Tuesday, February 05, 2008

TTAB Finds "HERBAL REPUBLIC" and "THE REPUBLIC OF TEA" Confusingly Similar for Tea

Some say a trademark registration is like a tea bag: you don't know how strong it is until you put it in hot water. The registration of HERBAL REPUBLIC (in the stylized form shown below) for tea, herbal teas, and other tea-related products proved to be not very strong. In fact the Board cancelled the registration on Section 2(d) grounds in light of the previously-used mark THE REPUBLIC OF TEA for tea. The Republic of Tea, Inc. v. Herbal Republic Inc., Cancellation No. 92043748 (January 16, 2007) [not precedential].

Petitioner Republic of Tea had its own problems in turning up the heat on Applicant. Although it pleaded four registrations, Petitioner failed to put any of them into evidence. It attached evidence to its brief, which evidence the Board found untimely. And the majority of exhibits that it submitted with its testimony deposition were illegible. Nonetheless, Petitioner managed to establish standing and priority via the testimony of its owner as to use of the mark THE REPUBLIC OF TEA in connection with tea and related products. Respondent Herbal Republic did not submit testimony or file a brief.

As to the du Pont analysis, the Board found that each party offers herbal teas and tea-based beverages, and thus the parties goods must be considered legally identical. The Board then noted that when the goods are identical, a lesser degree of similarity between the marks is necessary to establish a likelihood of confusion.

REPUBLIC is "clearly the dominant term in both marks," since TEA is generic and HERBAL is at least merely descriptive. Petitioner's mark "suggests, whimsically, a country of tea." Respondent's mark, in connection with herbal tea, "also suggests, whimsically, an herbal tea country." The connotations of the marks are thus "substantially similar." Therefore the Board found that the "overall commercial impressions of the marks are substantially similar."

Holding that Petitioner had met its burden to overcome the presumption of validity, the Board granted the petition for cancellation.

TTABlog comment: A party that makes no effort cannot expect to fare well at the TeaTeaAB.

Text Copyright John L. Welch 2008.


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