Goya Foods, Inc. v. George Lage De Assis Rocha, 91247918

• Decision Date: 19 July 2021
• Docket Number: 91247918
• Parties: Goya Foods, Inc. v. George Lage de Assis Rocha
• Court: Trademark Trial and Appeal Board

Goya Foods, Inc. v. George Lage de Assis Rocha

No. 91247918

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 19, 2021

This Opinion is Not a Precedent of the TTAB

A John P. Mancini, Amy E. Carroll and Jonathan W. Thomas of Mayer Brown LLP, for Goya Foods, Inc.

Kevin J. Keener and Rishi Nair of Keener & Associates, P.C. for George Lage de Assis Rocha.

Before Zervas, Bergsman and Coggins, Administrative Trademark Judges.

OPINION

Zervas, Administrative Trademark Judge

George Lage de Assis Rocha ("Applicant") is the owner of application Serial No. 88117538, filed on September 14, 2018 seeking registration on the Principal Register pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), of the standard character mark GOLA FOODS for "health food supplements" in International Class 5.^[1] The application contains a disclaimer of the term FOODS.

In its Notice of Opposition, ^[2] Goya Foods, Inc. ("Opposer") asserts "long-standing use of the marks GOYA and GOLLA as well as the trade name and mark GOYA FOODS (collectively, the 'GOYA Marks') in the United States in connection with a wide variety of food products … for over eighty years," and ownership of the following registrations for standard character or typed-form^[3] marks:^[4]

Mark

Reg. No.

Goods

Reg. Date

GOLLA

5100642

processed vegetables in International Class 29

Dec. 13, 2016

GOYA

0764033

coffee, and edible olive oil in International Class 29 and 30

Jan. 28, 1964 (renewed)

GOYA

0962193

beef stew, vienna sausage, canned fruit juices, cereal, corn meal, hominy, crackers, edible oils, corn oil, olive oil, fruit syrup, grape juice, jellies and preserves, mayonnaise, olives, rice, soups, spaghetti, spices, salt, pepper, oregano, vinegar, flavoring extracts, meat sauce, sweet chocolate, tomato sauce, cheese, cream of coconut, canned vegetables, papaya nectar, peach nectar, guava nectar, spaghetti and meat balls, meat sauce and condiment, breadfuit; prepared sea food-namely, shrimp, spiced shrimp, and canned fish, pasteles, Puerto Rican sancocho, fruit cocktail, prepared coconut, and flan custard in International Class 29, 30 and 32

June 26, 1973 (renewed)

GOYA

2502127

processed fruits and vegetables; dried fruits and vegetables; meats; seafood and fish; applesauce and cranberry sauce; processed olives; dried corn husks; snack foods, namely, plantain chips, potato chips, yucca chips and pork rinds; processed nuts and processed edible seeds; jams, jellies and fruit preserves; pickles; processed garlic, processed artichokes; processed pimentos; tomato paste; processed hot peppers; soups; meat extracts, and bouillon; edible oils and fats; prepared entrees consisting primarily of meat, poultry, fish or vegetables; milk; cheese; and lard in International Class 29

Oct. 30, 2001 (renewed)

GOYA

3570054

applesauce; artichoke paste; bouillon; cheese; cheese food; chili; cranberry sauce; dairy products excluding ice cream, ice milk and frozen yogurt; dried fruit and vegetables; dried fruit mixes; dried fruits; dried meat; edible fats; edible oils; fish; fish croquettes; frozen fruits; frozen vegetables; fruit paste; fruit preserves; fruit-based snack food; instant or pre-cooked soup; jams; lard; meat; meat extracts; milk; olive oil; pickled vegetables; pork; pork rinds; poultry; preserved fruits; processed artichokes; processed coconut; processed meat; processed olives; processed vegetables; seafood; snack mix consisting primarily of processed fruits, processed nuts and/or raisins; soups; vegetable chips; vegetable oils; vegetable-based snack foods; vegetable, fish, and meat croquettes in International Class 29;

alimentary paste; bakery desserts; bakery goods; barbecue sauce; burritos; candy; capers; chocolate; chocolates and chocolate based ready to eat candies and snacks; cocoa; coffee; corn fritters; custards; dumplings; empanadas; enchiladas; fajitas; fish dumplings; flour; food seasonings; frozen confections; grain-based food beverages; grain-based snack foods; hominy; honey; hot sauce; marinades; mixes for bakery goods; mixes for making batter for hushpuppies; mixes for making batters for fried foods; noodles; pastries; pepper; picante sauce; rice; rice-based snack foods; salsa; sauces; seasoned coating for meat, fish, poultry; seasoned coating mixtures for foods; seasonings; snack cakes; spices; taco chips; tacos; tamales; tapioca; tomato sauce; tortilla chips; tortillas; vinegar; wine vinegar in International Class 30; and

fruit nectars; fruits drinks and fruit juices; nonalcoholic malt beverage; soft drinks; syrups for making soft drinks; vegetable juice in International Class 31

Feb. 3, 2009 (renewed)

GOYA

1354559

malta, namely a non-alcoholic malt beverages in International Class 32

Aug. 13, 1985 (renewed)

GOYA

3825092

computerized on-line retail store services in the field of foods and beverages; retail grocery stores; retail store services featuring foods and beverages in International Class 35

July 27, 2010 (renewed)

GOYA

4884552

distributorship services in the field of foods and beverages; wholesale food distributorship services” in International Class 35

delivery of goods; distribution services, namely, delivery of foods and beverages; packing, crating and warehousing services; Storage and delivery of goods; transport and delivery of goods; warehousing services; warehousing services, namely, storage, distribution, pick-up, packing, and shipping of foods and beverages in International Class 39

Jan. 12, 2016

Opposer alleges:

12.The grant of a registration to Applicant for the GOLA Application should be denied based on a likelihood of confusion as a result of the prior existing GOYA Marks and applications that are used in connection with substantially identical in part, and related in part goods. [See Trademark Act Section 2(d), 15 U.S.C. § 1052(d).]

13.The GOLA Mark sought to be registered is further likely to cause dilution of the distinctive qualities of certain of the registered GOYA Marks which would cause irreparable damage and injury to Opposer and the purchasing public. [See Trademark Act Section 43(c), 15 U.S.C. § 1125(c).]^[5]

Applicant denied Opposer's salient allegations in its Answer to the Notice of Opposition and raised acquiescence as an affirmative defense as well as certain other "affirmative defenses"^[6] which are merely amplifications of Applicant's denials.

Only Opposer filed a brief^[7] Applicant therefore has waived its affirmative defense of acquiescence. See Miller v Miller, 105 U.S.P.Q.2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. Am. Wine Trade Inc., 104 U.S.P.Q.2d 1224, 1225 n.2 (TTAB 2012).

For the reasons set forth below, we dismiss the opposition on both pleaded grounds.

I. Opposition Dismissed - No Evidence

Other than the pleadings and Applicant's opposed application, which are automatically of record pursuant to Trademark Rule 2.122(b), there is no evidence in the record which we may consider. First, Applicant submitted no evidence. Second, all of Opposer's evidence was submitted late and Opposer did not move to extend or reopen its testimony period.

The Board, in its August 21, 2020 order, set the closing date for Opposer's testimony period to October 5, 2020. On October 6, 2020, Opposer filed its first Notice of Reliance. Although this filing included a certificate of service stating that service was made on Applicant on October 5, 2020, the filing was not made until October 6th.^[8] On October 7, 2020, Opposer filed its second and third Notices of Reliance with a certificate of service showing service on Applicant on October 7, 2020.^[9]

Trademark Rule 2.121(a) states:

The Trademark Trial and Appeal Board will issue a trial order ... assigning to each party its time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.

Because Opposer did not submit its evidence during its testimony period which ended on October 5, 2020, Opposer did not submit any timely evidence into the record. See Baseball Am. Inc. v. Powerplay Sports, 71 U.S.P.Q.2d 1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period given no consideration); Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 701 (2021). "As the plaintiff in this proceeding, opposer bears the burden of proof which encompasses not only the ultimate burden of persuasion, but also the obligation of going forward with sufficient proof of the material allegations of the notice of opposition, which, if not countered, negate applicant's right to a registration." Threshold. TV Inc. v. Metronome Enters. Inc., 96 U.S.P.Q.2d 1031, 1040 (TTAB 2010). Because there is no admission by Applicant nor proof to support Opposer's claims, Opposer's claims must fail. In view thereof, Opposer's claims of likelihood of confusion and dilution are dismissed.

Decision: The opposition is dismissed on both grounds for opposition.

II. Opposition Dismissed on the Merits

In the event a reviewing court disagrees with our finding that all of Opposer's evidence was not timely submitted into the record, we have decided Opposer's claims on their merits.

A. Evidentiary Record

Opposer submitted the following:^[10]

• Opposer's First Notice of Reliance submitting registrations certificates for the above-identified pleaded registrations and corresponding records from the USPTO's TSDR database showing current live status and Opposer's ownership of such registrations (10 TTABVUE 2-61);

• Opposer's Second Notice of Reliance submitting webpages from various news

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