Tea Board of Indiav.The Republic of Tea, Inc.

Trademark Trial and Appeal Board

Aug 23, 2006

No. 91118587 (T.T.A.B. Aug. 23, 2006)

Hearing: Mailed:
January 12, 2006 August 23, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Tea Board of India
v.
The Republic of Tea, Inc.
_____

Opposition No. 91118587
_____

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.

Opinion by Holtzman, Administrative Trademark Judge:

An 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.

1 Application Serial No. 75748952, filed on July 13, 1999, alleging
dates of first use and first use in commerce on March 1, 1999.

THIS DISPOSITION IS
CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91118587
2
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

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

2 Issued January 22, 1991 with a claim of first use on August 31, 1987
and first use in commerce on September 10, 1987. The registration
states, "The certification mark, as used by persons authorized by
certifier, certifies that a blend of tea contains at least sixty
percent (60%) tea originating in the Darjeeling region of India, and
that the blend meets other specifications established by the
certifier."
Opposition No. 91118587
3
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

3 Opposer also alleges a violation of the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPs), Article 22.1, causing
further damage to opposer and those persons authorized to use opposer's
marks. We do not treat this allegation as a separate claim because
TRIPs is not a self-executing treaty. See, e.g., In re Rath, 402 F.3d
1207, 74 USPQ2d 1174, 1179 n. 2 (Fed. Cir. 2005) (noting that, under 19
U.S.C. §3512(c), Congress has specifically precluded any person other
than the United States from using TRIPs as a cause of action or
defense.)
Opposition No. 91118587
4
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

4 The registration sets forth a date of first use on August 31, 1987
and first use in commerce on September 10, 1987. The registration
states, "The certification mark, as used by authorized persons,
certifies that the tea contains at least 100% tea originating in the
Darjeeling region [of] India, and that the blend meets other
specifications established by the certifier."

5 Applicant has not counterclaimed to cancel opposer's other pleaded
registration for DARJEELING and design even though it too contains the
word DARJEELING. Nevertheless, we do not consider the counterclaim
against DARJEELING to constitute a collateral attack on the
registration which consists only in part of DARJEELING. See Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987) ("The registration affords prima facie
rights in the marks as a whole, not in any component. Thus, a showing
of descriptiveness or genericness of part of a mark does not constitute
an attack on the registration.") (Emphasis in original.)

Opposition No. 91118587
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

6 Opposer also set forth certain affirmative defenses in its answer
which were neither tried nor argued and are therefore deemed waived.
Further, to the extent, if any, that opposer's estoppel defense was
based on the "Morehouse" defense, such defense would not apply in this
case because the marks in the two registrations are not the same. We
also note that applicant is a licensee of the DARJEELING and design
mark and to the extent opposer is asserting licensee estoppel, such
defense does not apply to certification marks. See Midwest Plastic
Fabricators, Inc. v. Underwriters Laboratories, Inc., 12 USPQ2d 1267,
1275 n. 6 (TTAB 1989) [hereinafter "Midwest (TTAB)"] ("There can be no
licensee estoppel involving a certification mark."), aff'd, 906 F.2d
1568 (Fed. Cir. 1990). See also Idaho Potato Commission v. M&M Produce
Farm & Sales, 335 F.3d 130, 67 USPQ2d 1348 (2d Cir.2003), cert. denied,
541 U.S. 1027 (2004).

7 References in this decision to "opposer's testimony" or citations to
"Stip. Test." are references or citations, respectively, to the
stipulated testimony of the Tea Board.
Opposition No. 91118587
6
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.
Facts
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.

8 The parties have stipulated to the admissiblity and authenticity of
the "stipulated exhibits" and the exhibits submitted by notice of
reliance but not the truth of the matters asserted in such exhibits,
nor the competency, relevance or materiality of such evidence. Indeed,
printed publications made of record by notice of reliance are
admissible and probative only for what they show on their face, not for
the truth of the matters contained therein, unless a competent witness
has testified to the truth of such matters. See TBMP §704.08 (2d ed.
rev. 2004.)

9 There are two sets of briefs in the record; one set is for the
opposition and the other is for the counterclaim.
Opposition No. 91118587
7
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
Opposition No. 91118587
8
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
Opposition No. 91118587
9
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.)

10 There is no evidence of record that the registration has been so
amended and the Office records show that no such amendment has been
entered.

Opposition No. 91118587
10
Opposer testified that the Tea Board regularly attends bi-
annual 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 Darjeeling and other Indian teas and
the geographic areas in which they are grown.
Applicant did not take any testimony regarding the use of
its mark, but applicant's responses to discovery requests made of
record by opposer indicate that applicant began selling tea, from
the Darjeeling region of India, under the mark DARJEELING NOUVEAU
on or about March 1, 1999 and that applicant describes this tea
as "first flush" tea from the region. Applicant sells its tea
through gourmet and specialty food stores, natural food groceries
and department stores, gift stores, cafes and in restaurants, as
well as through mail order catalogs and direct sales through the
Internet. Applicant identified stores in seven states in which
its tea is sold.
Applicant is a licensee of the Tea Board and a "certified
user" of opposer's logo mark and uses it to represent that the
tea consists of 100% Darjeeling tea. Applicant states in its
brief that it uses the logo because it wants the public to know
that its teas are of the highest quality and to allow the public
to differentiate its tea from what it claims are "the numerous
Opposition No. 91118587
11
other 'DARJEELING' teas in the market that are not truly from the
Darjeeling regions." (Brief in Opp. 10.) Applicant, like
opposer, makes efforts to educate the public concerning
Darjeeling tea, and applicant states in its brief that it "will
undoubtedly continue to work independently and with the Tea Board
regardless of the outcome of this case, to help people understand
that tea from the Darjeeling region of India truly is," quoting
Mr. Krishna, "'the Champagne of teas.'" (Brief in Opp., p. 9.)

COUNTERCLAIM TO CANCEL REGISTRATION NO. 2685923
for DARJEELING

We turn first to applicant's counterclaim to cancel
Registration No. 2685923 under Section 14(5)(A) of the Trademark
Act.11 That section of the statute permits cancellation of a
certification mark registration at any time when the registrant
"does not control, or is not able legitimately to exercise
control over, the use of such mark."
The purpose of requiring control over use of a certification
mark, as with a trademark, is two-fold: to protect the value of
the mark and its significance as an indication of source, and to
prevent the public from being misled or deceived as to the source

11 As noted earlier, applicant has not filed a counterclaim challenging
the validity of Registration No. 1632726 for the logo mark.
Consequently, any arguments by or evidence from applicant that opposer
fails to exercise control over the logo mark constitute a collateral
attack on the validity of the unchallenged logo registration and have
not been considered in our evaluation of the counterclaim against the
DARJEELING word mark.
Opposition No. 91118587
12
of the product or its genuineness. See Midwest Plastic
Fabricators, Inc. v. Underwriters Labs., Inc., 906 F.2d 1568, 15
USPQ2d 1359, 1362 (Fed. Cir. 1990) ("...to protect the public
from being misled"); and, generally, McCarthy on Trademarks and
Unfair Competition §2:33 (4th ed. 2006).
It is applicant's position that opposer does not control, or
cannot legitimately exercise control over, the use of the word
mark DARJEELING because, according to applicant, the mark has
lost its significance as an indication of geographic source and
among the general consuming public has become a generic term
denoting a certain type of tea. (Counterclaim brief, p. 7.)
Applicant proceeds to argue variously that because DARJEELING
identifies a type of tea, or identifies geographic sources other
than Darjeeling as the origin of the tea, or identifies tea that
is not genuine because it is not used in connection with tea that
is 100% from Darjeeling, the mark has lost its significance as a
mark.12

12 At one point in its brief applicant appears to argue that DARJEELING
has lost its significance as an indicator of origin, or, in the
alternative, that opposer has failed to maintain control over the mark.
To the extent that applicant is asserting a claim under the "does not
control" language of the statute, and is arguing that any evidence
whatsoever of lack of control over third party use results in a per se
violation of the statute, without regard to the nature, extent or
effect of any such "lack of control," applicant has provided no
authority for such proposition, and we have given this argument no
further consideration. Thus, we make no separate findings under this
portion of the statute, and have construed all of applicant's arguments
as a claim that DARJEELING has lost its significance as a mark and has
become generic.
Opposition No. 91118587
13
In support of its position, applicant points to opposer's
asserted failure to police the mark resulting in unlicensed and
unregulated third-party usage, years of uncontrolled use prior to
implementation of the formal certification program in 1987, and
deficiencies in the regulations themselves. In addition,
applicant relies on the results of a survey, dictionary
definitions of Darjeeling, third-party usage of Darjeeling, and
lack of widespread use of the logo mark by third parties.
To begin with, we note that DARJEELING is used to certify
regional origin of the tea and, as is often the case with
geographical indications, the mark also certifies certain
qualities and characteristics of the product that are due to
factors associated with the geographic region.13 See, e.g.,
Bureau National Interprofessionnel Du Cognac v. International
Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC certifies
regional origin as well as the quality of the brandy which
quality results from the use of the required type of grape,
methods of distillation, aging conditions, etc.); and Community
of Roquefort et al. v. William Faehndrich, Inc., 198 F.Supp. 291,
131 USPQ 435 (S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633

13 We construe the reference to "other specifications" in the
registration as meaning that users of the certification mark meet the
requirements relating to the qualities and characteristics of the tea,
as set forth in opposer's regulations.
Opposition No. 91118587
14
(2d Cir. 1962) (ROQUEFORT indicates geographic source and methods
for production and manufacture associated with that region).
A certification mark used to certify regional origin as well
as qualities and characteristics associated with the origin will
not be deemed to have become a generic term as applied to
particular goods unless it has lost its significance as an
indication of regional origin for those goods. See Institut
National Des Appellations d'Origine v. Brown-Forman Corp., 47
USPQ2d 1875 (TTAB 1998). This can occur when, by virtue of a
failure to control the mark, the mark is used on goods which
originate somewhere other than the place named in the mark, or on
nongenuine goods, or through otherwise uncontrolled use, but only
if as a result of such misuse, the mark has come to primarily
signify a type of goods with certain characteristics, without
regard to regional origin and the methods and conditions for
growing it. See Community of Roquefort v. Faehndrich,
Inc., supra; and In re Cooperativa Produttori Latte E Fontina
Valle D'Aosta, 230 USPQ 131 (TTAB 1986). See also BellSouth
Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1557
(Fed. Cir. 1995) ("A term may become generic over time through
common usage if the otherwise nondescriptive term is not policed
as a trademark and it is commonly used to describe a type of
product." Emphasis added.); and Formica Corporation v. The
Newnan Corporation, 149 USPQ 585, 587 (TTAB 1966) ("It is well
Opposition No. 91118587
15
settled that a party asserting that an otherwise arbitrary
trademark for an article has become a common descriptive name for
the article has the burden of showing not only that the mark has
been misused in the manner stated but that the misuse thereof has
been so widespread and of such duration that there can be no
doubt that to the trade and/or to the public generally the mark
identifies the article as to kind rather than as to source"),
aff'd, 396 F.2d 486, 158 USPQ 104 (CCPA 1968). "A generic term,
by definition, identifies a type of product, not the source of
the product." In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1420, 1421 (Fed. Cir. 2005) citing In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
The test for determining whether a mark is generic is its
primary significance to the relevant public. Magic Wand, Inc. v.
RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). The
relevant public in this case includes tea "aficionados" and
ordinary members of the general public. Evidence of the relevant
public's understanding of a term may be obtained from "any
competent source...including purchaser testimony, consumer
surveys, dictionary definitions, trade journals, newspapers and
other publications." In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001).
It is applicant's burden to demonstrate by a preponderance
of the evidence that DARJEELING is generic, or that the mark has
Opposition No. 91118587
16
become generic as a result of opposer's failure to exercise
control over use of the mark. Magic Wand Inc. v. RDB Inc.,
supra; and Stocker v. General Conference Corp. of Seventh-day
Adventists, 39 USPQ2d 1385 (TTAB 1996). See also Midwest, supra
at 1362 ("Midwest has the burden to demonstrate by a
preponderance of the evidence that UL failed to exercise control
over use of its marks.").
Lack of control prior to implementation of the "logo"
program in 1987, past misuse, and lack of policing

Applicant argues that although tea from the Darjeeling
region has been sold in the United States for around 50 years,
the fact that the "logo" program only began in 1987 is evidence
that for many years prior thereto, opposer permitted use of
DARJEELING in a generic, uncontrolled and unregulated fashion.
As further evidence of lack of control, applicant points to the
admitted reason for the development of a logo program in the
first place which was complaints that manufacturers were selling
tea as Darjeeling that in the opinion of the Tea Board was not
Darjeeling tea or was Darjeeling tea blended with other teas.
Applicant claims that although opposer has admitted there was
misuse, opposer has never taken action to remedy any such misuse.
Applicant also points out that the Tea Board by its own admission
has never taken any enforcement action against any third party
for misuse.
Opposition No. 91118587
17
First, the mere fact that there may have been no formal
certification mark program or licensing program in place prior to
the adoption of the logo program in 1987 is not in itself
evidence that Darjeeling has lost significance as a mark. Halo
Management, LLC v. Interland, Inc., ___ F.Supp.2d____, 76 USPQ2d
1199 (N.D.Cal. 2004) (noting that the lack of a formal quality
control provision does not automatically divest a trademark
holder of protection). The question is whether in fact control
is maintained. See Woodstock's Enterprises Inc. (California) v.
Woodstock's Enterprises Inc. (Oregon), 42 USPQ2d 1440, 1448 (TTAB
1997) ("while there was never a formal system of quality control,
the inference of abandonment is not drawn...[where] satisfactory
quality was maintained"), aff'd (unpublished), 152 F.3d 942 (Fed.
Cir. 1998).
The statute does not define "control" or indicate the degree
of control required, but it is clear that absolute control would
be impracticable, if not impossible. See Midwest, supra. See
also, e.g., Engineered Mechanical Services, Inc. v. Applied
Mechanical Technology, Inc., 584 F.Supp. 1149, 223 USPQ 324
(M.D.La. 1984) ("The owner of a mark is not required to
constantly monitor every nook and cranny of the entire nation and
to fire both barrels of his shotgun instantly upon spotting a
possible infringer..."). The question is whether the control is
adequate. As stated in Midwest, supra at 1363, "the owner must
Opposition No. 91118587
18
take reasonable steps, under all the circumstances of the case,
to prevent the public from being misled."
Applicant has introduced no evidence that the Tea Board did
not in fact adequately control the use of the mark during the
time prior to the implementation of the formal certification mark
program in 1987. There were admittedly concerns about misuse
which prompted the Tea Board to implement a formal certification
mark program and stricter standards of control.14 However, the
mere fact of misuse, just like the mere absence of formal
control, is not sufficient to raise an inference that the control
was not adequate or that DARJEELING has lost all significance as
a mark. Even if control is not maintained and misuse occurs, it
must be shown that the misuse was of such significance to permit
an inference that the mark is generic. See Formica, supra; and
Engineered, supra (defendants did not prove that because of the
lack of efforts by plaintiffs in "policing" use of the mark, that
the mark has become so diluted by widespread use by others that

14 Applicant in passing also points to a long cancelled third-party
registration for DARJEELING GARDENS (Registration No. 1490383,
cancelled under Sec. 8 in 1994) apparently as further evidence of
opposer's loss of control over the mark. This cancelled registration
is of no evidentiary value and, in any event, just as a third-party
registration is not probative of use it cannot be probative of misuse.
In addition, applicant refers to an article entitled "U.S. Tea is
'Hot' Report" which according to applicant "intimates" that more tea is
sold as Darjeeling annually in the United States than is actually
harvested in Darjeeling. This evidence is unpersuasive for several
reasons. Ms. Ray testified that she was not aware of any data to
authenticate that claim; the article is hearsay; and applicant is
required to establish facts to prove its claim, not "intimate" them.

Opposition No. 91118587
19
it has lost its distinctiveness); and, e.g., University Book
Store v. University of Wisconsin Board of Regents, 33 USPQ2d
1385 (TTAB 1994) (few occasional and transitory incidents
regarding quality insufficient); Midwest (TTAB), supra
(occasional, sporadic problem insufficient); and McCarthy, supra
at §18:58 ("Isolated instances of continued use of a mark by
terminated licensees is not itself evidence that the licensor
does not have an adequate program of control over the mark
[citations omitted]"). Compare Bellsouth, supra at 1558 ("near
universal" use of logo by competitors was strong, albeit
circumstantial, evidence of genericness); and Wallpaper
Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d 755,
765, 214 USPQ 327 (Fed. Cir. 1982) ("numerous" products in the
marketplace bearing the alleged mark, and the conduct of the
owner, by failing to police its mark, can be said to have caused
the mark to lose its significance as a mark).
We have no information about the nature or extent of the
past misuse of DARJEELING, let alone whether the misuse was of
such extent and duration that we could presume that DARJEELING
has lost all significance as a mark.
Indeed, opposer has shown that control was in fact
maintained, and that the misuse was not tolerated and did not go
unaddressed. Upon learning of the misuse, opposer took
affirmative steps to remedy the problem by implementing the logo
Opposition No. 91118587
20
program in 1987. While, as applicant claims, opposer never took
any enforcement action against any third party for the misuse
that occurred, there is no evidence that such action was
necessary or that the action opposer did take was not sufficient
to remedy the past misuse. See Midwest (TTAB), supra at 1275
(noting petitioner's argument that other steps should have been
taken by respondent, the Board stated "it is not the Board's
province to delineate guidelines or rules for respondent or to
indicate what actions respondent should or should not take in
exercising control over the use of its marks. Rather, the
Board's only task is simply to review the factual record before
it and determine whether the facts presented warrant a conclusion
that respondent has failed to exercise control over its marks.")
The fact that the Tea Board, in response to changing needs
and circumstances, has instituted increasingly tighter controls
over use of the mark is clearly not evidence of lack of control
and certainly not evidence that the mark has lost significance.
To the contrary, it is evidence of opposer's continuing efforts
to maintain control of the mark and protect its value as a
geographical indication. See, e.g., Zimmerman v. National
Association of Realtors, 70 USPQ2d 1425 (TTAB 2004); and
University Book Store, supra.
In addition, opposer's current standards provide adequate
provisions for control over the mark and applicant does not
Opposition No. 91118587
21
dispute this.15 As further evidence of opposer's efforts to
control the mark, the Tea Board testified that if it were to
receive any complaints of adulterated tea it would check the
quality of the tea and take action if the tea was found not to be
genuine. Although there was misuse in the past, opposer stated
that the Tea Board currently "is not aware of any actual misuse
of the DARJEELING designation in the U.S." (Stip. Test., p. 3.)
Opposer also testified that the Tea Board has representatives in
the United States to monitor the market to ensure that the
DARJEELING designation is not misused. In any event, as we noted
earlier, we would not infer from lack of policing alone that
opposer's control was not adequate or that DARJEELING has lost
its significance as a mark. See Engineered, supra.
The Prior Regulations

Applicant argues that as shown by the registration
certificate for the logo mark, and as opposer admitted, when the
logo program was first started in 1987, the Tea Board permitted
use of the logo mark with as little as 60% of the tea coming from

15 The regulations detail the requirements of origin and characteristics
of the tea and for permitting use of the marks. They also provide for,
among other things, inspection of the user's premises in order to test
the tea for origin and the "distinctive characteristics" associated
with the tea, as well as supervision over use of the marks. Opposer
also points to its efforts to educate the public about Darjeeling tea.
Opposer testified that the Tea Board regularly attends the bi-annual
trade shows where it distributes literature about the origin, growing,
harvesting and production of Darjeeling tea. In addition, Mr. Krishna
testified that opposer sends representatives to supermarkets throughout
the United States to distribute such literature, although few details
of this activity have been provided.
Opposition No. 91118587
22
Darjeeling and that up to 40% of the content of certified
Darjeeling tea could originate from some other place. Applicant
further points to opposer's subsequent "draft" regulations which
allowed the DARJEELING word mark to be used in connection with as
little as 5% tea from Darjeeling. Applicant argues that the Tea
Board circulated this set of regulations unaccompanied by any
solicitation for comments and without indicating that it was in
proposed form. Applicant concludes that this set of regulations
"was never intended as a draft when it was first released" and
further, that regardless of whether it was in proposed or final
form, "it speaks nonetheless to the Tea Board's knowledge of the
reality that not all tea sold as "DARJEELING" really originates
from Darjeeling." (Counterclaim Brief, p. 4.)
There are, of record, four sets of regulations issued by
opposer since 1987. The first set of regulations covers just the
logo mark. These regulations appear to permit use of the mark
only in connection with 100% Darjeeling tea.16 It is not clear
when these regulations became effective. We do not have of
record what are apparently the original 1987 regulations

16 These regulations provide, in part, that the mark may be used in
relation to a blend of Darjeeling teas drawn from more than one tea
garden "only if each tea constituting the blend" complies with the
regulations. The regulations also specifically state that "The
Certification Mark may not be used in relation to a mixture of
Darjeeling tea with teas of other origin and/or countries, even in
phrases incorporating the word 'blend' such as 'DARJEELING Blend' or
'Blended DARJEELING.'" It is not clear when these regulations became
effective.

Opposition No. 91118587
23
governing the logo mark that applicant has challenged. However,
there appears to be no dispute that those regulations permitted
use of the logo mark in connection with tea consisting of blends
including up to 40% tea from some place other than Darjeeling.
The second set of regulations covers only the DARJEELING
word mark. These regulations were submitted in connection with
the application for the word mark on January 10, 2002. They
provide, in part, that the mark "may be used in relation to a
blend of Darjeeling teas drawn from more than one tea garden..."
but that the mark "may not be used in relation to a mixture of
Darjeeling tea with teas of other origin and/or countries, even
in phrases incorporating the word 'blend' such as 'DARJEELING
Blend' or 'Blended DARJEELING'"
The third set of regulations governs use of both the word
mark and the logo mark. These are the disputed "draft"
regulations. At some point in January or early February 2004,
the Tea Board, through Mr. Krishna, sent new regulations to the
United States Tea Association for circulation to its members
without mentioning that the regulations were in draft form and
that they were to be circulated only for review and comment.
These regulations did not permit use of the logo mark with any
tea that is less than 100% tea from Darjeeling, but did allow use
of the DARJEELING word mark with a blend of tea that consisted of
5% tea from Darjeeling and 95% from other regions. According to
Opposition No. 91118587
24
the stipulated testimony of the Tea Board, those percentages were
a "drafting error." (Stip. Test., p. 4.) Further, according to
this testimony, when Mr. Krishna realized his mistake, on
February 4, 2004, he sent an email to the United States Tea
Association which was forwarded to all recipients of the draft
explaining that the regulations were in draft form and inviting
member comments.
The fourth set of regulations covers both the logo mark and
the word mark. These are final regulations that were issued by
the Tea Board on December 23, 2004 and they are the most current
regulations in the record. The regulations permit use of both
marks only in connection with 100% Darjeeling tea, define the
term "blend" to mean only a blend of tea from more than one
Darjeeling tea garden, and delineate the requirements for use of
"the word Darjeeling" in connection with a component of a tea
mixture.
Applicant appears to conclude from the fact that the
original 1987 regulations covering the logo mark and the portion
of the more recent "draft" regulations that covered the word mark
permitted use of the respective marks in connection with less
than 100% Darjeeling tea, that the regulations allowed for
inherently deceptive use of the DARJEELING word mark and logo
mark, and resulted in misleading use of the marks per se.
Opposition No. 91118587
25
Applicant has offered no support in law or reason for this
contention. There is nothing inherently deceptive in permitting
use of the mark to identify a component of the tea, if it is the
component that is being certified. A certification mark does not
exist in a vacuum. It cannot be considered apart from that
aspect of a product that is being certified and the standards for
certification. See Opticians Association of America v.
Independent Opticians of America Inc., 734 F. Supp. 1171, 14
USPQ2d 2021, 2027 (D.N.J. 1990) ("certification mark serves as
seal of approval for, or guarantee of compliance with, uniform
standard"); and American Speech-Language-Hearing Assn. v.
National Hearing Aid Society, 224 USPQ 798 (TTAB 1984). Thus,
even if opposer was authorizing use of the marks to identify a
component of an entire tea product, as long as the standards
provided for adequate control of the marks when used in that
manner, then as a matter of law, the standards were not
deceptive. Further, if the marks were used in accordance with
those standards, then the marks were not being used in a
deceptive or misleading manner, and consumers could not have been
deceived as to the source of the product or its purity.
Accordingly, we would need to look to opposer's regulations
and the provisions for control over use of the marks. However,
we do not have copies of the original 1987 regulations which
apparently allowed use of the logo mark on blends consisting of
Opposition No. 91118587
26
40% non-Darjeeling tea or information as to the provisions for
control in those regulations. Therefore, we can make no
determination as to whether the control under those regulations
was adequate.17 As to the "draft" regulations, we find that
opposer has shown by testimony and supporting documentation that
they were effectively only a proposal, even though they were not
identified as such, and that they were never effectively employed
by opposer or relied on. Therefore, we will not make any
determination as to their adequacy.
However, even assuming we found the standards in the "draft
regulations to be inadequate, while it has been held that license
agreements without adequate provisions for quality control
("naked licenses") may result in a forfeiture of the mark (see,
e.g., Stanfield v. Osborne Industries Inc., 52 F.3d 867, 34
USPQ2d 1456 (10th Cir. 1995)), we would not presume that a
certification mark had lost its significance merely because of a
"naked license," in the absence of an actual showing of loss of
trademark significance. See Exxon Corp. v. Oxxford Clothes,
Inc., 109 F.3d 1070, 42 USPQ2d 1417 (5th Cir.), cert. denied, 118
S. Ct. 299 (1997).

17 Nor would we make any such determination because applicant's argument
constitutes a collateral attack on the validity of the logo mark
registration. Applicant is, in effect, contending that the manner in
which the Tea Board was using the registered logo mark had the effect
of misleading the public.

Opposition No. 91118587
27
Third-Party Usage of DARJEELING word mark and lack of
"widespread" usage of DARJEELING logo mark

Applicant alleges that there is in fact current misuse of
the DARJEELING word mark. Ms. Barberis testified that she went
to five grocery stores in the St. Louis area and purchased nine
packages of tea, a package of every brand of tea she could find
that was designated "Darjeeling." Applicant made of record
photocopies of at least some portion of each of the nine
packages. Each package prominently displays the brand name of
the tea as well as the term DARJEELING, which usually appears
spatially separated from the brand name, and contains other
informational text as follows:
TWINNINGS OF LONDON...DARJEELING TEA: One of the
world's finest blends of teas, with a distinctive
delicate flavour; A tea from the Darjeeling region of
India, in the foothills of the Himalayas. Darjeeling
is valued for its fine, delicate flavour and aroma and
is considered the "champagne" of teas.

TAZO The Reincarnation of Tea DARJEELING Organic
Varietal Black Tea: Capturing the essence of the
Himalayas; ...The climate in the Himalayan foothills of
Darjeeling is so perfect for the organic growing of
tea. ... Organic Tazo Darjeeling is grown organically
near India's border with Bhutan. Containing only true
Darjeeling leaves, its luminous taste is a blend of the
lightly floral, first flush Darjeeling and the full,
rich second flush Darjeeling. ...

CELESTIAL SEASONINGS...GOLDEN HONEY DARJEELING: The
Champagne of Teas; At the foothills of the mighty
Himalayan Mountains sits Darjeeling, a name of Tibetan
origin meaning "land of thunderbolts." A unique
combination of growing conditions and the hard work,
Opposition No. 91118587
28
and devotion of the Darjeeling people produces what
experts call "the champagne of teas."

DARJEELING...STEWARTS: The World's finest tea grown on
the slopes of the Himalayas. Rich, Exquisite Bouquet
DARJEELING.

CREDO TEA DARJEELING: Ingredients: Handpicked pure
Darjeeling tea; Product of India.

THE CHAMPAGNE OF TEAS 50 DARJEELING TEA BAGS;
WILLIAMSON & MAGOR: Produce of India; Our pure
Darjeeling tea.

BIGELOW...DARJEELING BLEND: Rich, pure and fragrant
... this TEA is known as the champagne of teas;
DARJEELING BLEND: Darjeeling is the richest and finest
of the world's great teas. Slow grown on the slopes of
the Himalayas, this rare and costly tea is renowned for
its exceptional character and exquisite bouquet... .

DEAN & DELUCA...DARJEELING RISHEESHAT: India Black Tea.
CHOICE Organic Teas...ORGANIC...DARJEELING TEA: Choice
Organic Darjeeling Tea is a premier varietal from the
Makaibari Garden in the Himalayan foothills; ...
unblended ...; Ingredients: Pure Organic Darjeeling
Tea.

Applicant argues that this evidence shows that Darjeeling
has lost its significance as an indication of origin because
several packages indicate that the tea is a "blend" which,
according to applicant, means that the contents are not entirely
from the Darjeeling region; that the tea would not be eligible
for certification under the Tea Board's current standards; and
that opposer has admittedly never taken any action against any
third-party users. In addition, applicant introduced the
receipts for the purchase of each product asserting that the
Opposition No. 91118587
29
differences in the prices for certain brands further indicates
some teas are not 100% tea from Darjeeling.
We do not see how the use of DARJEELING on any of these
packages is probative of generic use. Nor do the packages show
deceptive or misleading use of Darjeeling. We have found that
the current standards provide for adequate control, and there is
nothing on the face of the packaging or otherwise in the record
to indicate that the tea contained in these packages is not in
compliance with those standards. Each of the nine packages, on
its face, indicates in more or less specific terms that the tea
is from the Darjeeling region of India. There is nothing to
indicate that the tea is anything other than 100% tea from
Darjeeling. Nor is there any indication that any tea identified
as "blended" includes anything besides teas from more than one
Darjeeling tea garden, rather than a blend of tea from different
geographic regions.18 See, e.g., Community of Roquefort v. Santo,
157 USPQ 444, 447 (TTAB 1968) (in the absence of any conclusive
evidence to indicate that the listing of "Roquefort cheese" as an
ingredient of applicant's product was, as opposer charged, a
blatant misrepresentation, the Board held it must assume that

18 Opposer testified that the prior regulations were revised to prevent
use of the term "DARJEELING blend" in connection with tea that includes
any portion of non-DARJEELING tea and to clarify the meaning of
"blend," pointing out that teas from a single Darjeeling garden are
more highly valued and more expensive than teas from more than one
garden. (Stip. Test., p. 4.)

Opposition No. 91118587
30
applicant's product contained an unspecified quantity of
"ROQUEFORT" cheese.)
The packages of CELESTIAL SEASONINGS, TWINNINGS OF LONDON
and BIGELOW all contain references to a "blend." Although it
cannot be seen on the portions of the CELESTIAL SEASONINGS
package reproduced in applicant's exhibits, Ms. Barberis read the
following information from the package into the record, "Our
Golden Honey Darjeeling is a lively black tea blend with lightly
fragrant overtones"; and she stated that the package lists the
ingredients as "black tea, orange peel, chamomile flowers,
natural honey flavor with other natural flavors and dried honey."
While the product may contain orange peel and other ingredients,
the mark is used to certify that the tea contained in the product
is genuine and there is nothing to indicate that the tea itself
is not entirely from Darjeeling.
In addition to the reference to "blend" on the TWINNINGS OF
LONDON package in the text reproduced above, Ms. Barberis read
the following wording from the package: "Darjeeling tea blended
by Twinnings of London, England" and "Black tea such as the tea
contained in this package and green tea naturally contain
flavonoid antioxidants...." (Emphasis added.) We see nothing
misleading about the reference to "blends" or "blended" on this
package. Darjeeling tea is a "black tea" and there is nothing to
Opposition No. 91118587
31
show that the "blend" is anything other than a permissible blend
of black teas from more than one Darjeeling tea garden.
Similarly, there is no indication that "BIGELOW Darjeeling
Blend" is anything other than pure Darjeeling tea from more than
one Darjeeling garden. Nor is there any evidence that the
reference to black Darjeeling "Teas" (plural), on the TAZO
package refers to anything other than "teas" from more than one
Darjeeling garden.
Applicant's argument concerning the price differences
between certain brands of tea is also unpersuasive. The receipts
show that the DEAN & DELUCA brand cost $12.50, that the
WILLIAMSON & MAGOR brand cost $12.99, and that the prices for all
the other brands are in the range of $3.00. Many variables could
explain the differences in price. First, as opposer testified,
if the tea is a blend of tea from more than one garden it would
affect the price of the tea. This could explain the higher
prices of teas not marked as "blended." The difference could
also be attributed to the weight of the product. We note that
most or all of the lower priced brands weigh 1.1-2.0 ounces while
the more expensive DEAN & DELUCA brand, for example, weighs 4
ounces.19 Another reason for the price difference could be the
packaging itself. For example, the more expensive WILLIAM &

19 The weight of the WILLIAMSON & MAGOR tea product is not shown on the
photocopied portions of the package that we have of record.
Opposition No. 91118587
32
MAGOR brand consists of an elaborate tin in the shape of an
elephant which could explain the higher cost for the item.
As further evidence that DARJEELING has lost all
significance as a mark, applicant points to the following: the
fact that none of the nine packages bears the logo mark; that
apart from applicant and the one other company in the United
States (The Stash Tea Company) using the Darjeeling logo mark,
there are no other sellers of packaged tea sold as Darjeeling in
the United States who use that logo; that although Ms. Ray
testified that at least 15 companies in the United States are
authorized to use the logo mark, opposer did not produce any
executed license agreements with these sellers; and that although
the Thomas J. Lipton company was identified by Ms. Ray as a
licensee, Ms. Barberis, who purchased a sample of every package
of tea she could find in five grocery stores in St. Louis, could
not find any Lipton "Darjeeling" tea, or any evidence that it
sells such tea, let alone any Lipton tea with the logo mark.
Applicant submits that lack of "widespread" use of the logo mark
is relevant because if most sellers of Darjeeling tea were
selling a 100% Darjeeling product, more than just a couple would
take advantage of the right to use the logo mark; and that this
creates "a further inference that...Darjeeling is being used in
connection with the sale of tea that is not 100% from
Darjeeling." (Counterclaim Reply, p. 5.)
Opposition No. 91118587
33
We find this inference unsupportable. It would be purely
speculative to conclude from nonuse of the logo mark that the tea
contained in the package is not 100% Darjeeling tea. Nor will we
speculate as to the sellers' reasons for not using the logo mark.
In addition, opposer has produced uncontraverted evidence that at
least 15 companies are authorized to use the logo mark. We will
not infer from applicant's search for products limited to just a
few stores in a single city that packages of tea bearing the logo
mark would not be found in other stores located in different
cities.
Furthermore, as noted earlier, even assuming applicant had
produced evidence of misuse, that is, use indicating a different
geographic source for the tea or use in connection with
nongenuine tea, we will not infer that the mark has become
generic unless it is also shown by applicant that the misuse is
so widespread and of such duration that it has caused DARJEELING
to lose all significance as a mark.
The Survey
Applicant points to the survey in support of its contention
that the mark is generic and only denotes a type of tea, and then
proceeds to argue that the survey "clearly establishes that the
public, as a whole, does not understand that Darjeeling tea comes
only from the Darjeeling region of India"; and that there is no
association in the public's mind between the term Darjeeling as
Opposition No. 91118587
34
applied to tea and any specific geographic region. (Brief, pp.
6, 8; Counterclaim Brief, p. 7.)
Opposer challenges the validity of the survey given the
open-ended nature of the survey questions and the way the
respondents' actual answers were characterized and grouped and
maintains that the survey is not evidence that DARJEELING is
perceived as a generic term.
To the extent applicant is relying on the survey to show
that the term Darjeeling is generic among consumers, which is the
actual issue in the case, the survey fails to do so and, as far
as we can tell, was not even designed to show that the term is
generic. In addition, we find the survey is flawed at least in
interpretation of what it does purport to show, and is of little
probative value.
This was a telephone survey conducted by Dr. Carl E. Block
of Doane Marketing Research. The stated purpose of the survey
was "to determine what consumers say Darjeeling tea is." The
survey involved 301 respondents who answered preliminary
questions indicating that they had purchased tea for themselves
or others in their household during the past year and that they
are "personally familiar" with Darjeeling tea.
Each respondent was asked the open-ended question "What is
Darjeeling tea?" where the respondents could give as many
responses as they wished. This question was followed up by the
Opposition No. 91118587
35
probe "Anything else?". There were a total of 485 answers to the
questions given by the 301 respondents.
Applicant introduced, through the testimony of Dr. Block, a
written report of the survey which includes, not the verbatim
responses,20 but Dr. Block's summary of responses and a separate
"tabulation" of responses. The tabulated responses appear to be
more detailed than the summary, but still an abbreviated
breakdown of answers. The tabulation consists of a listing of
grouped responses, and shows the number of people who gave the
responses as well as the percentage of total answers each group
of responses represents.
In preparing the summary of responses, Dr. Block "coded" the
485 answers,21 although it is not clear whether he coded the
answers from the verbatim responses or from the tabulated
responses. He then grouped each answer under one of five general
categories of answers and calculated the percentage of total
answers for that category. Those categories with percentages are
as follows (for example, the figure "32.4%" represents 32.4% of
the total answers):

20 Opposer points out that it requested the database of actual responses
during the deposition of Dr. Block but did not receive them and
applicant does not dispute that the actual responses were not provided.

21 Dr. Block stated during his deposition that he did not do all of the
coding or all of the summary work. (Test., p. 12.) However, the
survey was conducted under his authority and the report was prepared
under his signature. Therefore, we consider the report as Dr. Block's
own work product.
Opposition No. 91118587
36
A type of tea (32.4%)
A tea they buy/don't buy (19.8%)
A tea from India (15.3%)
A tea with certain properties (13.2%)
A tea with some familiarity (7.2%)

Under each category, Dr. Block listed the answers or types
of answers which in his judgment should fall into that category.
For example, under the category "A type of tea," he listed the
following answers or types of answers along with the number of
individuals who gave those answers:
A type of tea (32.4%)
general reference to type.. 83
black tea.................. 34
herbal tea................. 15
green tea.................. 11
flavored tea.................7
caffeinated tea..............4
English tea..................3

Dr. Block totaled the percentages of all categories except
the category "A tea from India" and came to the following
conclusions: that "a sizable majority (nearly 75%) of the 485
answers ... described [Darjeeling] as a type of tea, a tea they
recognize, a tea with certain qualities, or a tea that they may
or may not buy"; that "over 75 percent of the 301 respondents did
not make any mention of a 'tea from India'..."; and finally that
"the vast majority of persons...do not think of Darjeeling tea as
a 'tea from India.'" Dr. Block also states in his report that
Opposition No. 91118587
37
"74 (24.6%) of the 301 respondents made a reference to a 'tea
from India', often along with some other answer..."
First, Dr. Block did not conclude or even suggest that the
results show that Darjeeling is perceived as a generic term.
Nor do the results support that finding.
Second, we have numerous problems with the way in which Dr.
Block interpreted or "coded" the responses as well as the manner
in which he grouped the coded responses, and as a result, we have
no confidence that the "32.4%" figure, which represents the
number of answers allegedly identifying Darjeeling as a "type" of
tea, is accurate.22 However, we see no need to address these
problems because the results, even if accepted as reliable, are
not meaningful. Even assuming that Dr. Block properly
characterized the answers as a "type" of tea, only 32.4% of
respondents gave any such answer which would mean, as even Dr.
Block admitted, that the "majority" of respondents, nearly 68%,
did not think of Darjeeling merely as a type of tea. (Test., p.
14.)

22 Apart from the many issues we have concerning Dr. Block's
characterization of any given answer as a "type" of tea, even if the
respondents themselves actually thought of Darjeeling as a "type" of
tea or actually used the word "type" in their answers, there is no way
of knowing what the respondents understood the word "type" to mean,
that is, whether they understood the word to mean a product brand or
source, or a product genus. For example, we cannot determine whether
the 34 respondents who gave the answer "black tea" viewed Darjeeling
(which is a black tea) as a type of black tea from a particular place
or a type of black tea regardless of where it comes from.
Opposition No. 91118587
38
Third, applicant apparently expects us to infer that
Darjeeling is generic from the results which, according to
applicant, show that most people do not know the tea comes from
Darjeeling and/or that they think it comes from someplace other
than Darjeeling. Even assuming what applicant says is true,
which we do not, it would at most mean that the term does not
indicate a single geographic source, or that consumers'
association with the geographic place is not particularly strong.
See Wallpaper, supra at 333 ("The Board's view that there is no
trademark 'when a mark loses its capacity to point out uniquely
the single source or origin of goods,' that is, unless one
maintains exclusivity of rights, is...simply 'bad law.'")
(Emphasis in original.) Compare, e.g., Fontina, supra (finding
that FONTINA identifies a type of cheese because of the evidence
showing use on similar products coming from other geographic
areas and because of evidence of use in a generic manner.)
Fourth, it is not reasonable to conclude from the survey
that those who did not identify Darjeeling as a tea from India
did not know it was a tea from India. As opposer points out,
even applicant's own expert Dr. Block admitted (Test., p. 15)
that it would be speculative to conclude from the results that
the respondents did not say the tea is from India because they
did not know or believe it was from India.
Opposition No. 91118587
39
Simply put, applicant's survey fails to either show or
support an inference that the primary significance of DARJEELING
is generic.
Dictionary Definitions
Applicant submitted dictionary listings showing that
Darjeeling is defined in The American Heritage Dictionary of the
English Language (4th ed.) as "A fine variety of black tea grown
especially in the northern part of India"; in Merriam-Webster
OnLine as "a tea of high quality grown especially in the
mountainous districts of northern India"; and in Webster's New
Collegiate Dictionary (1977) as "a tea of high quality grown esp.
in the mountainous districts of northern India." According to
applicant, these definitions show that the tea is "especially,
but not exclusively" from the Darjeeling region of India.
Applicant concludes that the meaning of Darjeeling is therefore
generic.
Opposer, in response, submitted a definition of "especially"
as meaning "specifically," as well as dictionary listings showing
unqualified references to Darjeeling as a tea from that region as
follows: The New Oxford American Dictionary ("a tea grown in
mountainous areas around the town of Darjeeling"); The New
Lexicon Webster's Dictionary of the English Language ("a
town...in W. Bengal, India, on the slopes of the Himalayas, a
health resort and a center of the tea industry"); Random House
Opposition No. 91118587
40
Compact Unabridged Dictionary ("a type of tea grown in
mountainous areas around the town of Darjeeling"); and The Great
Family Encyclopedic Dictionary ("resort city in N.E. India, in
the foothills of the Himalayas. ~ tea, fine black tea grown
there"). In addition, opposer points to Institut, supra, wherein
the Board recognized COGNAC as a certification mark for
geographic origin notwithstanding the existence of a dictionary
definition of the term acknowledging "loose" misuse of the term
in connection with "any good brandy."
The dictionary definitions submitted by applicant fail to
show that Darjeeling has a generic meaning. They do not show
that Darjeeling refers only to a type of tea, or even to a tea
that may be grown somewhere other than Darjeeling, India. The
definitions referring to "especially" are at worst ambiguous, as
that term could be interpreted to mean "specifically," as opposer
points out, and they fail to detract from the meaning of
Darjeeling as a geographic source for tea. In any event, a
number of the dictionaries reference Darjeeling as the exclusive
geographic source of tea from that region.
Media Usage
Applicant has introduced no evidence of generic use of
DARJEELING by the media. Opposer, on the other hand, has
introduced a number of materials that show recognition of
DARJEELING solely as a term indicating tea from that region,
Opposition No. 91118587
41
including books, newspaper articles, trade publications, Internet
articles, websites of third-party tea companies, as well as
applicant's own website.23
We also note that, while not determinative, Darjeeling is
always capitalized in these references. Applicant has not
pointed to, nor have we seen, a single instance of use of
Darjeeling in a lower case letter "D" which may signify use in
the manner of a generic designation. See, e.g., Zimmerman, supra
at 1434 ("'Realtor' is capitalized and used in a manner
consistent with respondent's position that this term functions as
an identifier for its members, not as a generic designation for
all real estate agents"); and Fontina, supra (noting lower-case
treatment of "fontina" by reference materials to name a kind of
cheese with certain characteristics regardless of regional
origin).
Applicant's contention that opposer's evidence only shows
use of Darjeeling by the trade is not altogether true, and
moreover, even if true, is not significant. Applicant has the
initial burden of demonstrating that the mark is generic, and
applicant has failed to carry that burden.

23 We note, too, as opposer points out, that the USPTO website's
information on geographical indications lists DARJEELING along with
other geographical indications. However, the mark is listed on the
website as an example of a registered mark indicating geographic
origin.
Opposition No. 91118587
42
Conclusion
There is insufficient probative evidence in the record to
establish that the DARJEELING word mark is generic. Accordingly,
the counterclaim for cancellation of Registration No. 2685923 is
dismissed.

LIKELIHOOD OF CONFUSION
We turn now to the question of likelihood of confusion
between applicant's trademark DARJEELING NOUVEAU for tea and
opposer's certification marks DARJEELING and the mark shown
below, both used to certify tea from Darjeeling, India.24

Opposer introduced, by notice of reliance and also during
the testimony deposition of Mr. Krishna, a status and title copy
of the registration for its logo mark.25 The registration for the

24 In our analysis we keep in mind that Registration No. 2685923 for the
word mark DARJEELING, and the unchallenged Registration No. 1632726,
for the logo mark, are valid certification marks and are entitled to
all the presumptions of validity. Therefore, for purposes of this
analysis, any evidence or arguments that constitute a collateral attack
on either of the registered marks will not be considered.

25 The Board takes judicial notice of the current status of this
registration and specifically that the registration was renewed on June
30, 2001. See TBMP §704.03(b)(1)(A) (2d ed. rev. 2004) (when a
Opposition No. 91118587
43
word mark is of record by virtue of the counterclaim brought by
applicant.26 See Trademark Rule 2.122(b). Cf. Allied Mills, Inc.
v. Kal Kan Foods, Inc., 203 USPQ 390, 396 (TTAB 1979) ("if the
counterclaim fails, opposer's registered mark is entitled to all
of the presumptions of §7(b) of the statute" including ownership
of the mark and validity of the registration). Therefore,
opposer's standing has been established, and its priority with
respect to these registered marks is not in issue. King Candy
Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Thus, we turn to the question of likelihood of
confusion.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue,
including the similarities or dissimilarities between the marks
and the similarities or dissimilarities between the goods. In re

registration owned by a party has been properly made of record, and
there are changes in the status of the registration between the time it
was made of record and the time the case is decided, the Board will
take judicial notice of, and rely upon, the current status of the
registration as shown by the records of the USPTO).

26 Opposer did not testify as to the ownership and validity of this
registration and opposer introduced only a plain copy of the
registration by notice of reliance along with a printout of the
registration from the USPTO's electronic TRAMII system. As indicated
earlier, the parties had stipulated to the "admissibility and
authenticity" of the documents and materials submitted by notice of
reliance but not to the truth of the matters therein.
Opposition No. 91118587
44
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
The test for determining likelihood of confusion with
respect to certification marks is the same as that applied to
trademarks, i.e., the du Pont analysis. However, because the
certification mark owner does not itself use the mark, the
question of whether there is a likelihood of confusion is based
on a comparison of the mark as applied to the goods of the
certification mark users. See DuPont v. Yoshida 393 F.Supp 502,
185 USPQ 597 (E.D.N.Y.) ("...proximity [of products] may be
measured against that of the certification mark user..."); and
McCarthy, supra at §19:92.1 (4th ed. 2006) ("likelihood of
confusion is measured by the related nature of the goods used by
the certification mark users"). See also Jos. S. Cohen & Sons
Co. v. Hearst Magazines, 220 F.2d 763, 105 USPQ 269 (CCPA 1955);
and Community of Roquefort v. William Faehndrich, Inc., supra.
Other issues relating to the goods, including the channels of
trade and purchasers for the goods are determined from the
standpoint of the users as well.
Goods, channels of trade, purchasers
Opposer argues that the goods are identical; that as a
licensed seller of Darjeeling tea, applicant is within the Tea
Board's very channel of trade and sells to precisely the
consumers the Tea Board expects to protect; and that, as
Opposition No. 91118587
45
indicated in Institut, applicant's use of its mark in connection
with genuine, certified product is irrelevant to the
determination of likelihood of confusion.
Applicant argues that purchasers of applicant's tea could
not be confused as to origin because, unlike Institut, where
Cognac was just a component of the defendant's entire product,
applicant's goods consist entirely of Darjeeling tea. Applicant
argues that the Board in Institut did not hold that the
certification status of applicant's goods is irrelevant, and to
the extent that it does, the case was "wrongly decided." (Brief
in Opp., p. 11.) It is applicant's view that while the
genuineness of the product may not be dispositive of the question
of likelihood of confusion, it is a relevant consideration.
Accordingly, applicant has offered to amend the description of
its goods to read "tea entirely from the Darjeeling region of
India" to distinguish this case from Institut where the
applicant's goods were not entirely certified goods.
While admitting the channels of trade overlap, applicant
argues that they are not identical in that opposer's certified
goods have much broader distribution than applicant's goods.
Applicant contends that most of opposer's certified goods
"apparently move in wholesale distribution" whereas applicant's
goods move "almost entirely" in retail channels of trade. (Brief
in Opp., p. 14.)
Opposition No. 91118587
46
The parties' marks are used on identical goods - tea.
Because the goods are identical and there are no restrictions in
the identification of goods, the channels of trade as well as the
purchasers for such goods are deemed identical. It is not
significant, either in law or fact, that the channels of trade
for opposer's certified tea may actually be broader than
applicant's channels of trade. To the extent the channels of
trade and purchasers overlap, they are in part identical. In any
event, the question of likelihood of confusion is based on the
goods as identified in the application and registrations
regardless of what the record may show as to the actual channels
of trade or purchasers for the goods. See CBS, Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). We must assume
that applicant's tea and the tea of opposer's certification mark
users are sold in the same channels of trade, including all the
usual retail outlets for tea and to all the same purchasers,
including ordinary purchasers. Moreover, it is reasonable to
assume that ordinary purchasers of tea are not necessarily
discriminating or knowledgeable about those products. Given the
inexpensive nature of many teas, as shown by applicant's own
evidence, ordinary purchasers would not necessarily be likely to
exercise the high degree of care necessary to prevent confusion.
Applicant's reliance on and interpretation of Institut is
simply incorrect and its arguments miss the point. The Board
Opposition No. 91118587
47
specifically rejected the theory that the use of certified goods
would constitute a defense to a certification mark owner's
Section 2(d) claim. See Institut, supra at 1891. In fact the
Board held "as a matter of law" that in a case involving a
certification mark "the traditional du Pont likelihood of
confusion analysis is applicable" and "as in any other Section
2(d) case ... includes likelihood of confusion as to source,
sponsorship, affiliation, or connection."27 Institut, supra at
1891; and also at 1890 (pointing out that there is nothing in the
language of Section 2(d) and otherwise no authority for treating
certification marks differently from trademarks, or for affording
them a lesser scope of protection). When a user's goods are not
genuine or do not meet the certifier's standards, it may provide
additional support for a Section 2(d) claim. See, e.g., Bureau
National Interprofessionnel Du Cognac v. International Better
Drinks Corp., 6 USPQ2d 1610, 1617 (TTAB 1988) (finding that the
mark COLAGNAC so resembled the certification mark COGNAC "as to
be likely, when applied to the goods of the applicant, to cause
confusion, mistake, or deception among purchasers, that is, to
cause them to mistakenly believe that applicant's product is, or
contains, authentic 'COGNAC' brandy (i.e., brandy which has been

27 Following applicant's line of reasoning, any trademark licensee would
be entitled to register the trademark owned by the licensor (or for
that matter, applicant would be entitled to register the mark
DARJEELING as a trademark for tea), provided the product is genuine.
Opposition No. 91118587
48
certified by opposer Bureau as having been produced from grapes
grown in the Cognac region of France in accordance with French
laws and regulations.)"). In contrast, the fact that a user's
products may be genuine, whether in whole or in part, is simply
irrelevant, and is not a defense to a likelihood of confusion
claim. See, e.g., Societe Des Produits Nestle v. Casa Helvetia,
Inc., 982 F.2d 633, 25 USPQ2d 1256, 1262 (1st Cir. 1992) ("A
showing that the alleged infringing product suffers in quality is
not necessary to prove a Lanham Act violation"); and The American
Angus Association v. Sysco Corp., 829 F.Supp. 807, 25 USPQ2d
1683, 1691 (W.D.N.C. 1992) ("Even if such a certification
existed, making the phrase 'certified angus beef' arguably
truthful as applied to Defendants' product...[i]t is the
secondary meaning of the phrase (aligning it with Plaintiff's
product) which makes its use in Defendants' ads impermissible.").
To the extent that applicant expects us to consider the
genuineness of its product as a mitigating, if not a dispositive,
factor in the likelihood of confusion analysis, we find instead
that the genuineness of applicant's product, if anything, serves
to enhance an association with opposer.
Inasmuch as applicant's offer to amend its identification of
goods to state that the tea is 100% Darjeeling tea was made in an
effort to overcome the likelihood of confusion, and because such
Opposition No. 91118587
49
amendment cannot overcome the likelihood of confusion, it will be
given no further consideration.
It is clear that if these identical goods are offered under
similar marks there would be a likelihood of confusion. We turn
then to the marks, keeping in mind that when marks would appear
on identical goods, the degree of similarity between the marks
necessary to support a finding of likely confusion declines.
Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Fame or relative strength of opposer's marks

DARJEELING word mark: Opposer contends that the mark
DARJEELING is famous, or at least that there is a strong
association among consumers of DARJEELING with tea from that
region. In support of this contention, opposer relies on
evidence consisting of Mr. Krishna's and Ms. Ray's testimony that
companies have been importing and selling tea grown in the
Darjeeling region of India and labeled as DARJEELING tea in the
United States for about 50 years. Opposer has also relied on
dictionary definitions for Darjeeling, third-party use of the
mark on packaging for the teas indicating that the tea is from
the Himalayan region of India; various advertisements for
Darjeeling tea appearing in trade publications and references to
and discussions of Darjeeling tea in books, newspaper articles,
trade publications, Internet articles, and websites of third-
Opposition No. 91118587
50
party tea companies. Opposer also points to its own activities
in promoting and educating the public about Darjeeling tea. In
particular, opposer testified that it regularly attends trade
shows where it promotes Darjeeling tea, and also sends
representatives to supermarkets throughout the United States to
distribute literature and educate consumers about Darjeeling tea.
Applicant, on the other hand, argues that DARJEELING as a
geographically descriptive word is weak and further that while
the evidence may show that tea aficionados may equate DARJEELING
with 100% tea from that region, the general public does not.
In determining the strength of a mark we consider both its
inherent strength based on the nature of the mark itself and its
market strength. See Freedom Card Inc. v. JPMorgan Chase & Co.,
432 F.3d 463, 77 USPQ2d 1515 (3d Cir. 2005); Brennan's Inc. v.
Brennan's Restaurant LLC, 360 F.3d 125, 69 USPQ2d 1939 (2d Cir.
2004); Therma-Scan Inc. v. Thermoscan Inc., 295 F.3d 623, 63
USPQ2d 1659 (6th Cir. 2002); and H. Lubovsky, Inc. v. Esprit de
Corp, 627 F.Supp. 483, 228 USPQ 814 (S.D.N.Y. 1986).
Geographically descriptive terms are generally regarded as
inherently weak and entitled to less protection than arbitrary or
suggestive marks. Ordinarily, a term that describes the
geographic source of a product is not protectable without a
showing of acquired distinctiveness. However, Section 2(e)(2) of
the Trademark Act which prohibits registration of a mark that is
Opposition No. 91118587
51
primarily geographically descriptive of an applicant's goods,
provides a specific exception for marks used to certify
indications of regional origin under Section 4 of the Act. Thus,
the presumption that a geographic term is inherently weak does
not attach to geographic terms that are used to certify regional
origin. A mark that is registered on the Principal Register is
entitled to all Section 7(b) presumptions including the
presumption that the mark is distinctive and moreover, in the
absence of a Section 2(f) claim in the registration, that the
mark is inherently distinctive for the goods. See, e.g., Sally
Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 64 USPQ2d 1321, 1326
(10th Cir. 2002) (rebuttable presumption that the mark is
inherently distinctive); and Equine Technologies Inc. v.
Equitechnology, Inc., 68 F.3d 542, 36 USPQ2d 1659, 1661 (1st Cir.
1995) (holder of the mark entitled to presumption that its
registered trademark is inherently distinctive). See also
McCarthy, supra at §11:43 (4th ed. 2006) (noting that "The vast
majority of courts have interpreted this section [7(b)] to mean
that plaintiff in litigation is entitled to a strong prima facie
presumption that its registered mark is either not 'merely
descriptive' or if descriptive, that secondary meaning is
presumed, which amounts to the same thing.")
Thus, we consider DARJEELING inherently distinctive as a
certification mark indicating geographic origin as it inherently
Opposition No. 91118587
52
identifies the geographic source of the tea. Generally, greater
protection is afforded to more distinctive marks. See
Worthington Foods Inc. v. Kellogg Co. 732 F.Supp. 1417, 14 USPQ2d
1577, 1607 (S.D. Ohio 1990) ("The inherent nature of the
plaintiff's mark is relevant since the more distinctive the mark,
the more likely it is that a consumer, with a general
recollection of the plaintiff's mark, will draw a connection
between the two parties when seeing the defendant's mark.")
With regard to the market strength of DARJEELING, the
question is the extent to which the relevant public recognizes
DARJEELING as a mark denoting regional origin for tea. The
relevant public in this case includes not only tea aficionados
and enthusiasts, but ordinary purchasers of tea, as well.
We find that the evidence considered as a whole demonstrates
that DARJEELING is a strong mark as an indicator of geographic
source for tea. The testimony shows, and there is no dispute,
that Darjeeling tea has been sold in the United States for 50
years. The testimony and other evidence of record also shows,
and there is no real dispute, that DARJEELING is recognized by
those in the trade and tea aficionados as a geographical
indication.
On the other hand, there is also evidence that shows or from
which we can infer awareness and recognition of the significance
of DARJEELING by at least a significant percentage of general
Opposition No. 91118587
53
consumers of tea, as well.28 We first note that Darjeeling has no
meaning apart from its geographic meaning and all the evidence of
record points to that region's association with tea, and no other
products. Darjeeling is defined in a number of mainstream
dictionaries not just as a geographic place but as a place known
particularly for tea from that region. Dictionaries can be
strong evidence of the commonly understood meaning of a term.
See Pilates Inc. v. Current Concepts Inc., 120 F.Supp.2d 286, 57
USPQ2d 1174 (S.D.N.Y. 2000) ("Dictionary definitions, while not
conclusive, reflect the general public's perception of a mark's
meaning."); and Murphy Door Bed Co. v. Interior Sleep Systems,
Inc., 874 F.2d 95, 10 USPQ2d 1748, 1752 (2d Cir. 1989)
(dictionary definitions "are influential because they reflect the
general public's perception of a mark's meaning and
implication"); and McCarthy, supra at §12.13 ("dictionary
definitions are relevant and sometimes persuasive in determining
public usage.")
In addition, the record shows that there are currently at
least 10 different brands of tea designated as "Darjeeling" tea

28 In this case, the evidentiary value of the Internet articles, books,
and third-party websites, to the extent such evidence has been offered
to show consumer perception of DARJEELING, is limited, because the
audience for those materials is not clear. In addition, Mr. Krishna's
testimony and opposer's other testimony concerning the Tea Board's
efforts to educate consumers in supermarkets is vague and lacking in
detail. There is no evidence as to how much is expended by opposer for
this activity, the extent or frequency of these activities or the
extent of distribution of materials to consumers.
Opposition No. 91118587
54
available on grocery store shelves, suggesting a strong market
presence and demand for Darjeeling tea, and applicant itself
indicates that its tea is sold in seven different states. The
mark has also been publicized in general circulation newspapers
such as The New York Times and Chicago Tribune.
Applicant has submitted no evidence which suggests that
DARJEELING is a weak mark. As we noted earlier, there is no
evidence of current uncontrolled use or misuse of DARJEELING by
any third party which if it occurred might tend to weaken a mark.
Nor is there any evidence of use (or registration) of DARJEELING
by any third party as a trademark. We find that there is a
strong association in the minds of consumers between DARJEELING
and tea which comes from that region. Thus, the mark is entitled
to broad protection for those goods.
DARJEELING and design mark: Opposer has provided little in
the way of evidence of public recognition of its DARJEELING and
design mark. We have Mr. Krishna's and Ms. Ray's testimony that
the mark has been in use since about 1987 and Ms. Ray identified
15 companies that license the mark from opposer. However, there
is no evidence of any actual use of the mark by those licensees
except for applicant's use and the one other company identified
by applicant, The Stash Tea Company. As to actual use by those
two companies, we have no evidence of sales of tea bearing the
mark or the extent of exposure of the mark to consumers.
Opposition No. 91118587
55
Nevertheless, the logo mark is inherently distinctive and as such
is entitled to at least a normal scope of protection.
Similarity of the Marks

Opposer argues that applicant's mark incorporates opposer's
word mark DARJEELING in its entirety and the most prominent
portion of the DARJEELING and design mark. Opposer contends that
the addition of the term NOUVEAU, the French word for "new,"
cannot serve to distinguish the parties' marks because the term
is highly descriptive of tea. In particular, opposer notes
applicant's admission that NOUVEAU refers to the fact that the
tea is comprised of "first flush" Darjeeling tea, which opposer
explains is the first harvest of Darjeeling tea leaves, that is,
the "new" crop of Darjeeling tea at the outset of every season.
In support of this contention, opposer has introduced a number of
French-English/English-French dictionaries translating "nouveau"
as "new" and points to certain website articles which, according
to opposer, show that "nouveau" has the same meaning in relation
to tea as it does as in the phrase "Beaujolais Nouveau" to mean
wine made from the first grape harvest.
Applicant argues that the marks are distinguishable because
DARJEELING NOUVEAU is a unitary mark that "gives a single,
distinct commercial impression" as a whole. Applicant argues
that the only common part of the mark is the geographically
descriptive and weak term DARJEELING which is disclaimed in
Opposition No. 91118587
56
applicant's mark. Applicant disputes opposer's contention that
"nouveau" is commonly used to refer to the initial tea harvest of
a season.29
DARJEELING word mark

We find that the DARJEELING word mark and applicant's mark,
considered in their entireties, are similar in sound, appearance,
meaning and overall commercial impression. The strong and
distinctive term DARJEELING is opposer's entire mark and is
visually and aurally a significant portion of DARJEELING NOUVEAU.
Further, the fact that DARJEELING is disclaimed in
applicant's mark does not detract from the otherwise strong
similarity between the marks. It is well settled that disclaimed
matter still forms a part of the mark and cannot be ignored in
determining likelihood of confusion. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (The
technicality of a disclaimer in National's application to
register its mark has no legal effect on the issue of likelihood
of confusion. The public is unaware of what words have been
disclaimed..."); and Giant Food, Inc. v. Nation's Foodservice,
Inc., 710 F.2d 1565, 1570, 218 USPQ2d 390 (Fed. Cir. 1983). Nor
can the geographic descriptiveness of DARJEELING in applicant's

29 We have found that DARJEELING is a valid certification mark.
Therefore, applicant's arguments that the marks are not similar because
of third-party misuse, unlicensed, uncontrolled, or uncertified use and
other similar arguments will be given no further consideration in our
likelihood of confusion analysis.
Opposition No. 91118587
57
mark affect the scope of protection to which opposer's mark is
entitled.
However, we are not persuaded that NOUVEAU is descriptive of
tea. First, "nouveau" is a French word and relying on foreign
language dictionaries to translate the term into English involves
application of the doctrine of foreign equivalents which opposer
has not addressed. Further, even assuming the term would be
translated into English as "new" and considering opposer's other
evidence of the meaning of "nouveau" in its untranslated form,
the evidence is not convincing. While there is no dispute that
applicant's tea is comprised of leaves from the "first flush"
harvest, the evidence does not show that "nouveau" or "new" is
the equivalent of "first flush" or that tea consumers would so
perceive it when used for tea. None of the definitions submitted
by opposer show that "nouveau" has any particular meaning in
relation to tea. There is no evidence of the extent of tea
consumers' exposure to the websites opposer relies on or of their
familiarity with Beaujolais Nouveau wine or even what the term
means in the context of wine, let alone in a different context,
i.e., tea.30 Even assuming tea consumers understand the meaning

30 Opposer has relied on one article in particular, Tea & Coffee Trade
Journal ("Have First Flush Teas Become a Victim of Their Own
Success?"), to show the parallel between "nouveau" for wine and tea.
This article is directed to the trade and does not reflect the views of
the consuming public.
Opposition No. 91118587
58
of "nouveau" in relation to wine, it would be a stretch to assume
that tea purchasers would extend that meaning to tea.31
Nevertheless, we find that in view of the strength of
opposer's mark and the scope of protection to which it is
entitled, that the addition of the word NOUVEAU to opposer's
strong and distinctive mark for the identical goods is not
sufficient to distinguish the marks as a whole. We find that the
word NOUVEAU, whether translated into English or not, does not
affect in any significant way the meaning or overall commercial
impressions the marks convey. Purchasers will simply assume
DARJEELING NOUVEAU identifies a particular variety of tea from
Darjeeling, and not a different product or a different source for
the tea.
DARJEELING and design mark
Applicant's mark DARJEELING NOUVEAU incorporates a principal
feature of opposer's DARJEELING and design mark. While the marks
obviously differ in appearance, they are similar in sound,
meaning and commercial impression. One of the strongest
impressions of opposer's composite mark is conveyed by the term
DARJEELING. The word is displayed prominently along the outer

31 Opposer concludes in a footnote that applicant's mark is primarily
geographically descriptive and registration should be denied under
Section 2(e) of the Trademark Act. This claim was not pleaded by
opposer and it is not clear that it was tried by the parties, but in
any event because the term NOUVEAU is not descriptive, there is no need
to consider the question of whether applicant's mark is primarily
geographically descriptive as a whole.

Opposition No. 91118587
59
rim of the circular design and is a focal point of the mark.
Further, DARJEELING is the only wording in registrant's mark and
is likely to make a greater impression on purchasers and to be
remembered by them than the design since it is primarily the word
DARJEELING that they will rely on to identify the geographic
source of the tea. Cf. In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987).
Neither the design element in opposer's mark nor the word
NOUVEAU in applicant's mark significantly affects the meaning or
the commercial impression created by the strong and distinctive
word DARJEELING. Both marks identify the same geographic source
of the tea, and if anything, the image, which Ms. Ray describes
as "an Indian woman holding tea leaves" (Test., p. 4) strengthens
the association of DARJEELING with Indian tea. Purchasers
encountering these marks at different times on the identical
goods, are likely to assume that applicant and/or its brand of
tea is in some way associated with, endorsed by, or otherwise
connected to opposer. In fact, the two marks could conceivably
appear on the very same packages of tea as applicant is a
licensor of the DARJEELING and design mark, thus increasing the
likelihood of confusion.
Intent
We turn lastly to opposer's claim that applicant adopted the
mark DARJEELING NOUVEAU in bad faith. Establishing bad faith
Opposition No. 91118587
60
requires a showing, by a preponderance of the evidence, that
applicant intentionally sought to trade on the goodwill or
reputation associated with opposer's mark. See Big Blue Products
Inc. v. International Business Machines Corp., 19 USPQ2d 1072
(TTAB 1991). Opposer's sole argument in this regard is that
applicant, as an authorized licensee of opposer, "clearly intends
to appropriate for itself the cache of the Darjeeling
designation." Applicant, however, maintains that there is no
license agreement between the parties for the word DARJEELING "so
applicant cannot be said to be intending to trade off the
goodwill of opposer."
There is no testimony or other evidence regarding
applicant's intent in adopting the mark. The mere fact that
applicant is a licensee of opposer's composite mark that includes
the word DARJEELING does not demonstrate that applicant intended
to trade off the goodwill associated with the word mark alone.
In fact it appears to have been applicant's belief, however
misguided, that opposer did not have any ownership rights to
DARJEELING alone, and therefore no goodwill in the mark. Thus,
opposer has not shown that applicant adopted the mark in bad
faith.32

32 However, the fact that opposer has not shown bad faith is not a
factor that weighs in applicant's favor. We instead find that this
factor is neutral in our analysis. Lack of intent to trade on or copy
another’s mark will not prevent a finding of likelihood of confusion if
a likelihood of confusion otherwise exists. See J & J Snack Foods
Opposition No. 91118587
61
Conclusion
We find that in view of the similarity of the marks and the
strength of opposer's marks in relation to the goods, and because
the goods, as well as the trade channels and purchasers for the
goods are identical, confusion is likely.
In view of our decision on the issue of likelihood of
confusion, we need not consider the issue of dilution.

Decision: The opposition is sustained, and the counterclaim
to cancel Registration No. 2685923 is dismissed.

Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991).