Tea Board Of India v. The Republic Of Tea, Inc.
| Decision Date | 23 August 2006 |
| Docket Number | 91118587 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board |
| Parties | Tea Board of India v. The Republic of Tea, Inc. |
Michael Chiapetta of Fross Zelnick Lehrman & Zissu, for Tea Board of India. Matthew A.
Rosenberg of Blumenfeld, Kaplan & Sandweiss, P.C. for The Republic of Tea, Inc.
Before Holtzman, Rogers and Zervas, Administrative Trademark Judges.
OPINIONAn application has been filed by The Republic of Tea, Inc. (applicant) to register the mark DARJEELING NOUVEAU on the Principal Register for "tea" in International Class 30.[1] The word DARJEELING is disclaimed.
On May 1, 2000, the Tea Board of India (opposer or Tea Board) filed an opposition to registration of the mark in the above application. In the notice of opposition, as amended, opposer alleges that it is a non-trading, non-profit body established by the Government of India under the India Tea Act of 1953 for the purposes of controlling the Indian tea industry; that opposer is the owner of Registration No. 1632726 for the certification mark shown below for tea in Class A;[2] that opposer (Image Omitted) owns pending application Serial No. 76357485 for the certification mark DARJEELING (in standard character form) for tea in Class A; that opposer also has common law rights in the certification marks by virtue of its licensees' use of these certification marks and opposer's control over such use of the certification marks as indications of regional origin for tea; that as part of its activities, opposer has controlled use of the marks DARJEELING and DARJEELING and design by others to certify that tea originates in the Darjeeling region of India and that the tea meets other specifications established by opposer; that since at least as early as August 31, 1987, prior to applicant's use, opposer has authorized use of the DARJEELING and design mark in interstate commerce in connection with tea originating from the Darjeeling region of India; that opposer's marks have become famous, and that they became famous prior to applicant's use of its claimed mark; that applicant's mark DARJEELING NOUVEAU when applied to applicant's goods so resembles opposer's previously used and registered DARJEELING and design mark and DARJEELING word mark as to be likely to cause confusion or mistake or to deceive; and that the use and registration by applicant of DARJEELING NOUVEAU for applicant's goods is likely to dilute the distinctive quality of opposer's famous marks.[3]
Applicant filed an answer denying the salient allegations in the amended opposition and asserting certain affirmative defenses. When opposer's pleaded application Serial No. 76357485 for DARJEELING issued into Registration No. 2685923 on February 11, 2003, applicant moved to amend its answer to add a counterclaim to cancel the registration. Opposer then moved to further amend the opposition to plead ownership of the registration. The Board, on May 12, 2004, granted applicant's motion to add the counterclaim and, finding that the parties had stipulated to the admissibility of the registration, held opposer's motion to amend the pleading moot. We hereby deem the pleading amended under Fed.R.Civ.P. 15(b) to conform to the evidence by asserting Registration No. 2685923.[4]
By its counterclaim, applicant seeks to cancel opposer's Registration No. 2685923 for the word mark DARJEELING under Section 14(5)(A) of the Trademark Act on the ground that opposer "does not control, or is not able legitimately to exercise control over, the use of the mark."[5]
Opposer filed an answer denying the allegations in the counterclaim.[6]
The record includes the pleadings; the files of the involved application and registration; opposer's testimony, with exhibits, of Kumar Sanjay Krishna, deputy of the Tea Board of India; and Anindita Ray, deputy director, tea promotion, of the Tea Board of India; the stipulated testimony under Trademark Rule 2.123(2)(b) of "the Tea Board of India";[7] applicant's testimony, with exhibits, of Carl E. Block, Ph.D., president of Doane Marketing Research, the company which conducted the survey of record in this case; and Denise A. Barberis, paralegal for the intellectual property department of Blumenfeld, Kaplan & Sandweiss, P.C. The record also includes notices of reliance filed by opposer on May 16, 2002 and October 3, 2003, and by applicant on July 11, 2003; and "stipulated exhibits" filed by the parties on October 3, 2003.[8]
Both opposer and applicant filed briefs.[9] An oral hearing was held.
India is the largest producer of tea in the world. (Ray Test., p 3.) Ms. Ray states that the tea industry in India has been controlled by the Indian government since 1933 through a series of statutes culminating with the Tea Act of 1953. Opposer, the Tea Board, is a governmental body established by the Tea Act in 1953 to develop and implement a certification program to regulate and control all aspects of the production and sale of teas from different Indian regions, including tea from the Darjeeling region of India. The composition of the Tea Board is diverse, comprised of members representing owners of tea estates, the state governments, members of Parliament, workers' representatives, exporters, packers and consumers.
Ms. Ray states that Darjeeling is a district located in the state of West Bengal, India and that tea has been cultivated, grown and produced in the 87 "tea gardens" located in this region for 150 years. The gardens are located, according to Ms. Ray, "at elevations up to over 2000 metres above mean sea level." (Test., p. 4.) As described on a page from applicant's website, in the record, this region is "high in the foothills of the Himalayan range at altitudes of up to 6, 000 feet." Ms. Ray states that due to the "unique and complex combination of agro-climatic conditions" in the region and the production regulations imposed, Darjeeling tea "has a distinctive and naturally-occurring quality and flavour." (Ray Test., p. 4.) Mr. Krishna describes Darjeeling as "the champagne of teas." (Test., p. 29.)
As described by Ms. Ray, the Tea Board administers and regulates, under an elaborate system of control, all stages of cultivation, processing, promotion and sale of Darjeeling tea, including both domestic sales and exports of the teas to overseas markets. Ms. Ray explains that all of the 87 tea gardens are registered with the Tea Board and that the Tea Board regularly monitors these gardens by making periodic checks and inspections. The Tea Board certifies that all Darjeeling tea which is intended for export originates from the "specified region of the district of Darjeeling, West Bengal, India" (Ray Test., p. 8) and all exporters of Darjeeling tea are required to be registered with the Tea Board and licensed to use the DARJEELING and design mark.
The importers and sellers of Darjeeling tea in the United States may use the DARJEELING and design mark (hereinafter "logo mark") if they obtain permission from the Tea Board to do so. They must demonstrate that they have purchased the tea directly from registered exporters and samples of the tea proposed to be sold under the mark must be submitted to the Tea Board for analysis by a panel of tea tasters appointed by that Board. After the panel is satisfied as to the origin and characteristics of the tea samples, the users must sign an "undertaking" requiring them to use the mark in connection with 100% Darjeeling tea which meets the requirements of origin and characteristics of the tea. Ms. Ray identified 15 authorized users of the logo mark including The Republic of Tea (applicant herein), Tazo, Choice Tea, Stash Tea Co., Thomas J. Lipton, and James Finlay & Co. USA Inc.
Ms. Ray states that India has been exporting tea from the Darjeeling region of India and selling the tea in the United States for the past 50 years. She does not specify when any formal certification program by the Tea Board first began except to say that the program "has been in existence for a long time." (Test., p. 7.) Ms. Ray also states that the Tea Board has taken periodic steps during that time to refine and improve its regulations in response to consumer input and feedback and that the Tea Board developed the logo mark "in [the] mid 1980s" to give "a more structured shape to its certification program to deal with the challenges of the trade worldwide." (Test., p. 6.) Mr. Krishna states that implementation of the logo program was prompted by "certain complaints that the teas were not Darjeeling teas, that they were blending with other teas." (Test., p. 32.)
Acknowledging that the certification statement in the registration for the logo mark as well as the regulations governing use of the mark initially indicated that a minimum of 60% Darjeeling tea was permissible, Ms. Ray claims that the registration "has now been amended" to require 100% Darjeeling tea, [10] (Test., p. 11) and that the regulations have been modified to require 100% Darjeeling tea as well. (Stip. Test., p. 6.)
According to Ms. Ray and opposer's stipulated testimony, the Tea Board is prepared to take legal action against third parties that misuse the logo mark or the word mark but that opposer is not aware of any actual misuse of the marks and has not had occasion to take such action in the United States. (Ray Test., p. 12; Stip. Test., p. 3.)
Opposer testified that the Tea Board regularly attends biannual trade shows to promote Darjeeling tea where it distributes literature about the origin, growing, harvesting and production of the tea. Opposer also sends representatives to supermarkets throughout the United States to distribute literature and educate consumers about the various...
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