marks differ significantly in their appearance, sound, commercial impression and meaning, any one of which would rule out application of the Morehouse defense."

"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. 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."

The Board therefore concluded that Applicant's marks are not "essentially the same," and that Applicant may not rely on the Morehouse defense.

TTABlog comment: I don't disagree with Board's decision here, but I do think that the Morehouse defense is about as useful as a one-legged man at an arse-kicking contest. It only applies when one already owns a virtually identical registration and therefore doesn't need another registration. Maybe it should be called the "Lesshouse defense" or the "Morehouse non-defense."

Text Copyright John L. Welch 2008.