This Opinion Is Not a Precedent of the Ttab
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THIS OPINION IS NOT A PRECEDENT OF THE TTAB Hearing: February 15, 2017 Mailed: July 18, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Win Luck Trading Inc. v. Northern Food I/E Inc. dba Northern Food _____ Cancellation No. 920588251 Cancellation No. 92058903 Cancellation No. 92059010 Cancellation No. 92059339 _____ Kao Lu, Beth Anne Powers, Alison Dudick of Ryder, Lu, Mazzeo & Konieczny LLC, for Win Luck Trading Inc. Quinn K. Zhao of Hill Wallack LLP, for Northern Food I/E Inc. dba Northern Food. _____ Before Mermelstein, Wolfson, and Greenbaum, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: 1 These four proceedings were consolidated in February 2015, prior to trial. See 9 TTABVUE (consolidation order). Since the consolidation, all orders and filed papers pertaining to any of the consolidated proceedings have been entered in Cancellation No. 92058825 as the parent case and all references to TTABVUE docket entries correspond to those in Cancellation No. 92058825 unless otherwise specified. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 Win Luck Trading Inc. (“Petitioner”) filed a petition to cancel the following four registrations, in Chinese characters, owned by Northern Food I/E Inc. dba Northern Food (“Respondent”):2 for “Asian noodles; Chinese noodles; Noodles,” which transliterates to LANZHOU XIAN LAMIAN and is subject to Cancellation No. 92058825;3 2 We refer generally to the registrations by their English transliterations. A transliteration is the phonetic spelling, in corresponding Latin characters, of any words in the applied-for mark that are in non-Latin characters. Trademark Rule 2.32(a)(10), 37 C.F.R. § 2.32(a)(10). 3 Registration No. 4387485, issued on August 20, 2013 on the Principal Register, claiming January 2, 2007 as both the date of first use and the date of first use in commerce. The registration includes the following description of the mark: “The mark consists of five vertical Chinese characters in a stylized font which transliterates to ‘LANZHOU, XIAN and LAMIAN’ and this means ‘blue place, fresh, hand-made noodle in Lanzhou’ in English.” The translation and transliteration statements in the registration are virtually identical to the description of the mark. In addition, the non-Latin characters that transliterate to “LANZHOU” and “LAMIAN” are disclaimed. 2 Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 for “Asian noodles; Chinese noodles; Noodles,” which transliterates to SHANXI DAOXUE MIAN and is subject to Cancellation No. 92058903;4 for “Asian noodles; Chinese noodles; Noodles,” which transliterates to LAOPUO SHOUGAN MIAN and is subject to Cancellation No. 92059010;5 and 4 Registration No. 4348383, issued on June 4, 2013 on the Supplemental Register, claiming January 2, 2007 as both the date of first use and the date of first use in commerce. The registration includes the following description of the mark: “The mark consists of five vertical Chinese characters in a stylized font which transliterates to “SHANXI, DAOXUE and MIAN” and this means “Shanxi style knife-cut noodle” in English.” The translation and transliteration statements in the registration are virtually identical to the description of the mark. The non-Latin characters that transliterate to “MIAN” are disclaimed. 5 Registration No. 4387486, issued on August 20, 2015 on the Principal Register, claiming January 2, 2007 as both the date of first use and the date of first use in commerce. The registration includes the following description of the mark: “The mark consists of five vertical Chinese characters in a stylized font which transliterates to “LAOPUO, SHOUGAN and MIAN” and this means “wife’s hand-made noodle” in English.” The translation and transliteration statements in the registration are virtually identical to the description of the 3 Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 for “Asian noodles; Chinese noodles; Noodles; Pasta and noodles,” which transliterates to SHANGHAI YANGCHUN MIAN and is subject to Cancellation No. 92059339.6 As grounds for cancellation, Petitioner pleads that the registered marks are generic and, with respect to 兰 州 鲜 拉 面 (“LANZHOU XIAN LAMIAN”) and 上 海 阳 春 面 (“SHANGHAI YANGCHUN MIAN”), which are registered on the Principal Register, that the marks are merely descriptive without having acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). In its brief, Petitioner requests that the Board cancel the registrations noted above, with the exception of 老 婆 手 擀 面 (“LAOPUO SHOUGAN MIAN”), and counsel confirmed at the oral hearing that Petitioner is no longer seeking to cancel that registration. Accordingly, we have given the pleaded claims against the mark. The non-Latin characters that transliterate to “SHOUGAN” and “MIAN” are disclaimed. 6 Registration No. 4040834, issued on October 18, 2011 on the Principal Register, claiming August 1, 2004, as both the date of first use and the date of first use in commerce. Registered, in whole, under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). The registration includes the following description of the mark: “The mark consists of five Chinese characters in a row written in a stylized font.” The registration also includes the following transliteration statement: “The non-Latin characters in the mark transliterate to SHANGHAI, YANG, CHUN, MIAN and this means sunny and spring noodle in Shanghai in English.” In addition, the registration includes the following translation statement: “The English translation of the non-Latin characters in the mark is Sunny and spring noodle in Shanghai.” The non-Latin characters that transliterate to “SHANGHAI” and “MIAN” are disclaimed. 4 Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 LAOPUO SHOUGAN MIAN registration no further consideration.7 Further, while Petitioner also alleged fraud and that the designations are primarily geographically descriptive, Petitioner has waived these claims by failing to argue them in its brief. See Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB 2013) (claim not argued in brief is considered waived). We also note that on September 30, 2015, the Board dismissed Petitioner’s claims under Sections 2(e)(1) and 2(e)(2) against SHANXI DAOXUE MIAN because that designation is registered on the Supplemental Register.8 Accordingly, and as confirmed by Petitioner’s counsel during the oral hearing, Petitioner now pursues only the claims that the designations LANZHOU XIAN LAMIAN and SHANGHAI YANGCHUN MIAN are merely descriptive under Section 2(e)(1) without acquired distinctiveness,9 and that all three involved designations LANZHOU XIAN LAMIAN, SHANGHAI YANGCHUN MIAN, 7 Because Petitioner has effectively withdrawn its petition for cancellation after an answer was filed, and without the written consent of the Registrant, judgment is entered against Petitioner with respect to Cancellation No. 92059010, as noted below. Trademark Rule 2.114(c). 8 Registrations on the Supplemental Register “shall not be subject to or receive the advantages of sections [2(e)(1) or (2)].” Trademark Act Section 26, 15 U.S.C. § 1094. This is because “a registrant owner of a Supplemental Register registration impliedly admits that the registered term was descriptive … at least at the time of the registrant’s first use of the term.” Perma Ceram Enters. Inc. v. Preco Indus. Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992). 9 SHANGHAI YANGCHUN MIAN registered with a claim of acquired distinctiveness. A Section 2(f) claim of acquired distinctiveness is an admission that the mark is not inherently distinctive at the time of registration. See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994). 5 Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 and SHANXI DAOXUE MIAN are generic and therefore incapable of becoming a trademark. Respondent filed answers to each of the petitions to cancel, denying the salient allegations asserted therein. Both parties filed consolidated trial briefs and Petitioner filed a reply brief. An oral hearing was held on February 15, 2017. We grant the petitions to cancel the three involved registrations on the basis that the designations are generic for noodles.10 In view thereof, we need not decide whether LANZHOU XIAN LA MIAN and SHANGHAI YANG CHUN MIAN are merely descriptive without acquired distinctiveness. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of each of Respondent’s registrations. A. Petitioner’s Testimony and Evidence Petitioner submitted the testimony deposition of Mr. Sheng Lin (“S. Lin”), Petitioner’s president, taken December 9, 2015 (with accompanying Exhibits)11 and 10 The identifications of goods in Reg. Nos. 4387485 and 4348383 comprise, in their entirety, “Asian noodles; Chinese noodles; Noodles.” Reg. No. 4040834 includes the additional wording“[p]asta and noodles.” As discussed more fully infra, the genus of goods herein is “noodles,” which includes not only specific types of noodles (“Asian,” “Chinese”) but also “pasta,” which is essentially identical to noodles. Cf. In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 (TTAB 2002) (“[I]f applicant’s mark BONDS.COM is generic as to part of the services applicant offers under its mark, the mark is unregistrable”) (citing In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (“There is no logical reason to treat [as registrable] a term that is generic of a category or class of products where some but not all of the goods identified in an application fall within that category.”). 11 19 TTABVUE. 6 Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 notices of reliance on the discovery deposition of Mr.