92061416 (T.T.A.B. Sep. 17, 2019)

Win Luck Trading, Inc.v.Northern Food I/E Inc. dba Northern Food

Trademark Trial and Appeal BoardSep 17, 2019

92061416 (T.T.A.B. Sep. 17, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: September 17, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Win Luck Trading, Inc. v. Northern Food I/E Inc. dba Northern Food _____ Cancellation Nos. 92061416 and 920614211 _____ Kao Lu, Allison Dudick, and Beth Anne Powers of Ryder Lu Mazzeo & Koniexczny LLC for Win Luck Trading, Inc. Kevin J. Keener of Keener & Associates P.C. for Northern Food I/E Inc. dba Northern Food.2 _____ Before Lykos, Adlin and Heasley, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: 1 By Board order dated January 19, 2016, these proceedings were consolidated. 9 TTABVUE 11-12. For the citations to the record in TTABVUE throughout the decision, the number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Unless otherwise indicated, record citations are to the “parent” case, Cancellation No. 92061416. 2 The requests to withdraw as attorney of record filed December 30, 2016 in Cancellation No. 92061416 and January 18, 2017 in Cancellation No. 92061421 by Respondent’s prior counsel, Matthew H. Swyers of The Trademark Company, PLLC, are retroactively granted. Cancellation Nos. 92061416 and 92061421 ~ 3 ~ Win Luck Trading, Inc. (“Petitioner”), a New Jersey corporation, seeks to cancel the following registrations owned by Northern Food I/E Inc. (“Respondent”), a New York corporation: Registration No. 4232978 for the mark displayed below on the Principal Register for “Bean curd; Fermented bean curd; Freeze-dried tofu pieces (kohri-dofu); Fried tofu pieces (abura-age); Tofu; Tofu-based snacks” in International Class 29. The description of the mark is as follows: “The mark consists of four Chinese characters in a row in a stylized font.” According to the transliteration and translation statements provided by Respondent, “[t]he non- Latin characters in the mark transliterate to ‘LAO’, ‘GAO’, ‘BEI’ and ‘DIAN’ and this means ‘old’, ‘high’, ‘tablet’ and ‘shop’ in English.”3 Registration No. 4445860 for the mark displayed below on the Principal Register for “Bean curd; Fermented bean curd; Tofu; Tofu-based snacks” in International Class 29. The description of the mark is as follows: “The mark consists of three Chinese characters in a row in a stylized font.” According to the transliteration and translation statements provided by Respondent, “The non-Latin characters in the mark transliterate to GAO, BEI and DIAN and this means high, tablet and shop in English.”4 3 Registered October 30, 2012; Section 8 affidavit filed June 20, 2018 and accepted on June 25, 2018. Color is not claimed as a feature of the mark. 4 Registered December 10, 2013. Post Registration mailed a Section 8 “Courtesy Reminder” on December 10, 2018. Color is not claimed as a feature of the mark. Cancellation Nos. 92061416 and 92061421 ~ 4 ~ As grounds for cancellation, Petitioner alleges that Respondent fraudulently misrepresented to the U.S. Patent and Trademark Office (“USPTO”) that the Mandarin characters in the ’416 Registered mark translate to ‘old’, ‘high’, ‘tablet’ and ‘shop’ in English, and that the Mandarin characters in the ’421 Registered mark translate to ‘high’, ‘tablet’ and ‘shop’ in English, when Respondent knew that an accurate translation is “Old Gaobeidian” and “Gaobeidian” respectively, the name of a “famous city in China well-known for tofu.” Amended Petitions to Cancel ¶¶ 4-9; Cancellation No. 92061416 at 10 TTABVUE 3 and Cancellation No. 92061421 at 11 TTABVUE 3. In addition, Petitioner claims that the marks, when accurately translated, are merely descriptive without acquired distinctiveness, primarily geographically descriptive, or alternatively geographically deceptively misdescriptive of the identified goods under Trademark Act Sections 2(e)(1), (2) and (3), 15 U.S.C. §§ 1052(e)(1)-(3). Amended Petitions to Cancel ¶¶ 12-27; Cancellation No. 92061416 at 10 TTABVUE 4-5 and Cancellation No. 92061421 at 11 TTABVUE 4-5. Petitioner further alleges that it possesses a “real interest” in cancelling the involved marks insofar as “it will be importing tofu-related products using the mark[s] or similar mark[s]. Amended Petition to Cancel ¶ 1; Cancellation No. 92061416 at 10 TTABVUE 1. See also Cancellation No. 92061421 at 11 TTABVUE 2. Cancellation Nos. 92061416 and 92061421 ~ 5 ~ Respondent in its answers denied the salient allegations. Answers to Amended Petitions to Cancel, Cancellation No. 92061416 at 12 TTABVUE and Cancellation No. 92061421 at 13 TTABVUE. The case is fully briefed. Both parties failed to follow the Board’s well-established practice of including the TTABVUE docket entries and page numbers in their briefs when citing to evidence in the record, making it inordinately time-consuming for the Board to ascertain the precise location of the evidence. This unnecessarily prolonged the time it took to issue this decision. We direct the parties to the guidance set forth in Turdin v. Trilobite, Ltd., 109 USPQ2d at 1476 n.6 and TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) (2019) §§ 106.03, 801.01, 803.03, and urge both parties to adhere to this practice in future cases before the Board. I. Evidentiary Rulings Before discussing the merits of this case, we address the following evidentiary issues. A. Respondent’s Objections to Testimony Deposition of Sheng Lin and Exhibits Respondent interposed a plethora of evidentiary objections to the Testimony Deposition of Sheng Lin, Petitioner’s CEO and Exhibits P-6 to P-19 made of record during Petitioner’s main testimony period. The objections include “lack of foundation, lack of personal knowledge, relevancy, hearsay and lack of authentication. Board proceedings are heard by Administrative Trademark Judges, not lay jurors who might be easily misled, confused, or prejudiced by evidence. Cf. Harris v. Rivera, 454 U.S. 339, 346 (1981) (“In bench trials, judges routinely hear inadmissible Cancellation Nos. 92061416 and 92061421 ~ 6 ~ evidence that they are presumed to ignore when making decisions.”). For this reason, we have considered the objected-to evidence, keeping in mind the objections, and have accorded it whatever probative value it merits, if any. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017). “Ultimately, the Board is capable of weighing the relevance and strength or weakness of the objected- to testimony and evidence in this case, including any inherent limitations, which precludes the need to strike the challenged testimony and evidence if the objection is well-taken.” Poly-America, L.P. v. Ill. Tool Works Inc., 124 USPQ2d 1508, 1510 (TTAB 2017). As necessary and appropriate, we address any limitations to the evidence material to our decision. For example, we have weighed the probative value of the testimony of each witness against any potential bias. See, e.g., Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753-54 (TTAB 2013), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.). Respondent also objects to Exhibit P-20 (17 TTABVUE 108-322), an August 2016 Internet consumer survey conducted by the news publication WORLD JOURNAL entitled “Gaobeidian/Old Gaobeidian” on the grounds that “it was not provided in compliance with the Board’s rules on expert disclosures;” that “the survey evidence would be hearsay as to the report and conclusions;” that “it would be hearsay as to the alleged responses;” and that the witness cannot authenticate the survey. Sheng Lin Testimony Deposition 49:18-50-21, 17 TTABVUE 50-51. Petitioner’s Counsel had requested WORLD JOURNAL to run a consumer survey on its website from August 1- 15, 2016 based on the journal’s readership. Exhibit P-20, 17 TTABVUE 107 (“Letter Cancellation Nos. 92061416 and 92061421 ~ 7 ~ from Richard Li, Director, Online and New Media, World Journal to Kao H. Lu of Ryder, Lu, Mazeo, & Konieczny LLC” (undated). A total of 200 individuals responded to the survey. Exhibit P-20, 17 TTABVUE 109. The survey template as it appeared in English and Mandarin is reprinted below: Cancellation Nos. 92061416 and 92061421 ~ 8 ~ Cancellation Nos. 92061416 and 92061421 ~ 9 ~ Cancellation Nos. 92061416 and 92061421 ~ 10 ~ The fact that the WORLD JOURNAL consumer survey was conducted by a news publication as opposed to an expert witness does not make it per se inadmissible. As explained by Petitioner’s counsel, “[w]e’re not submitting this as an expert. This is factual evidence.” Sheng Lin Testimony Deposition 50:22-24; 17 TTABVUE 51. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1834 (Fed. Cir. 2015) instructs the Board to “give appropriate consideration” to survey evidence. That being said, there is no question that the better practice would have been for Petitioner to introduce the testimony of the individual from WORLD JOURNAL who devised the survey to explain the methodology and authenticate the results. See E.I. du Pont de Nemours and Co. v. Yoshida Int’l, Inc., 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975) (description of “Teflon” consumer survey methodology). Nonetheless, we have considered the survey, keeping in mind that the respondents were self-selected, that no double-blind protocol was used to ensure that they understood the conceptual distinction between a brand or proprietary name and descriptive or geographically descriptive designation, and that we have no testimony from a witness authenticating the methodology and responses. B. Respondent’s Motion to Strike the Deposition Transcript of Qishi “Richard” Lin from Consolidated Cancellation Nos. 92058825 et. al and Portions of the Rebuttal Testimony Declaration of Sheng Lin Respondent also directs the Board’s attention to its motion (filed March 21, 2017) to strike the Deposition Transcript Qishi “Richard” Lin, Respondent’s CEO, and Exhibits K, L, P and T attached thereto from a previous Board proceeding involving both parties, Consolidated Cancellation Nos. 92058825 et. al., Win Luck Trading Inc. Cancellation Nos. 92061416 and 92061421 ~ 11 ~ v. Northern Food I/E Inc., for failure to obtain prior leave from the Board under Trademark Rule 2.122(f), 37 C.F.R. § 2.122(f).5 Respondent also moves to strike paragraph nos. 6-8 and 10-14 of the Rebuttal Testimony Declaration of Sheng Lin, Petitioner’s CEO, and Exhibits K, L, P and T from the aforementioned Deposition Transcript of Qishi “Richard” Lin from Consolidated Cancellation Nos. 92058825 filed during Petitioner’s rebuttal trial period as improper rebuttal testimony. Respondent’s motion to strike was previously denied in part as moot when the Board granted Petitioner’s motion to reopen its rebuttal testimony period for the purpose of submitting Qishi “Richard” Lin’s testimony and other evidence from the prior Board consolidated cancellation proceeding involving both parties. See October 23, 2017 Board Order; 37 TTABVUE 3-5. The Board deferred until final decision, however, Respondent’s motion to strike paragraph nos. 6-8, 10-14 of the Sheng Lin Rebuttal Testimony Declaration and all exhibits attached thereto as improper rebuttal testimony. Respondent contends that this evidence was available to Petitioner during its main testimony period and should have been made of record at that time in order to permit Respondent to rebut the evidence. “It is axiomatic that rebuttal testimony may be used only to rebut evidence offered by the defendant.” Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1958 (TTAB 2008) (citing Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629 (TTAB 5 The Rule provides that “[b]y order of the Trademark Trial and Appeal Board, on motion, testimony taken in another proceeding, or testimony taken in a suit or action in a court, between the same parties or those in privity may be used in a proceeding, so far as relevant and material, subject, however, to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony.” Cancellation Nos. 92061416 and 92061421 ~ 12 ~ 2007). The averments in his declaration and exhibits serve to rebut Respondent’s factual testimony and evidence involving Respondent’s proffered translation of its registered marks and perception of the marks by U.S. consumers familiar with Mandarin, made of record during Respondent’s assigned trial period. Respondent was given the opportunity to cross-examine Sheng Lin but declined to do so. Accordingly, Respondent’s objections are overruled. II. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122, 37 C.F.R. § 2.122, the registration files for Respondent’s marks.6 A. Petitioner’s Evidence7 1. Main Testimony Period Testimony Deposition of Sheng Lin, Petitioner’s CEO dated October 20, 2016, with Exhibits P-1 to P-20 (filed December 5, 2016 at 17 TTABVUE). 6 Petitioner incorrectly states in its main trial brief that Petitioner’s and Respondent’s evidence submitted in support of their motion and cross-motion for summary judgment (filed September 25, 2015) is automatically part of the trial record. Petitioner’s Brief, p. 8; 38 TTABVUE 9. Absent an agreement between the parties, evidence submitted in connection with a motion for summary judgment or in response thereto is of record only for consideration of that motion. Any such evidence to be considered at final hearing must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). 7 Many of the exhibits to Petitioner’s testimony are either partially or entirely in Mandarin with no written translation. We have only considered those specific portions where the witness attested to an English translation during his deposition. Cf. TBMP § 104 (“Board proceedings are conducted in English. If a party intends to rely upon any submissions that are in a language other than English, the party should also file a translation of the submissions. If a translation is not filed, the submissions may not be considered.”). Cancellation Nos. 92061416 and 92061421 ~ 13 ~ Exhibits P-1 to P4: Respondent’s involved registrations and specimens filed with the underlying applications.8 Exhibit P-5: Wikipedia entry for “Gaobeidian.” Exhibit P-6: Web page from the DouDou Food Website. Exhibit P-7: Specimen (product packaging) from Hebei Gaobeidian DouDou Food’s trademark application. Exhibit P-8: Excerpt from Boohee.com. Exhibit P-9: DouDou Food product packaging for bean curd. Exhibit P-10: Product packaging for tofu silk or shredded tofu (unidentified manufacturer). Exhibit P-11: Product packaging for tofu silk or shredded tofu (unidentified manufacturer). Exhibit P-12: Product packaging for spicy tofu bean curd (unidentified manufacturer). Exhibit P-13: Photograph of two packages of bean curd silk or shredded bean curd (unidentified manufacturer). Exhibit P-14: Jiaxing Food Company product packaging for bean curd skin. Exhibit P-15: Photograph of multiple packages of bean curd silk or shredded bean curd manufactured by Yuan Gu Shi Pin. Exhibit P-16: Excerpt from Best Store Online website displaying tofu silk or shredded tofu products. 8 As per Trademark Rule 2.122, these materials are automatically of record; their submission during trial was superfluous. Cancellation Nos. 92061416 and 92061421 ~ 14 ~ Exhibit P-17: Excerpt from Best Store Online website displaying tofu and bean curd products. Exhibit P-18: Excerpts from chayedan.com for recipes for cooking tofu silk or shredded tofu. Exhibit P-19: Unidentified article about “a soldier, a serviceman” who “left his hometown for about thirty years” and “later on became a famous musician in China and wrote a song about Gaobeidian tofu silk or shredded tofu.” Lin Deposition 48:4-10; TTABVUE 49. Exhibit P-20: Internet consumer survey by WORLD JOURNAL conducted August 1, 2016 – August 15, 2016. Notice of Reliance on third-party Registration No. 4371128 owned by Hebei Gaobeidian DouDou Food (Group) Co., Ltd. and prosecution file (filed December 5, 2016 at 19 TTABVUE). 2. Rebuttal Testimony Period Rebuttal Declaration of Sheng Lin dated February 15, 2017, with exhibits9 (filed March 7, 2017 at 24 TTABVUE 34-43). Entry from Yabla Mandarin Chinese Pinyin English Dictionary for 高碑店 transliterated as “Gāobēidiàn” and translated as “Gaobeidian county level city in Baoding Heibei.” Advertisement entitled “How is this …” in Mandarin and certified English translation. 9 Although the exhibits to the declaration were not properly marked, the Board has considered the exhibits in rendering its opinion. See TBMP § 703.01(i) (“Deposition exhibits must be numbered or lettered consecutively, and each exhibit must be marked with the number and title of the case, and the name of the party who is offering the exhibit. The Board may not consider exhibits that are not properly marked.”). The Board has not considered the hyperlink to a television commercial in Paragraph No. 14 of the Sheng Lin Rebuttal Declaration. Cf. In re Change Wind Corp., 123 USPQ2d 1453, 1462 n.8 (TTAB 2017) (providing only a web address or hyperlink is insufficient to make such materials of record). Cancellation Nos. 92061416 and 92061421 ~ 15 ~ Excerpts of the Testimony Deposition of Qishu “Richard” Lin, Respondent’s President with Exhibits K, L, P and T from Win Luck Trading Inc. v. Northern Food I/E Inc., Cancellation No. 92058825 taken on May 3, 2016 (filed March 7, 2017 as rebuttal testimony at 24 TTABVUE 2- 33). Exhibit K: Excerpt from WORLD JOURNAL. Exhibit L: Advertising invoice for the WORLD JOURNAL weekly magazine for January 2013. Exhibit P: Article in Mandarin from the WORLD JOURNAL entitled “World Journal and Northern Food Go Forward Hand in Hand” with certified English translation. Exhibit T: Invoice from Respondent. Rebuttal Notice of Reliance on the following Internet printouts (filed March 7, 2017 at 25 TTABVUE): Entry for “Gaobeidian” on Google Map. Entry from Yabla Mandarin Chinese Pinyin English Dictionary for 高碑店 transliterated as “Gāobēidiàn” and translated as “Geobeidian county level city in Baoding Heibei.” B. Respondent’s Evidence Testimony Declaration of Qishu “Richard” Lin, Respondent’s President and Owner, dated February 2, 2017, with Exhibits A-H (filed February 3, 2017 at 22 TTABVUE): Exhibit A: ENGLISH-CHINESE DICTIONARY10 entry for “bei.” 10 The date of publication for this dictionary was not provided. See TBMP § 704.08(a) (when filing printed publications under notice of reliance, the notice must specify the printed publication, including information sufficient to identify the source and the date of the publication). Therefore, we have not relied on it. Cancellation Nos. 92061416 and 92061421 ~ 16 ~ Exhibit B: Google Translate (translate.google.com) entry for 老 (Lăo) translated in English as “old” accessed on January 30, 2017. Exhibit C: Google Translate (translate.google.com) entry for 高 (Gāo) translated in English as “high” accessed on January 30, 2017. Exhibit D: Google Translate (translate.google.com) entry for 碑 (Bei) translated in English as “monument” accessed on January 30, 2017. Exhibit E: Baidu.com (fanyi.baidu.com/translate) entry for 碑 (bei) translated in English as “the monument” accessed on January 30, 2017. Exhibit F: Google Translate (translate.google.com) entry for 店 (Diàn) translated in English as “shop” accessed on January 30, 2017. Exhibit G: Baidu.com entry for the English word (fanyi.baidu.com/translate) “tablet” accessed on January 30, 2017. Exhibit H: Google Translate (translate.google.com) entry for the English word “tablet” accessed on January 30, 2017. Notice of Reliance (filed February 3, 2017 at 23 TTABVUE) on the following Internet articles and reference materials: Exhibit I: “The Asian Population: 2010” United States Census Bureau, U.S. Department of Commerce, March 2012, accessed on January 17, 2017. Exhibit J: “Asian grocery markets- Weird things go mainstream,” THE ECONOMIST May 12, 2014, accessed on January 17, 2017. Exhibit K: Anderson, Jennifer “Shopping at Asian Markets: A Neophyte’s Guide,” accessed on January 17, 2017. Cancellation Nos. 92061416 and 92061421 ~ 17 ~ Exhibit L: Yahoo discussion board “Do a lot of white people go in Asian supermarkets?” accessed on January 17, 2017. Exhibit M: Tang, Tiantian, “How an Ethnic Store Impacts a Community- The Case of Kam Sen Foods in White Plains” Pace University, 2009, accessed on February 2, 2017. Exhibit N: Chinavine entry for “Gaobeidian” accessed on February 2, 2017. Exhibit O: Wikipedia entry for “Gaobeidian” accessed on February 2, 2017. Exhibit P: Wikipedia entry for “Gaobeidian Station” accessed on February 2, 2017. Exhibit Q: Wikipedia entry for “Gaobeidian, Beijing” accessed on February 2, 2017. III. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case.11 Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that “[a] petitioner is authorized by statute to seek cancellation of a mark where it has both a real interest in the proceeding as well as a reasonable basis for its belief of damage.” Empresa Cubana Del Tabaco, 111 USPQ2d at 1062 (internal punctuation omitted; citing inter alia Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). See 11 Petitioner’s reliance on the Board’s finding of standing in prior Cancellation No. 92058825 involving both parties but different marks and goods cannot be used to establish standing in the present case because the marks at issue are different. Petitioner’s Brief p. 16; 38 TTABVUE 17. Cancellation Nos. 92061416 and 92061421 ~ 18 ~ also Trademark Act Section 14, 15 U.S.C. § 1064. A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. In cases where a petitioner has asserted multiple grounds for cancellation, standing need only be shown as to a single ground. See Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at least one ground, primarily geographically deceptively misdescriptive, they may assert any other legally sufficient claims including those under Section 2(a), the Pan American Convention and fraud). When challenging a term as descriptive, a plaintiff may establish standing by showing that it is engaged in the manufacture or sale of goods the same as or related to those covered by the challenged mark. See Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 23 USPQ2d 1878, 1879 (TTAB 1992), aff’d, 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993); Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1010 (TTAB 1984). Sheng Lin, Petitioner’s founder and President, testified that Petitioner sells bean curd products to supermarkets and Asian grocery stores in the United States. Sheng Lin Deposition 8:16-9:15; 17 TTABVUE 9-10. As such, Petitioner has a demonstrated a “real interest” in preventing Respondent from maintaining its involved registrations and a “reasonable basis for its belief of damage” resulting from the registrations for allegedly generic or descriptive terms for bean curd and bean curd products. Petitioner therefore has established its standing to bring both cancellation proceedings. Cancellation Nos. 92061416 and 92061421 ~ 19 ~ IV. Burden of Proof In Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309-10 (Fed. Cir. 1989), the U.S. Court of Appeals for the Federal Circuit noted: Because a trademark owner’s certificate of registration is “prima facie evidence of the validity of the registration” and continued use of the registered mark, the burden of proof is placed directly upon those who seek cancellation. 15 U.S.C. § 1057(b) (1988) J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 962-63, 144 USPQ 435, 437 (CCPA 1965); see TRADE-MARKS: HEARINGS ON H.R. 4744 BEFORE THE SUBCOMM. ON TRADE-MARKS OF THE HOUSE COMM. ON PATENTS, 76th Cong., 1st Sess. 65 (1939) (testimony of Sylvester Liddy, Esq.; Edward Rogers, Esq.; and Rep. Lanham), reprinted in 3 J. Gilson, TRADEMARK PROTECTION AND PRACTICE § 7-11 (1988) [hereinafter J. Gilson]; TRADE- MARKS: HEARINGS BEFORE THE HOUSE COMM. ON PATENTS, 72d Cong., 1st Sess. 40 (1932) (testimony of Edward Rogers, Esq.), reprinted in 4 J. Gilson, supra, at § 45-28. Accordingly, in a cancellation … the petitioner bears the burden of proof. Moreover, the petitioner’s burden is to establish the case for cancellation by a preponderance of the evidence. … Additionally, in a cancellation as opposed to an opposition proceeding, the registrant benefits from a presumption of validity. 15 U.S.C. § 1057(b) (1988). With these principles in mind, we evaluate Petitioner’s claims. V. Doctrine of Foreign Equivalents and Translation The crux of this dispute centers on the translation of the involved marks. Under the doctrine of foreign equivalents, foreign words from common languages may be translated into English to determine their geographic significance or descriptive meaning. See, e.g., In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (applying doctrine in determining whether MOSKOVSKAYA, a Russian word meaning “of or from Moscow,” was primarily geographically deceptively Cancellation Nos. 92061416 and 92061421 ~ 20 ~ misdescriptive for vodka not from Moscow). See also Nestle’s Milk Prods., Inc. v. Baker Importing Co., Inc., 182 F.2d 193, 86 USPQ 80, 82 (CCPA 1950) (“Foreign language words, not adopted into the English language, which are descriptive of a product, are so considered in registration proceedings despite the fact that the words may be meaningless to the public generally.”); In re Highlights for Children, Inc., 118 USPQ2d 1268 (TTAB 2016) (refusing registration of IMAGENES ESCONDIDAS (“hidden pictures” in English) as merely descriptive of books and magazines); In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (AYUMI and its Japanese- character equivalent held merely descriptive for footwear where the evidence, including applicant’s own admissions, indicated that the primary meaning of applicant’s mark is “walking”); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (Chinese characters that mean ORIENTAL DAILY NEWS held merely descriptive of applicant’s newspapers). The doctrine of foreign equivalents is not an absolute rule, but merely a guideline that should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009). Cancellation Nos. 92061416 and 92061421 ~ 21 ~ There is no doubt that Mandarin is a common modern language, and the doctrine of foreign equivalents applies to marks displayed in Mandarin characters. In re Oriental Daily News, Inc., 230 USPQ at 638 (“[W]e see no reason why descriptive words represented by Chinese characters should be treated any differently from descriptive words in other contemporary languages.”). See also Respondent’s Notice of Reliance, Exhibit I: “The Asian Population: 2010” United States Census Bureau, U.S. Department of Commerce, March 2012, accessed on January 17, 2017 (showing Chinese the largest Asian group in the United States at approximately 4 million); 23 TTABVUE 20. In this case, the relevant consuming public includes those ordinary purchasers in the United States who are familiar with, or fluent in, Mandarin. See also In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1485 (TTAB 2012) (“Under the doctrine of foreign equivalents, we must consider the meaning of the mark to those who speak Japanese.”); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“The ‘ordinary American purchaser’ in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language.”). Each of Petitioner’s claims hinges on its assertion that the ordinary U.S. consumer familiar with Mandarin is more likely to stop and translate Respondent’s registered marks as “Gaobeidian” and “Old Gaobeidian,” a geographic designation for a city in China known for tofu and bean curd products, than as “high tablet shop” and “old high tablet shop” as reflected in the registrations. While both parties essentially agree as to the transliteration of the registered marks as “Old Gaobeidian” and “Gaobeidian” or “Old Gao Bei Dian” and “Gao Bei Dian,” they present diametrically Cancellation Nos. 92061416 and 92061421 ~ 22 ~ opposed testimony and evidence regarding the most likely translations of the terms, if any, by U.S. consumers familiar with Mandarin. For this reason, we have made extensively quoted direct excerpts from each party’s testimony in evaluating the probative value of the evidence. See, e.g., UVeritech v. Amax Lighting, 115 USPQ2d at 1245 (“The parties dispute each other’s account of certain relevant facts, so we have made liberal use of quotes from the testimony.”). Petitioner’s founder and President, Sheng Lin, testified that he was born in Fujian, China; that he moved to the United States in 2000; that he speaks and writes Mandarin at home; that he is fluent in Mandarin and that he frequently travels back and forth to China from his home in Brooklyn, New York for work. Sheng Lin Testimony Deposition, 5:10-6:14; 17 TTABVUE 6-7. He testified that he understands the term “Gaobeidian” as signifying “the name of a city” in Heibei province in China known for “a local specialty product of the bean-curd type.” Id. at 12:8-14:3; 17 TTABVUE 13-15. During his testimony deposition, Sheng Lin testified as follows regarding the translation of “Gaobeidian:” Q. Would you translate Gaobeidian to [mean] high tablet shop? A. No. Q. Why not? A. It’s a name of a city made up of three characters combined together. Q. Would you translate Old Gaobeidian to mean old high table shop? A. No. Cancellation Nos. 92061416 and 92061421 ~ 23 ~ Q. Why not? A. It’s the name of a place. Q. And this is commonly known amongst Chinese people or is this something just in particular that you know? A. Gaobeidian, as a city’s name, is known to many, many Chinese. Id. at 14:4-19; 17 TTABVUE 15. Elaborating further, he testified that “[a]s a Chinese emigrant” and in his “approximately fifteen years in the food business” he had never heard “Gaobeidian” translated as “high tablet shop” or “old high tablet shop.” Id. at 15:1-9, 17 TTABVUE 16. When shown the Respondent’s registered marks, Sheng Lin testified: Q. Can you look at those Chinese characters and tell me what those characters mean to you? A. It means to me it’s a name of a city. Q. Are these common Chinese characters? A. Yes. Q. Are these simple Chinese characters? A. Yes. Q. Have you seen these Chinese characters used together again before? A. Yes. Q. Can you explain? A. Gaobeidian. Q. Are these Chinese characters typically used together? A. Yes. Cancellation Nos. 92061416 and 92061421 ~ 24 ~ Q. In what regard are they used. A. It names a city. Q. Is it a city that’s known for bean curd? A. Yes. Q. When you see these characters, what does it immediately tell you? A. It tells me it’s a city, specialized in bean curd products. Q. I’m going to show you Northern Food’s other trademark in this matter. … Q. Take a look at that. Can you take a look at those Chinese characters on this document and what do these characters mean to you? A. It’s written as Lao Gaobeidian. Q. What does Lao mean? A. It’s like old as in old people or old as in Old Shanghai. It doesn’t seem necessary. It means anything. Q. Are these common Chinese characters? A. Yes. Q. Are these simple Chinese characters? A. Yes. Q. When you see these characters, what do they immediately tell you? A. Gaobeidian is the name of a city. Id. at 17:6-19:14; 17 TTABVUE 18-20. Id. at 23-46 in passim, Exhibits P-6 to P-17; 17 TTABVUE 24-47, 73-92. He was then shown third-party packaging and online advertisements for tofu and bean curd products and asked to translate certain Cancellation Nos. 92061416 and 92061421 ~ 25 ~ Mandarin characters to which he consistently responded as “Gaobeidan.” His testimony is corroborated by an entry from Yabla Mandarin Chinese Pinyin English Dictionary for 高碑店 transliterated as “Gāobēidiàn” and translated as “Gaobeidian county level city in Baoding Heibei.” Unmarked exhibit to Rebuttal Declaration of Sheng Lin; 24 TTABVUE 36. As further evidence for its asserted translation of Respondent’s marks, Petitioner relies on the WORLD JOURNAL Internet consumer survey results of 200 self-selected readers. Exhibit P-20; 17 TTABVUE 108-322. Consumers were asked the following questions in both English and Mandarin, and the responses to each question are represented in percentages: (1) “Are you fluent in Chinese?” 100% (2) “Your gender” Male: 48.5%, Female: 51.5% (3) “Your age” 20-40: 47%, 40-60: 35.5%, 60 and up: 17.5% (4) “What products do you expect to be sold under the mark GAOBEDIAN? Hats: 18%, Bean curd products: 71.5%, Dumplings: 28.5%, Cups: 9.5%, Other: 6.5% (5) “What products do you expect to be sold under the mark OLD GAOBEDIAN? Hats: 15.5%, Bean curd products: 71.5%, Dumplings: 30.5%, Cups: 10.5%, Other: 8.5%” (6) “Do you know the products of GAOBEDIAN and OLD GAOBEDIAN are made or sold by which company?” No: 82.5%, Yes: 16.5% (Northern Food - 5%, DouDou Food - 7%, Other 4.5%) (7) “Have you shopped in a Chinese grocery shop in the past year”? Yes: 93.5%, No: 6.5%. Exhibit P-20; 17 TTABVUE 112-119. Petitioner also made of record third-party Registration No. 4371128 owned by Hebei Gaobeidian DouDou Food (Group) Co., Ltd. for the mark displayed below Cancellation Nos. 92061416 and 92061421 ~ 26 ~ for “Albumen for culinary purposes; Albumin milk; Bean curd; Deep fried tofu (atsu- age); Fermented bean curd; Freeze-dried tofu pieces (kohri-dofu); Fried tofu pieces (abura-age); Preserved soya beans for food; Processed soy beans; Tofu; Tofu-based snacks” in International Class 29. According to the translation statement: “The non- Latin characters in the mark transliterate to “DOUDOU SHIPIN HEBEI GAOBEIDIAN” and this means “DOUDOU FOOD PRODUCTS GAOBEIDIAN, HEBEI in English.” Notice of Reliance, 19 TTABVUE 7. During prosecution, the Examining Attorney required Hebei Gaobeidian DouDou Food (Group) Co., Ltd. to disclaim “HEBEI GAOBEIDIAN” on the ground that because it designates the company’s geographic location in China, it is primarily geographically descriptive of the origin of the goods. 19 TTABVUE 11.12 Petitioner also points to an article that appeared in the WORLD JOURNAL, entitled “World Journal and Northern Food Go Forward Hand In Hand” that was part of the evidentiary record from the prior cancellation proceeding involving the parties. Based 12 The disclaimer statement reads as follows: no claim is made to the exclusive right to use the non-Latin characters that transliterate to “shipin hebei gaobeidian”, the wording “hebei gaobeidian,” and the wording “soybean food” as to “bean curd; deep fried tofu (atsu-age); fermented bean curd; freeze-dried tofu pieces (kohri-dofu); fried tofu pieces (abura-age); preserved soya beans for food; processed soy beans; tofu; tofu-based snacks” and the non- Latin characters that transliterate to “shipin hebei gaobeidian,” the wording “hebei gaobeidian,” and the word “food” as to “albumen for culinary purposes; albumin milk.” Cancellation Nos. 92061416 and 92061421 ~ 27 ~ on this article, Petitioner asserts that Respondent took a contrary position in that proceeding vis-à-vis its position here regarding the meaning of the term “Gaobeidian.” Petitioner points to a certified translation of the article which identifies Gaobeidian as a type of tofu produced in a certain geographic area of mainland China: Varieties of Gaobeidian Sliced Bean Curd are well established in the Mainland China. They have a long history and a good reputation. Their fame came from Empress Dowager Cixi who ardently favored soups boiled with Gaobeidian Sliced Bean Curd. Locals where Gaobeidian was originated are known for high yielding of soybeans. Owing to the fertile soil and ample sun light, soybeans there are rich in protean (sic), which is an excellent food source for bean curd products. The following are several characters of Gaobeidian Sliced Bean Curd: 1. Traditional workflow with recipes handed down from generations back. 2. Truly healthy products without preservatives and pigments added. 3. Using only non- GMO high protean (sic) soybeans from Northeast China. Exhibit P to Excerpts of the Testimony Deposition of Qishu “Richard” Lin, Respondent’s President with Exhibits K, L, P and T from Win Luck Trading Inc. v. Northern Food I/E Inc., Cancellation No. 92058825 taken on May 3, 2016; 24 TTABVUE 40-43. In lieu of taking a testimony deposition, Respondent submitted the testimony of its founder and President, Qishu “Richard” Lin, in declaration form. As shown below, his testimony contradicts Petitioner’s in certain key respects: I was born in China and am a native speaker of Mandarin Chinese. I am fluent in Mandarin Chinese as well as fluent in English. ¶ 2. Cancellation Nos. 92061416 and 92061421 ~ 28 ~ transliterates to “GAO,” “BEI,” and “DIAN.” The English translation of these characters is “high,” “tablet” and “shop.” I believe that those in the Chinese community would interpret this mark as “high,” “tablet,” and “shop.” ¶ 12. transliterates to “LAO,” “GAO,” “BEI,” and “DIAN.” The English translation of these characters is “old,” “high,” “tablet” and “shop.” I believe that those in the Chinese community would interpret this mark as “old,” “high,” “tablet,” and “shop.” ¶ 13. I prepared Exhibits A-H to illustrate my understanding of the English translation of characters contained in the marks at issue in the case. Exhibits A-H are true and accurate copies of translations. ¶ 15. The character is pronounced as lao and means “old.” ¶ 16. The character is pronounced as gao and means “high.” ¶ 17. The character is pronounced as bei and means “tablet.” ¶ 18. The character is pronounced as dian and means “shop.” ¶ 19. It is my understanding that the characters would not be recognizable to, and have no inherent meaning to, the English speaking community. ¶ 20. Cancellation Nos. 92061416 and 92061421 ~ 29 ~ It is my understanding that the characters would not be recognizable to, and have no inherent meaning to, the English speaking community. ¶ 21. 22 TTABVUE 3-6. His declaration is also accompanied by the following entries from Google Translate and Baidu.com which contradict Petitioner’s testimony and evidence: 老 (Lăo) translated in English as “old” (Ex. B); 高 (Gāo) translated in English as “high” (Ex. C); 碑 (Bei) translated in English as “monument” (Ex. D); 碑 (bei) translated in English as “the monument” (Ex. E); 店 (Diàn) translated in English as “shop” (Ex. F). 22 TTAVUE 9-15. Based on the record before us, we find that Petitioner has failed to meet its burden of proving by a preponderance of the evidence that the ordinary U.S. consumer familiar with Mandarin is more likely to stop and translate Respondent’s registered marks not as “high tablet shop” and “old high tablet shop” as reflected in the registrations but rather as “Gaobeidian” and “Old Gaobeidian,” a geographic location in China. Each party’s principal witness testified that he is fluent in both English and Mandarin making them both, in theory, equally qualified to give their factual opinion regarding their own translation of each mark as well as how the U.S. consumer familiar with Mandarin is likely to translate each mark. However, in the face of conflicting documentary evidence and statements made by each side regarding the commonly recognized translation of Respondent’s marks, without the testimony of an expert translator, it is difficult to assess which if either is the accurate Cancellation Nos. 92061416 and 92061421 ~ 30 ~ translation. The statements made by each party’s founder/president could certainly be challenged as self-serving and biased. We are also troubled by the fact that Petitioner failed to follow the Board’s practice of providing a written translation of the third-party packaging and online advertisements for tofu and bean curd products purportedly bearing the term “Gaobeidan.” While we have considered those specific portions where Petitioner’s witness attested to an English translation during his deposition, we have kept in mind that such testimony is inherently self-serving. Cf. TBMP § 104 (“Board proceedings are conducted in English. If a party intends to rely upon any submissions that are in a language other than English, the party should also file a translation of the submissions. If a translation is not filed, the submissions may not be considered.”). Petitioner elected not to cross-examine Respondent’s sole witness, Respondent’s CEO, who presented testimony in declaration form, making it difficult for the Board to balance the credibility of Respondent’s statements against Petitioner’s. Compare Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1053 (TTAB 2017) (Board noted that cross-examination testimony regarding statements made in testimony declaration undermined witness’ credibility.). Had Petitioner cross- examined Qishu “Richard” Lin, it could have asked probing questions concerning each mark’s translation and consumer perception of the mark. Equally problematic, there is nothing in the record to suggest which of the dictionary translations, if any, is the most accurate, also making it difficult to ascertain how the U.S. consuming public familiar with Mandarin would likely Cancellation Nos. 92061416 and 92061421 ~ 31 ~ translate the involved marks. The only evidence of direct public perception consists of the WORLD JOURNAL survey which, because the respondents were self-selected, is inherently flawed. No double-blind protocol was used to ensure that the respondents understood the conceptual distinction between a brand or proprietary name and descriptive or geographically descriptive designation. And because none of the results were authenticated by a witness with direct knowledge, they constitute hearsay. The remaining evidence Petitioner points to, third-party Registration No. 4371128, does not involve a translation of the Mandarin characters displayed in Respondent’s registered marks. And the article “World Journal and Northern Food Go Forward Hand In Hand” involves a third-party journalist’s use of the term “Gaobedian.” While Respondent purportedly gave its approval to publish the article, the article itself cannot be used to directly impeach Respondent’s credibility in this proceeding, since the use of “Gaobedian” is attributed to a third-party. Of course, had Petitioner produced Respondent’s direct testimony about a different meaning of the translation of its marks in the prior proceeding, that would have sufficed to impeach the credibility of Respondent’s sole witness. But such is not the case. Thus, on the record before us, we dismiss each of Petitioner’s claims for failure to meet the requisite burden of proof. Decision: The petitions to cancel are denied.