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C&L International Trading Inc. v. American Tibetan Health Institute, Inc.

United States District Court, Second Circuit

November 18, 2013

C&L INTERNATIONAL TRADING INC., KAM NG, And K&C INTERNATIONAL TRADING INC., Plaintiffs,
v.
AMERICAN TIBETAN HEALTH INSTITUTE, INC., CHUNG KEE (USA) INTERNATIONAL INC., YAT CHAU (USA) INC., TUNG REN TANG, RON FENG TRADING INC., FARGO TRADING INC., YONG LONG SUPERMARKET INC., and PO WING HONG FOOD MARKET INC., Defendants. AMERICAN TIBETAN HEALTH INSTITUTE, INC., Plaintiffs,
v.
HAM NG, C&L INTERNATIONAL TRADING, INC., KANG LI TRADING, INC., and K&C INTERNATIONAL TRADING, INC., Defendants.

OPINION AND ORDER

LOUIS L. STANTON, District Judge.

These cases are cross-suits arising out of a trademark dispute over two products called "Tibetan Baicao Tea." Both C&L International Trading Inc. ("C&L") and American Tibetan Health Institute, Inc. ("ATHI") manufacture and sell tea called "Tibetan Baicao Tea, " in similar packaging. ATHI and C&L each claims to own registered trademarks for the name "Tibetan Baicao Tea" and its packaging and logos, and each brings suit alleging trademark infringement against the other party, among other claims.

ATHI and its co-defendants move to dismiss the amended complaint in the action initiated by C&L, No. 13 Civ. 2638 (LLS). In that action, C&L, K&C International Trading Inc ("K&C"), and Kam Ng sue ATHI, along with defendants Chung Kee (USA) International Inc., Yet Chau (USA) Inc., Tung Ren Tang, Ron Feng Trading Inc., Fargo Trading Inc., Yong Long Supermarket Inc., and Po Wing Hong Food Market Inc., which are stores that allegedly market and sell ATHI's infringing product.

A.

The amended complaint alleges:

38. The Plaintiffs's medicinal herbal teas merchandized in packaging bearing the Plaintiffs's Marks have come to be well-known by the Chinese community as effective and high quality products effective in the treatment of allergies to pollen, skin allergies, colds, and pain in bones.
39. Over the years, large numbers of consumers have been exposed to the Plaintiffs's Marks through advertisement, in various magazines and newspapers, and on TV and the internet.
40. As a result, the Plaintiffs's Marks are recognized, famous and popular trademarks in the Chinese community, which adds value to the herbal teas merchandized in packaging bearing the Plaintiffs's Marks.
41. The Plaintiffs are owners of the entire right, title and interest in the trademarks, examples of which are contained in Exhibit 1, 2 and 3 of this Amended Complaint.[1]
42. The Plaintiffs's Marks are valid, registered under federal and New York State law, and enforceable.

Plaintiffs have two registered marks, one registered with the United States Patent and Trademark Office ("USPTO"), and one registered with New York State's Department of State. The USPTO mark is a logo described on its certificate as consisting of "the words Tibetan Baicao Tea', with the Chinese Characters of the same words traversing the English words vertically, " Ng Aff. Ex. F (the "composite mark"). That mark is registered on the USPTO supplemental register, see 15 U.S.C. §§ 1091-1096. Plaintiffs' second mark, registered with New York State, is described as the words "Tibetan Baicao Tea" on its certificate (the "word mark"). See id. Ex. B.

The amended complaint alleges that "The Defendants, without authorization or license from the Plaintiffs, have willfully and intentionally used, reproduced, and/or copied the Plaintiff's Marks in connection with their manufacturing, distributing, exporting, importing, advertising, marketing, selling and/or offering to sell their Counterfeit Products." Am. Compl. ¶ 54.

On that basis, plaintiffs plead trademark and trade dress infringement, counterfeiting, false designation of origin, and unfair competition under the Lanham Act, 15 U.S.C. § 1051 et seq. Plaintiffs also plead trademark and trade dress infringement and counterfeiting, unfair competition, and deceptive acts and practices under New York state law.

B.

Defendants contend that plaintiffs' marks are not entitled to protection under the Lanham Act.

Defendants argue that plaintiffs' word mark is not entitled to protection because "In actuality, the Word Mark is registered to ATHI on the Principal Register of the USPTO" and "ATHI owns the exclusive right to use the Word Mark in interstate commerce in connection with tea goods, " Defs.' Br. 4, and references its certificates of registration with the USPTO as well as sworn statements by officers and employees of ATHI attesting to the validity of ATHI's competing marks.

ATHI's defense, if established, would resolve the dispute in favor of defendants. Nonetheless, ATHI's prior, superior marks are not mentioned in, and are therefore extraneous to the complaint at issue, and would be more appropriately dealt with in the context of a motion for summary judgment. Moreover, the ...


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