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C&L Int'l Trading Inc. v. American Tibetan Health Inst., Inc.

United States District Court, S.D. New York

December 3, 2014

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., Plaintiff,
v.
KAM NG, C&L INTERNATIONAL TRADING, INC., KANG LI TRADING, INC., and K& C INTERNATIONAL TRADING, INC., Defendants

Page 323

For C & L International Trading Inc., Kam NG, K & C International Trading Inc., Plaintiffs (1:13cv2638): I. Frederick Shotkin, The Marshall Firm, New York, N.Y. USA; Warren R. Graham, Warren R. Graham, Esq, New York, N.Y. USA.

For American Tibetan Health Institute, Inc., Consolidated Plaintiff (1:13cv2638): Anthony Nicholas Elia, III, The Law Offices of Anthony N. Elia, P.C., New York, N.Y. USA; David William Kloss, Kloss, Philip B. Abramowitz, Stenger & Lotempio, Buffalo, N.Y. USA.

For Chung Kee (Usa) International Inc., Tung Ren Tang, Ron Feng Trading Inc., Yong Long Supermarket Inc., PO Wing Hong Food Market Inc., Defendants (1:13cv2638): Anthony Nicholas Elia, III, The Law Offices of Anthony N. Elia, P.C., New York, N.Y. USA; Bonnie Lynn Mohr, Law Office of Bonnie L. Mohr, New York, N.Y. USA; David William Kloss, Justin David Kloss, Philip B. Abramowitz, Kloss, Stenger & Lotempio, Buffalo, N.Y. USA.

For American Tibetan Health Institute, Inc., Defendant (1:13cv2638): Bonnie Lynn Mohr, Law Office of Bonnie L. Mohr, New York, N.Y. USA; David William Kloss, Justin David Kloss, Kloss, Stenger & Lotempio, Buffalo, N.Y. USA.

For Kam NG, C& L International Trading Inc., Kang LI Trading Inc., K& C International Trading Inc., Consolidated Defendant (1:13cv2638): Isaiah Frederick Shotkin. I. Frederick Shotkin, The Marshall Firm, New York, N.Y. USA; Warren R. Graham, Warren R. Graham, Esq, New York, N.Y. USA.

For American Tibetan Health Institute, Inc., a California corporation, Plaintiff (1:13cv2763): Anthony Nicholas Elia, III, The Law Offices of Anthony N. Elia, P.C., New York, N.Y. USA; Bonnie Lynn Mohr, Law Office of Bonnie L. Mohr, New York, N.Y. USA; Bonnie Jean Wolf, Intellectual Property Law Group LLP, San Jose, CA USA; David William Kloss, Justin David Kloss, Philip B. Abramowitz, Kloss, Stenger & Lotempio, Buffalo, N.Y. USA.

For Kam NG, C& L International Trading Inc., Kang LI Trading Inc., K& C International Trading Inc., Defendants (1:13cv2763): Isaiah Frederick Shotkin. I. Frederick Shotkin, The Marshall Firm, New York, N.Y. USA; Warren R. Graham, Warren R. Graham, Esq, New York, N.Y. USA.

Page 324

AMENDED OPINION AND INJUNCTION

LOUIS L. STANTON, UNITED STATES DISTRICT JUDGE.

The June 25, 2014, Order and Injunction (13 CivLS) Dkt. No. 61; 13 Civ. 2763 (LLS) Dkt. No. 84) is a read as follows:

American Tibetan Health Institute, Inc. (" ATHI" Ng both sell Chinese herbal medicinal tea called " Ticao Tea," packaged in substantially similar boxes. These caross-suits: each side sues the other side for trademark infringement, among other claims, alleging its right to exclusive commercial use of the name " Tibetan Baicao Tea" and design marks found on the tea boxes.

The parties do not dispute that the tea boxes bearing the disputed marks are sold in commerce, and are sufficiently similar such that the sale of both is likely to cause confusion among consumers. The sole dispute is which party - ATHI or Kam Ng - has the right to use the disputed marks in commerce.

ATHI moved to preliminarily enjoin Kam Ng from selling Tibetan Baicao Tea. All parties agreeing that the only material issues in substantial dispute were which of them had first used its marks in commerce in the United States and (if it was ATHI) whether ATHI had thereafter abandoned the marks, the hearing on that motion was consolidated with a trial on the merits under Fed.R.Civ.P. 65(a)(2). A jury trial of those two issues was held from March 24 to 27, 2014. The jury determined that ATHI was the first to use its trademarks in commerce, and did not later abandon the marks.

For the reasons that follow, the injunction is granted.

Discussion

As a remedy for unauthorized use in commerce of a trademark, where such use is likely to cause confusion, a court has the " power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office." 15 U.S.C. § 1116(a).

ATHI filed to register the disputed marks on the USPTO's principal register in March 2012, which is prima facie evidence of ATHI's ownership of the disputed marks and exclusive right to use them in commerce. See 15 U.S.C. § 1115(a).

Registration does not, however, give priority over persons who had used and not abandoned the disputed marks prior to the registration. See 15 U.S.C. § 1057(c)(1). ATHI' s registration does 'not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark, had not been registered." 15 U.S.C. § 1115(a).

It is a defense to the charge of infringement:

That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved;

15 U.S.C. § 1115(b)(5).

" Under this statutory scheme, defendants' rights to its mark ...


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