Ramar Int'l. Corp.v.San Miguel Corp.

Trademark Trial and Appeal Board

Jul 7, 1999

No. 91091065 (T.T.A.B. Jul. 7, 1999)

Paper No. 49
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Ramar International Corporation
v.
San Miguel Corporation
_____
Opposition Nos. 91,065 and 93,227
to application Serial Nos. 74/207,923 and 74/383,4061
filed on September 30, 1991 and April 23, 1993
_____
R. Gwen Lipsey of Townsend and Townsend and Crew LLP for
Ramar International Corporation.
Francie R. Gorowitz of Ladas & Parry for San Miguel
Corporation.
______
Before Quinn, Hairston and Chapman, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Ramar International Corporation has opposed the
application of San Miguel Corporation to register the mark

1 On August 19, 1998 applicant filed an abandonment, without the
written consent of opposer, of application Serial No. 74/383,406
which is the subject of Opposition No. 93,227. The Board, in an
order mailed March 1, 1999, stated that upon termination of the
consolidated proceedings, judgment would be entered against
applicant in Opposition No. 93,227 under Rule 2.135. In view
thereof, judgment is hereby entered against applicant in
Opposition No. 91,065 and 93,227
2
MAGNOLIA as shown below for ice cream.2
Opposer alleges that since around 1971 it has used the
mark MAGNOLIA in connection with ice cream and that
applicant’s mark MAGNOLIA and design, if used in connection
with the identified goods, so resembles opposer’s MAGNOLIA
mark for ice cream, as to be likely to cause confusion. In
addition, opposer alleges that since at least 1987 applicant
knew of opposer’s use of the MAGNOLIA mark and that
applicant committed fraud on the Patent and Trademark Office
when it filed its application asserting that no other
person, firm, corporation, or association had the right to
use the MAGNOLIA mark in commerce.

Opposition No. 93,227. Thus, our discussion herein is limited to
Opposition No. 91,065.
2 Application Serial No. 74/207,923 filed September 30, 1991,
claiming a bona fide intention to use the mark in commerce.
Opposition No. 91,065 and 93,227
3
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
Opposition No. 91,065 and 93,227
4
The record consists of the pleadings; the file of the
involved application; the deposition (with exhibits) of
opposer’s president and general manager, Primo Quesada; and
opposer’s notice of reliance on certain of applicant’s
responses to interrogatories and requests for admissions.
No testimony or other evidence has been introduced by
applicant. Only opposer filed a brief herein and no oral
hearing was requested.
The record shows that opposer is a family-owned
business which was started in 1969 by Ramon and Maria
Quesada, husband and wife proprietors, who emigrated from
the Philippines. The business began as a single store in
Mountain View, California which sold gift items, wood
carvings, jewelry and food items. At that time, the legal
name of the business was QTE Corporation and the trade name
was Orientex. In the late 1970’s, opposer’s name was
changed to Ramar International Corporation to honor the
founders Ramon and Maria. Opposer’s business has grown
through the years and it is now a million dollar company
with offices and a production facility located in Oakland,
California.
According to opposer’s president, Mr. Quesada, opposer
began selling Philippine style ice cream at its Mountain
View, California store at least as early as 1973. The lids
Opposition No. 91,065 and 93,227
5
on the containers for the ice cream contained the
designation “It’s Magnolia Quality” reproduced below.
Opposer also sold ice cream to other retail stores in the
Southern California area and lids bearing the same
designation were used.
By 1978 opposer had grown to a wholesale operation of
mostly food items. Opposer imported food products from the
Philippines and distributed them to local stores. Also
around this time, opposer began using the mark MAGNOLIA as
shown below on containers for its ice cream as well as in
advertising.
Around 1979 opposer split into wholesale and retail
operations and its customer base expanded to include
distributors in Hawaii, Chicago, Detroit and New York. In
approximately 1984 opposer began manufacturing its own ice
cream products rather than having outside vendors do so. It
Opposition No. 91,065 and 93,227
6
has continued to use the MAGNOLIA mark on all of its ice
cream products.
Opposer has spent hundreds of thousands of dollars in
advertising its products. It has advertised on ethnic
television stations in California, New York, Chicago and Los
Angeles and in the magazine Filipinas.
According to Mr. Quesada, on July 22, 1987, applicant’s
attorney sent a letter to opposer demanding that opposer
stop using the MAGNOLIA mark. In a response dated August 3,
1987 opposer’s attorney advised applicant’s attorney that
opposer had been using the mark for approximately fifteen
years and that it would not discontinue use of the mark for
its ice cream products.
Mr. Quesada also testified that Richard Reynoso was for
many years a distributor of opposer’s MAGNOLIA brand ice
cream to customers in the Southern California area. Despite
this distributor relationship with opposer, Mr. Reynoso
filed a California state trademark application for the mark
MAGNOLIA, claiming that he was the first user and owner of
the mark. After obtaining a state registration, Mr.
Reynoso, in 1991, sued opposer in the Superior Court of
California of Los Angeles and demanded that opposer stop
using the MAGNOLIA mark. The court found that opposer had
priority of use and ordered the California state trademark
registration canceled. Applicant, in its responses to
Opposition No. 91,065 and 93,227
7
opposer’s requests for admissions, admitted that it was
aware of the Reynoso lawsuit and admitted that it
communicated with, cooperated with, and provided financial
assistance to Mr. Reynoso in the suit.
Inasmuch as applicant did not take testimony or offer
any other evidence herein, we have no information concerning
applicant’s business activities.
Turning first to the issue of priority, the testimony
of opposer’s president Mr. Quesada, which is corroborated by
exhibits, shows that opposer has used the MAGNOLIA mark
since well prior to September 30, 1991, the filing date of
applicant’s intent-to-use application, and the earliest date
on which applicant may rely.
Turning next to the issue of likelihood of confusion,
inasmuch as the marks and goods of the parties are
identical, there is no question that there is a likelihood
of confusion. Purchasers familiar with opposer’s ice cream
sold under the MAGNOLIA mark, upon encountering applicant’s
identical MAGNOLIA mark for identical goods, would be likely
to believe that the goods originated from the same source.
We turn finally to opposer’s claim of fraud. Fraud in
procuring a trademark registration occurs when an applicant
for registration knowingly makes false, material
representations of fact in connection with an application to
register. See Torres v. Cantine Torresella S.r.l., 808 F.2d
Opposition No. 91,065 and 93,227
8
46, 1 USPQ2d 1483 (Fed. Cir. 1986). A party making a claim
of fraud against the Patent and Trademark Office is under a
heavy burden since fraud must be proved by clear and
convincing evidence, leaving nothing to speculation,
conjecture or surmise. Further, there is a material legal
distinction between a “false” representation and a
“fraudulent” one, the latter involving an intent to deceive,
whereas the former may be occasioned by a misunderstanding,
an inadvertence, a mere negligent omission, or the like.
See Girard Polly-Pig, Inc. v. Polly-Pig by Knapp, Inc., 217
USPQ 1338 (TTAB 1983) and cases cited therein. In this
case, even though applicant has made no argument against the
claim of fraud, we find that opposer has not proven fraud by
clear and convincing evidence. In particular, it is not
clear that applicant’s representation that it was the owner
of the MAGNOLIA mark was not occasioned by a
misunderstanding or the like. We note, in this regard, that
in the July 22, 1987 letter sent by applicant’s attorney to
opposer’s attorney, it was pointed out that applicant had
made widespread use of the MAGNOLIA mark on ice cream and
other products in the Philippines such that the mark was
well known, and that the MAGNOLIA mark had been displayed in
association with applicant’s products in the United States.
While the use of a mark in a foreign country creates no
rights in the United States, we cannot go so far as to say
Opposition No. 91,065 and 93,227
9
that, based on the record before us, applicant’s
representation that it was the owner of the MAGNOLIA mark
and that no other person, firm, corporation or association
had the right to use the mark in commerce was made with an
intent to deceive. Also, it is not enough that applicant
knew of and even assisted Mr. Reynoso in his lawsuit against
opposer inasmuch as the Court’s finding therein concerned
priority of use of the MAGNOLIA mark vis-à-vis opposer
and Mr. Reynoso. There was no determination of priority
vis-à-vis opposer and applicant, and thus we cannot say
that, as a result of the lawsuit, applicant knew that
opposer possessed superior rights to applicant. In sum,
opposer has not proven fraud by clear and convincing
evidence.
Opposition No. 91,065 and 93,227
10
Decision: Opposition No. 91,065 is sustained under
Section 2(d) of the Trademark Act.
T. J. Quinn
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board