You are viewing a free summary from Descrybe.ai. For citation and good law / bad law checking, legal issue analysis, and other advanced tools, explore our Legal Research Toolkit — not free, but close.

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

Citations: 28 F. Supp. 3d 217; 2014 WL 2883945Docket: Nos. 13 Civ. 2638(LLS), 13 Civ. 2763(LLS)

Court: District Court, S.D. New York; June 25, 2014; Federal District Court

EnglishEspañolSimplified EnglishEspañol Fácil
The court, presided over by District Judge Louis L. Stanton, addresses cross-suits between the American Tibetan Health Institute, Inc. (ATHI) and Kam Ng regarding the trademark rights to "Tibetan Bai-cao Tea." Both parties assert exclusive rights to the name and design of their tea packaging, which are similar enough to likely confuse consumers. The critical dispute is over who first used the marks in the U.S. and whether ATHI abandoned them after registration.

ATHI sought a preliminary injunction against Kam Ng, leading to a consolidated trial under Fed. R. Civ. P. 65(a)(2). A jury determined that ATHI was the first to use its trademarks and did not abandon them. As a remedy for trademark infringement, the court can issue injunctions to prevent confusion over the use of similar marks, as outlined in 15 U.S.C.A. 1116.

ATHI filed for registration of the disputed marks with the USPTO in March 2012, which provides prima facie evidence of ownership. However, prior users who have not abandoned their marks retain rights under 15 U.S.C. 1057(c)(1). Kam Ng claims prior use in New York's Chinatown before ATHI's registration and sales, which complicates the matter of trademark protection in that area.

The resolution hinges on determining which party first used the marks in New York and whether Kam Ng was aware of ATHI’s earlier use. Evidence presented includes a sales invoice from May 4, 2009, showing ATHI's predecessor sold the tea to a distributor in San Francisco.

Shirley Lee, president of ATHI, testified that ATHI began selling its tea with disputed marks in New York, Los Angeles, and San Francisco on May 4, 2009, with approximately 5,000 boxes sold that year. Kam Ng claimed to have sold "Tibetan Baicao Tea" in New York starting in December 2009, but did not use the contested design marks until late 2010. Ng acknowledged that she sold tea from a Tibetan medical student in March 2009 but provided no evidence of using the disputed packaging during those sales. She introduced invoices from a Chinese distributor dated August and September 2010, but these referred to "seafood dry-cargo," not Tibetan Baicao Tea. Ng’s trademark application indicated her first use of the marks was in March 2010. The court concluded that ATHI's sales predated Ng's entry into the market, dismissing Ng’s claim of ignorance about ATHI’s sales and finding her actions to be copying rather than coincidental. Consequently, Ng was deemed to have no common law rights to the marks, and her defense was rejected, leading to the granting of the injunction.

The Court issues a permanent injunction against Kam Ng, C. L International Trading Inc., Kang Li Trading Inc., and K. C International Trading Inc., along with their affiliates, prohibiting various actions. Defendants are restrained from:

1. Violating the Stipulated Order for Temporary Relief and ceasing sales of products with “old packaging.”
2. Making any claims or disparaging statements regarding American Tibetan Health Institute, Inc. (ATHI)'s product branding by referring to it as “old” or “former.”
3. Using copyrighted material owned by ATHI, with specific registrations (VA 1-855-049 and VA 1-879-630).
4. Utilizing any trademarks registered to ATHI (U.S. Reg. Nos. 4330639, 4330640, 4330569, 3943436) or any similar marks on their products.
5. Employing trademarks from ATHI's pending applications (U.S. Serial Nos. 85/894,301 and 85/939,652) or similar variations on their goods.
6. Imitating ATHI’s Tibetan Baicao Tea packaging, particularly its specific green color.
7. Selling or distributing any products labeled as “Tibetan Baicao Tea,” “Baicao Tea,” or similar names in any language, including the word “baicao.”
8. Making any misleading representations that could lead consumers to believe any of their products are affiliated with ATHI.

Additionally, the Court authorizes the U.S. Marshal to seize and destroy all goods bearing ATHI’s trademarks as listed.

Goods bearing the marks of American Tibetan Health Institute, Inc. (ATHI), along with related advertising materials and records, are subject to seizure by the Marshals, who may use reasonable force to enter premises controlled by the Defendants. The seizure includes inspecting rooms, vehicles, and any other areas under the Defendants' control for relevant goods and documentation. Attorneys for ATHI will accompany the Marshal during this process, which involves inventorying seized items. These items will be in the constructive possession of the Marshal but may be released to ATHI's attorneys or stored at designated locations. All seized products will be tagged for identification, and Defendants will receive a receipt. Seized items will be available for inspection by parties or their counsel during normal business hours. Interference with the execution of this order may result in arrest. ATHI's counsel will serve as substitute custodian for the seized property and indemnify the Marshal against any claims related to the seizure. A copy of the order will be served at the Defendants' business locations or wherever ATHI's goods are found. Items determined not to bear ATHI's marks will be returned to the Defendants within fifteen business days following the execution of the order.