The Republic of Tea, Inc.v.Herbal Republic Inc.

Trademark Trial and Appeal Board

Jan 16, 2008

No. 92043748 (T.T.A.B. Jan. 16, 2008)

Mailed: January 16, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

The Republic of Tea, Inc.
v.
Herbal Republic Inc.
_______

Cancellation No. 92043748
to Registration No. 2885604
issued on September 21, 2004
_______

Jeffrey L. Michelman of Stinson Morrison Hecker for The
Republic of Tea, Inc.

Kathryn J. Fritz of Fenwick & West for Herbal Republic Inc.
_______

Before Quinn, Walters and Bergsman, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

The Republic of Tea, Inc. filed its petition to cancel
the registration of Herbal Republic Inc. for the mark shown
below for “tea and herbal teas; iced tea beverages; tea-
based beverages with fruit flavoring; tea-based beverages
with milk; liquid and powdered tea beverage mixes; baked
goods, namely, cookies, muffins, scones, biscuits, pastries

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No.
2
and breads; chocolate, candy and frozen confections,” in
International Class 30.1

As grounds for the petition, petitioner asserts that
respondent’s mark, when applied to respondent’s goods, so
resembles petitioner’s previously used and registered marks
noted below as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.
• Registration No. 17979032 for the mark shown below for
“clothing; namely, men's and women's shirts, sweat
shirts, pants, slacks, shoes, jackets and coats,” in
International Class 25. The registration includes a
disclaimer of TEA apart from the mark as a whole.

1 Registration No. 2886604, issued September 21, 2004.

2 Registered October 12, 1993. Renewed. Section 15 affidavit
acknowledged.

Cancellation No.
3
• Registration No. 18488183 for the mark THE REPUBLIC OF
TEA in standard character format for “art prints,
storage boxes and bags, adhesive decals and posters,”
in International Class 16; “clothing; namely, men's and
women's shirts,” in International Class 25; and “tea,”
in International Class 30. The registration includes a
disclaimer of TEA apart from the mark as a whole.
• Registration No. 20711814 for the mark REPUBLIC CHAI
for “tea,” in International Class 30 and “tea flavored
soft drinks,” in International Class 32. The
registration includes a disclaimer of CHAI apart from
the mark as a whole and a translation of CHAI as “tea”
in English.
• Registration No. 25021995 for the mark IMPERIAL
REPUBLIC for “tea,” in International Class 30.
Respondent, in its answer, denied the salient
allegations of the claim.6
The Record

3 Registered August 9, 1994. Renewed. Section 15 affidavit
acknowledged.

4 Registered June 17, 1997. Renewed. Section 15 affidavit
acknowledged.

5 Registered October 30, 2001. Sections 8 and 15 affidavits accepted
and acknowledged.

6 While respondent asserted the affirmative defenses of laches, estoppel
and acquiescence, respondent did not pursue these defenses and therefore
we consider the defenses to have been withdrawn and we have given these
defenses no further consideration.

Cancellation No.
4
The record consists of the pleadings; the file of the
involved registration; and the testimony deposition by
petitioner of Ronald T. Rubin, petitioner’s owner, with
accompanying exhibits. We note that the majority of the
exhibits attached to Mr. Rubin’s deposition are illegible
photocopies. We have considered the exhibits to the extent
that we can read them. However, the illegible exhibits or
illegible portions of exhibits are, obviously, of no
probative value. Petitioner also attached evidence to its
brief. All evidence must be submitted during the
appropriate trial period and, thus, this evidence is
untimely and has been given no consideration. TBMP
§704.05(b) (2d ed. rev. 2004).
Respondent submitted no testimony or other evidence.
Only petitioner filed a brief on the case.
The Parties
There is no information about respondent in the record
other than the statement in the application underlying its
registration that respondent is a Canadian corporation.
Petitioner failed to make its pleaded registrations of
record or otherwise establish the status and title of these
registrations.
Through the testimony deposition of Ronald Rubin,
petitioner has established that it is a California
corporation that produces and sells various types of teas,
Cancellation No.
5
including a bottled tea drink. From Mr. Rubin’s statements,
we can conclude that petitioner uses the mark THE REPUBLIC
OF TEA in connection with its products; that Mr. Rubin’s
predecessors as owners of the business obtained a federal
registration of this mark in May 19927; that when Mr. Rubin
purchased the business on February 23, 1995, the company was
producing and selling tea; and that Mr. Rubin expanded the
business to include many different types of teas, including
herbal and organic teas, bottled and boxed tea drinks, and
other products, such as tea cooking oil. Mr. Rubin stated
that both petitioner and respondent offer ginger peach tea.
In the year prior to Mr. Rubin’s deposition, petitioner
accrued $10 million in sales of tea products. Petitioner’s
products are available through its mail order catalog, at
its website, and at retailers such as Whole Foods, Cost Plus
World Market and Wegman’s Central Market.
Analysis
Because petitioner has established use of THE REPUBLIC
OF TEA as a mark in connection with tea, and because
petitioner’s likelihood of confusion claim is not frivolous,
we find that petitioner has established its standing in this
cancellation proceeding. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton

7 The record does not identify the specific goods recited in the
registration or indicate current status and title of the registration.

Cancellation No.
6
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Next, we must determine whether petitioner or
respondent has priority. The evidence is sufficient to
conclude that petitioner has a first use date of the mark
THE REPUBLIC OF TEA at least as early as the date Mr. Rubin
purchased the ongoing business of petitioner, i.e., February
23, 1995. This date is prior to both the filing date of
respondent’s underlying application, September 10, 2003, and
its registration date, September 21, 2004. Therefore,
petitioner has established its priority.
Our determination of likelihood of confusion under
Section 2(d) must be 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. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
Cancellation No.
7
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
With respect to the goods of the parties, petitioner
uses its mark in connection with teas, including herbal
teas, and bottled tea drinks. These items are identical to
the “herbal teas” and essentially identical to the “tea-
based beverages …” recited in respondent’s identification of
goods. In view of the identity of these goods, it is
unnecessary to consider what, if any, relationship
petitioner’s goods have to the other goods recited in the
registration, all of which are in the same class. Thus, we
conclude that the goods of the parties are legally
identical.
Turning to the marks, it is well settled that the
degree of similarity in the respective marks necessary to
find likelihood of confusion is less when the goods of the
parties are the same and are directly competitive than if
goods were not the same. Real Estate One, Inc. v. Real
Estate 100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB
1981); ECI Division of E-Systems, Inc. v. Environmental
Communications Incorporation, 207 USPQ 443, 449 (TTAB 1980).
Also, we note that while we must base our determination on a
Cancellation No.
8
comparison of the marks in their entireties, we are guided,
equally, by the well established principle that, in
articulating reasons for reaching a conclusion on the issue
of confusion, “there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
In connection with petitioner’s goods, tea, the term
TEA in its mark, THE REPUBLIC OF TEA, is certainly generic,
while the term REPUBLIC is arbitrary. In connection with
respondent’s goods, including herbal teas, the term HERBAL
in its stylized mark, HERBALREPUBLIC, is at least merely
descriptive and respondent’s mark also includes the
arbitrary term REPUBLIC. REPUBLIC is clearly the dominant
term in both marks.
Respondent’s mark consists of the words HERBAL and
REPUBLIC telescoped to form a single word. However, the
separate impressions and connotations of the words is
emphasized by the fact that the word HERBAL appears in a
much darker type than the word REPUBLIC. The font in which
both words appear is, itself, nondistinctive.
Regarding the connotations of the marks, petitioner’s
mark, THE REPUBLIC OF TEA, suggests, whimsically, a country
Cancellation No.
9
of tea. In connection with herbal tea, respondent’s mark,
HERBALREPUBLIC, also suggests, whimsically, an herbal tea
country. Thus, the connotations of the marks are
substantially similar. We find that the overall commercial
impressions of the marks are substantially similar.
In a cancellation proceeding, we note that “a
presumption of validity attaches to a [trade]mark
registration, and the party seeking cancellation must rebut
this presumption by a preponderance of the evidence.” West
Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ 1660, 1662 (Fed. Cir. 1994). See also Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). We hold that
petitioner has met its burden. In view of the substantial
similarity in the commercial impressions of petitioner’s
mark, THE REPUBLIC OF TEA, and respondent’s stylized mark,
HERBALREPUBLIC, their contemporaneous use on the identical
goods involved in this case is likely to cause confusion as
to the source or sponsorship of such goods.
Decision: The petition to cancel is granted.