Quoc Viet Foods – Rhema Law Group®

February 27, 2019

Rhema Law Group Wins Ninth Circuit Appeal for Quoc Viet Foods in “CỐT” Trademark Case

Irvine, CA- February 28, 2019:

Ninth Circuit Appeal Court Reinstates Jury Verdict’s Finding That The “CỐT” Marks Were Valid and Protectable, and Infringed by VV Foods, LLC.

On February 22, 2019, Rhema Law Group Partners’ John D. Tran, Rosalind T. Ong and Of-Counsel Eric Schiffer, succeeded in having the Ninth Circuit Court of Appeals rule in favor of Quoc Viet Foods (“Quoc Viet”), ordering a reversal of the district court’s directed verdict and reinstating the original jury verdict that previously declared Quoc Viet’s “CỐT” trademarks were valid and protectable and that defendant VV FOODS, LLC (“VV FOODS”) infringed the asserted “CỐT” marks.

“We are very pleased with the Ninth Circuit’s ruling that gave proper deference to the original jury verdict, which found that the “CỐT” trademarks were indeed valid and protectable and that VV FOODS infringed those rights by intentionally copying Quoc Viet’s products and “CỐT” marks,” said Tran, Quoc Viet’s lead trial counsel.

Quoc Viet is a leading manufacturer of soup bases that make it convenient to enjoy Vietnamese soup/stews, such as the popular “Pho,“ noodle soup, that traditionally requires a complicated cooking process. For more than 15 years, Quoc Viet has sold and marketed its’ ethnic soup bases under the “CỐT” brand.

Background of District Court Lawsuit & Proceedings

In 2012, Quoc Viet filed a complaint against VV FOODS for intentionally infringing Quoc Viet’s “CỐT” marks thereby causing confusion among consumers. After a six-day trial in March 2016, a jury unanimously ruled in favor of Quoc Viet for trademark infringement, which seemingly resolved a nearly four-year old feud between the companies.

However, later the district court proceeded to vacate the jury’s verdict and directed a verdict instead, finding that the “CỐT” marks were merely descriptive and thus not protectable, and ordering the cancellation of all “CỐT” registrations. Quoc Viet appealed.

Ninth Circuit’s Opinion

Following appellate briefing and oral argument, the Ninth Circuit panel reversed the district court’s decisions in a unanimous opinion, thereby reinstating the jury’s original verdict in favor of Quoc Viet. The Ninth Circuit stated that “the jury, in fact, had substantial evidence from which it could find that the marks were suggestive because they required some ‘exercise of imagination’ due to the play on words of “CỐT’s” multiple meanings that was amplified by intentional grammatical errors…and a jury, could also reasonably found that if the marks were descriptive, they acquired secondary meaning before VV Foods began to use them. Quoc Viet advertised extensively and exclusively used the marks, and VV Foods intentionally copied Quoc Viet’s products and labels with the intent to deceive.”

###

Rhema Law Group is a boutique firm specializing in intellectual property and business law. Visit www.rhemalaw.com

QUOC VIET FOODS, INC. vs. VV FOODS, LLC et. al., No. 17-55331 Opinion (9^th Cir. February 22, 2019).

April 6, 2016

Firm Wins High-Stakes Federal Trademark Jury Trial for Quoc Viet Foods

Rhema Law Group, Corporate Lawyers Orange County Los Angeles Silicon Valley Irvine, CA- April 6, 2016: After a six-day federal trial, Rhema Law Group announces that a jury unanimously ruled, in an 8-0 decision, in favor of its’ client Quoc Viet Foods, Inc. (“Quoc Viet”) for Trademark Infringement against Defendant VV FOODS, LLC (“VV Foods”), which resolved a nearly four-year old feud between the companies revolving around Vietnamese marks containing the word “CỐT.”

The trial team consisting of partners John D. Tran and Rosalind Ong and Of-Counsel William Buus, argued successfully that the way Quoc Viet used the “CỐT” term in connection with its soup base products was distinctive because although it is a common word in the Vietnamese language, it was being used in an unusual way and style.

Currently, Quoc Viet is seeking over $5 million dollars in damages, plus enhanced damages for willful infringement. The damages portion of the case will be handled in a separate upcoming trial. With only about 2% of filed Federal cases ever reaching a jury verdict, a judgment upholding trademarks with Vietnamese terms is very rare and possibly one of the few cases in the country.

Quoc Viet is the leading manufacturer and pioneer of Vietnamese ethnic soup bases and sells its “CỐT” brand of soup base, coffee, tea and smoothie products across the nation in a variety of stores and institutions. Quoc Viet owns numerous registered trademarks containing the Vietnamese term “CỐT,” including its popular “CỐT PHỞ BÒ” and “CỐT PHỞ GA” products. The Defendant, VV Foods, is a competing ethnic soup base manufacturer using Quoc Viet’s trademarks on almost all of their own products.

“This was a ‘bet-your-company’ type of case, akin to a game of high-stakes poker. Both sides were all-in and there’s only going to be one winner standing,” stated Quoc Viet’s trial counsel, John D. Tran. “Defendant’s attack on the “CỐT” trademarks were essentially an attack on our client’s business and goodwill.” “At the end of the day, we believe our case theme and strategy allowed the jury to understand the true nature of the case and ultimately see things our way ,” stated managing partner Rosalind Ong.

“This was a significant victory not just for our company, but for all business owners who invest great resources and time in building a successful business and brand.” states Quoc Viet’s President & CEO Tuan Nguyen. “We are so happy with the results and feel justice was served.”

The case began in December 2012, when Quoc Viet filed a complaint in the Federal District Court of Santa Ana, alleging federal trademark infringement against VV Foods for using its trademarks without permission. At trial, Quoc Viet argued that VV Food’s continued unauthorized use of the same trademarks on their products has caused confusion as to the source of these soup base products with consumers. In defense, VV Foods claimed that Quoc Viet’s “CỐT” trademarks were invalid and not protectable and its’ usage was fair use. At trial, the firm’s trial team which consisted of Partners John D. Tran, Rosalind Ong and Of-Counsel William L. Buus, presented a persuasive case that the “CỐT” marks were inherently distinctive based on the way Quoc Viet uses the “CỐT” term in combination with other Vietnamese words with all of its current products.

After two full days of deliberation, the jury ruled that Quoc Viet’s “CỐT” trademarks were valid and protectable, that VV Foods infringed the “CỐT” trademarks, and that VV Foods’ use was not deemed fair use. Case: Quoc Viet Foods, Inc. vs. VV Foods, LLC et. al., SACV 8:12-CV-02165-CJC.

Related Media Coverage:

Nguoi-Viet Newspaper

Thomson Reuters

###

_________________________

Rhema Law Group is an intellectual property law firm handling matters involving patents, trademarks, copyrights and related business matters. For more information: www.rhemalaw.com.

Media Contact: Rosalind T. Ong, rto@rhemalaw.com