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

Trademark Trial and Appeal BoardJul 18, 2017

No. 92059010 (T.T.A.B. Jul. 18, 2017)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Hearing: February 15, 2017 Mailed: July 18, 2017 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 No. 920588251 Cancellation No. 92058903 Cancellation No. 92059010 Cancellation No. 92059339 _____ Kao Lu, Beth Anne Powers, Alison Dudick of Ryder, Lu, Mazzeo & Konieczny LLC, for Win Luck Trading Inc. Quinn K. Zhao of Hill Wallack LLP, for Northern Food I/E Inc. dba Northern Food. _____ Before Mermelstein, Wolfson, and Greenbaum, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: 1 These four proceedings were consolidated in February 2015, prior to trial. See 9 TTABVUE (consolidation order). Since the consolidation, all orders and filed papers pertaining to any of the consolidated proceedings have been entered in Cancellation No. 92058825 as the parent case and all references to TTABVUE docket entries correspond to those in Cancellation No. 92058825 unless otherwise specified. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 2 Win Luck Trading Inc. (“Petitioner”) filed a petition to cancel the following four registrations, in Chinese characters, owned by Northern Food I/E Inc. dba Northern Food (“Respondent”):2 for “Asian noodles; Chinese noodles; Noodles,” which transliterates to LANZHOU XIAN LAMIAN and is subject to Cancellation No. 92058825;3 2 We refer generally to the registrations by their English transliterations. A transliteration is the phonetic spelling, in corresponding Latin characters, of any words in the applied-for mark that are in non-Latin characters. Trademark Rule 2.32(a)(10), 37 C.F.R. § 2.32(a)(10). 3 Registration No. 4387485, issued on August 20, 2013 on the Principal Register, claiming January 2, 2007 as both the date of first use and the date of first use in commerce. The registration includes the following description of the mark: “The mark consists of five vertical Chinese characters in a stylized font which transliterates to ‘LANZHOU, XIAN and LAMIAN’ and this means ‘blue place, fresh, hand-made noodle in Lanzhou’ in English.” The translation and transliteration statements in the registration are virtually identical to the description of the mark. In addition, the non-Latin characters that transliterate to “LANZHOU” and “LAMIAN” are disclaimed. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 3 for “Asian noodles; Chinese noodles; Noodles,” which transliterates to SHANXI DAOXUE MIAN and is subject to Cancellation No. 92058903;4 for “Asian noodles; Chinese noodles; Noodles,” which transliterates to LAOPUO SHOUGAN MIAN and is subject to Cancellation No. 92059010;5 and 4 Registration No. 4348383, issued on June 4, 2013 on the Supplemental Register, claiming January 2, 2007 as both the date of first use and the date of first use in commerce. The registration includes the following description of the mark: “The mark consists of five vertical Chinese characters in a stylized font which transliterates to “SHANXI, DAOXUE and MIAN” and this means “Shanxi style knife-cut noodle” in English.” The translation and transliteration statements in the registration are virtually identical to the description of the mark. The non-Latin characters that transliterate to “MIAN” are disclaimed. 5 Registration No. 4387486, issued on August 20, 2015 on the Principal Register, claiming January 2, 2007 as both the date of first use and the date of first use in commerce. The registration includes the following description of the mark: “The mark consists of five vertical Chinese characters in a stylized font which transliterates to “LAOPUO, SHOUGAN and MIAN” and this means “wife’s hand-made noodle” in English.” The translation and transliteration statements in the registration are virtually identical to the description of the Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 4 for “Asian noodles; Chinese noodles; Noodles; Pasta and noodles,” which transliterates to SHANGHAI YANGCHUN MIAN and is subject to Cancellation No. 92059339.6 As grounds for cancellation, Petitioner pleads that the registered marks are generic and, with respect to 兰州鲜拉面 (“LANZHOU XIAN LAMIAN”) and 上海阳春面 (“SHANGHAI YANGCHUN MIAN”), which are registered on the Principal Register, that the marks are merely descriptive without having acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). In its brief, Petitioner requests that the Board cancel the registrations noted above, with the exception of 老婆手擀面 (“LAOPUO SHOUGAN MIAN”), and counsel confirmed at the oral hearing that Petitioner is no longer seeking to cancel that registration. Accordingly, we have given the pleaded claims against the mark. The non-Latin characters that transliterate to “SHOUGAN” and “MIAN” are disclaimed. 6 Registration No. 4040834, issued on October 18, 2011 on the Principal Register, claiming August 1, 2004, as both the date of first use and the date of first use in commerce. Registered, in whole, under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). The registration includes the following description of the mark: “The mark consists of five Chinese characters in a row written in a stylized font.” The registration also includes the following transliteration statement: “The non-Latin characters in the mark transliterate to SHANGHAI, YANG, CHUN, MIAN and this means sunny and spring noodle in Shanghai in English.” In addition, the registration includes the following translation statement: “The English translation of the non-Latin characters in the mark is Sunny and spring noodle in Shanghai.” The non-Latin characters that transliterate to “SHANGHAI” and “MIAN” are disclaimed. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 5 LAOPUO SHOUGAN MIAN registration no further consideration.7 Further, while Petitioner also alleged fraud and that the designations are primarily geographically descriptive, Petitioner has waived these claims by failing to argue them in its brief. See Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB 2013) (claim not argued in brief is considered waived). We also note that on September 30, 2015, the Board dismissed Petitioner’s claims under Sections 2(e)(1) and 2(e)(2) against SHANXI DAOXUE MIAN because that designation is registered on the Supplemental Register.8 Accordingly, and as confirmed by Petitioner’s counsel during the oral hearing, Petitioner now pursues only the claims that the designations LANZHOU XIAN LAMIAN and SHANGHAI YANGCHUN MIAN are merely descriptive under Section 2(e)(1) without acquired distinctiveness,9 and that all three involved designations LANZHOU XIAN LAMIAN, SHANGHAI YANGCHUN MIAN, 7 Because Petitioner has effectively withdrawn its petition for cancellation after an answer was filed, and without the written consent of the Registrant, judgment is entered against Petitioner with respect to Cancellation No. 92059010, as noted below. Trademark Rule 2.114(c). 8 Registrations on the Supplemental Register “shall not be subject to or receive the advantages of sections [2(e)(1) or (2)].” Trademark Act Section 26, 15 U.S.C. § 1094. This is because “a registrant owner of a Supplemental Register registration impliedly admits that the registered term was descriptive … at least at the time of the registrant’s first use of the term.” Perma Ceram Enters. Inc. v. Preco Indus. Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992). 9 SHANGHAI YANGCHUN MIAN registered with a claim of acquired distinctiveness. A Section 2(f) claim of acquired distinctiveness is an admission that the mark is not inherently distinctive at the time of registration. See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994). Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 6 and SHANXI DAOXUE MIAN are generic and therefore incapable of becoming a trademark. Respondent filed answers to each of the petitions to cancel, denying the salient allegations asserted therein. Both parties filed consolidated trial briefs and Petitioner filed a reply brief. An oral hearing was held on February 15, 2017. We grant the petitions to cancel the three involved registrations on the basis that the designations are generic for noodles.10 In view thereof, we need not decide whether LANZHOU XIAN LA MIAN and SHANGHAI YANG CHUN MIAN are merely descriptive without acquired distinctiveness. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of each of Respondent’s registrations. A. Petitioner’s Testimony and Evidence Petitioner submitted the testimony deposition of Mr. Sheng Lin (“S. Lin”), Petitioner’s president, taken December 9, 2015 (with accompanying Exhibits)11 and 10 The identifications of goods in Reg. Nos. 4387485 and 4348383 comprise, in their entirety, “Asian noodles; Chinese noodles; Noodles.” Reg. No. 4040834 includes the additional wording“[p]asta and noodles.” As discussed more fully infra, the genus of goods herein is “noodles,” which includes not only specific types of noodles (“Asian,” “Chinese”) but also “pasta,” which is essentially identical to noodles. Cf. In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 (TTAB 2002) (“[I]f applicant’s mark BONDS.COM is generic as to part of the services applicant offers under its mark, the mark is unregistrable”) (citing In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (“There is no logical reason to treat [as registrable] a term that is generic of a category or class of products where some but not all of the goods identified in an application fall within that category.”). 11 19 TTABVUE. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 7 notices of reliance on the discovery deposition of Mr. Qishu Lin (“Q. Lin”), Respondent’s president,12 taken December 10, 2014 (with accompanying Exhibits);13 Chinese/English-language conversion dictionaries;14 publications in general circulation and Internet materials purporting to show that the registered marks are generic or merely descriptive;15 select answers to interrogatories propounded by Petitioner on Respondent;16 and a copy of an Office Action dated December 10, 2009, taken from the USPTO database records for Serial No. 77815024 for the mark STUFFED CHICKEN WING.17 B. Respondent’s Testimony and Evidence Respondent submitted the testimony deposition of Q. Lin, taken May 3, 2016 (with accompanying Exhibits)18 and notices of reliance on the deposition transcript of S. Lin, taken December 11, 2014 (with accompanying Exhibits);19 printed publications in general circulation and Internet materials purporting to show that the marks of Respondent’s registrations are not generic or merely descriptive, or that 12 We presume there is no relation between Q. Lin and S. Lin as none has been asserted by either party. 13 23 TTABVUE, Exhibit 28. 21 TTABVUE contains a duplicate copy of the deposition transcript, minus the translator’s “certification of translation” for each submitted document. 14 22 TTABVUE, Exhibits 1 and 2. 20 TTABVUE contains a duplicate copy of the submitted documents, minus the translator’s “certification of translation” for each submitted document. 15 Id., Exhibits 3-27. 16 23 TTABVUE, Exhibits 29-32. 17 36 TTABVUE. 18 31 TTABVUE. The court reporter’s certificate is filed at 34 TTABVUE. 19 35 TTABVUE, Exhibit S. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 8 they have acquired distinctiveness;20 a copy of the registration certificate for the mark BUFFALO WILD WINGS (Reg. No. 4152108);21 and select answers to interrogatories propounded by Respondent on Petitioner.22 The Parties Petitioner, a New Jersey corporation, and Respondent, a New York corporation, import noodles made in China for consumption by U.S. consumers. Packaged noodles are available “wet” or “dry” at supermarkets specializing in Asian foodstuffs; the wet noodles are sold from refrigerated cases whereas the dry noodles are sold off shelves.23 “Wet” noodles are also referred to as “fresh” noodles.24 Both parties sell wet noodles under all three designations, and SHANGHAI YANGCHUN MIAN wet and dry noodles.25 Respondent’s president also testified that Respondent sells SHANXI DAOXUE MIAN wet and dry noodles.26 Each party’s products are 20 32 TTABVUE, Exhibits A-Q. 21 33 TTABVUE, Exhibit R. 22 35 TTABVUE, Exhibits T-V. 23 Q. Lin testimony, 31 TTABVUE 20. 24 To illustrate, S. Lin testified that the term “Xian” (which appears in “Lanzhou Xian Lamian”) means “fresh.” 19 TTABVUE 19. When asked if Lanzhou Xian Lamian noodles are wet or dry, the witness responded: “It’s wet.” Following up on that answer, the witness was asked “Does ‘Xian’ convey that it is not dry?” The witness responded: “Yes, it means it’s not dry. It means it’s fresh.” 19 TTABVUE 19-20. 25 Q. Lin testimony, 31 TTABVUE 113-4; S. Lin discovery deposition, 35 TTABVUE 42 and S. Lin testimony, 19 TTABVUE 19. 26 31 TTABVUE 114-5. Petitioner submitted evidence of its SHANXI DAOXUE MIAN packaging, but the photograph does not reveal whether the noodles are wet or dry. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 9 shown below.27 Neither party includes the English transliterations or the of-record translations for the Chinese characters on any of its packaging: Petitioner’s Packaged Noodles: 28 29 30 27 Respondent’s packaging for SHANGHAI YANGCHUN MIAN displays, in English, the terms “yang” and “chun” as one word. The transliteration statement for Respondent’s registration suggests that “yang” and “chun” should be separated by a space; third-party use of the wording is inconsistent. We have, for sake of consistency, used YANGCHUN as one word in Roman characters, but whether the term is displayed as one or two words in transliteration is irrelevant; the Chinese characters are the same regardless, and the English is only a phonetic approximation. 28 19 TTABVUE 149, LANZHOU XIAN LAMIAN. The English wording at the bottom of the package reads “Oriental Style Noodle.” The first Chinese character in this mark (transliterating to “lan”) is presented in traditional script, as discussed more fully below. Brightness and contrast have been adjusted in all three images for legibility. 29 19 TTABVUE 153, SHANGHAI YANG CHUN MIAN. The English wording at the bottom of the package reads “Shanghai Plain Noodles.” 30 19 TTABVUE 151, SHANXI DAOXUE MIAN. The English wording at the bottom of the package reads “Sliced Noodles.” Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 10 Respondent’s Packaged Noodles: 31 32 33 While Q. Lin’s testimony is ambiguous, he suggests that Respondent may sell a small fraction of its imported noodle products to restaurants; otherwise Respondent appears to sell only to supermarkets,34 and Petitioner appears to sell exclusively to supermarkets.35 31 31 TTABVUE 165, LANZHOU XIAN LAMIAN. The English wording at the bottom of the package reads “Lanzhou Fresh Noodle.” 32 31 TTABVUE 162, SHANGHAI YANG CHUN MIAN. The English wording at the bottom of the package reads “Shanghai yangchun Noolde [sic].” The presentation of the Chinese characters from top to bottom corresponds with the horizontal rendition from left to right that appears in the drawing of the registration. 33 31 TTABVUE 168, SHANXI DAOXUE MIAN. The English wording at the bottom of the package reads “Shanxi Planed.” 34 Q. Lin at one point stated that he “wouldn’t be able to sell our products to supermarkets” if he sold to restaurants. 31 TTABVUE 1023. But he also stated in response to the question “Is it your testimony that you don’t sell to restaurants?” that “99% of our products were sold to the supermarkets. But, if restaurants, if they came over to buy our products, we couldn’t decline.” 31 TTABVUE 1046. Whether or not Respondent sells to restaurants is not dispositive. 35 19 TTABVUE 10. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 11 Respondent was incorporated in 2005.36 At that time, Respondent sold packaged dry noodles, as did other noodle purveyors, but not wet noodles.37 Respondent claims to be the first to refrigerate the noodles so they could remain “fresh” or “wet,”38 and Respondent first sold wet noodles under the registered marks in 2007.39 At the time, Petitioner’s president, S. Lin, was also selling dry, but not wet, noodles, having incorporated S.M. Company in 2004 as a food importer to sell Chinese specialty products, including noodles.40 S. Lin formed Win Luck Corporation in 2012 and began selling wet noodles displaying the designations in 2013.41 Both parties continue to sell in overlapping trade channels; both sell wet (fresh) noodles packaged for refrigerated sections in Asian supermarkets; and both parties continue to use the same designations on their packaged noodle products. 36 31 TTABVUE 13. 37 “At the beginning we sold a lot of dry noodles and instant noodles.” Q. Lin testimony, 31 TTABVUE 15. 38 “[W]e wanted to create a fresh noodle product in the US market that has -- that was never available before.” Q. Lin testimony, 31 TTABVUE 24. 39 31 TTABVUE 21-22. Q. Lin testified that in 2004, Respondent was selling refrigerated Shanghai Yangchun Mian, and another type of noodle under the name Jingdu Lamian, but no others. 31 TTABVUE 110-11. In 2016, Respondent sold close to 800 different products; about 30 of them are refrigerated and about 10 of these are refrigerated noodles. 31 TTABVUE 109-111. 40 19 TTABVUE 7-8. 41 19 TTABVUE 99. S. Lin’s testimony is somewhat indefinite on Petitioner’s actual date of first use. He disputed the accuracy of the date of first use of November 2013 that was read into the record from Petitioner’s answers to propounded interrogatories, but had no independent recollection of the date at trial. 19 TTABVUE 93-94. However, during his discovery deposition he testified that Petitioner first sold wet noodles under the LANZHOU XIAN LAMIAN, SHANXI DAOXUE MIAN and SHANGHAI YANGCHUN MIAN designations in 2013. 35 TTABVUE 37, 39 and 41-2. Moreover, Respondent’s president, Q. Lin, also refers to 2013 as the date other companies, including Petitioner, began selling wet noodles in Asian markets. 31 TTABVUE 24-5. The actual date of Petitioner’s first use is immaterial as priority is not an issue in this case. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 12 Standing The Lanham Act provides that “any person who believes that he is or will be damaged … by the registration of a mark” may petition the USPTO to cancel the registration. Trademark Act Section 14, 15 U.S.C. § 1064. Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). See also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). When challenging a term as descriptive or generic, 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). As noted, the record clearly establishes that both parties sell Asian or Chinese-style noodles under the same purported marks, and Respondent does not dispute that fact. Thus, there is no doubt that the parties are active competitors. Petitioner has a legitimate interest in preventing Respondent from gaining an unfair competitive advantage by maintaining existing registrations for allegedly generic or descriptive terms for Asian or Chinese- style noodles. Petitioner therefore has standing. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 13 Applying the Doctrine of Foreign Equivalents “Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). In descriptiveness cases: It is a well[-]established principle of trademark law in this country that the foreign equivalent of a merely descriptive English word is no more registrable than the English word itself despite the fact that the foreign term may not be commonly known to the general public. That is, normally no distinction can be made between English terms and their foreign equivalents with respect to registrability. In re Highlights for Children, Inc., 118 USPQ2d 1268 (TTAB 2016) (refusing registration of IMÁGENES ESCONDIDAS (“hidden pictures” in English) as merely descriptive of books and magazines) (citing In re Optica Int’l, 196 USPQ 775, 777 (TTAB 1977) (finding OPTIQUE merely descriptive of eyeglass frames). 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 Hag AG, 155 USPQ 598, 599 (TTAB 1967) (recognizing “kaba” as a corruption of the word “kava,” the Serbian word for coffee, and holding it unprotectable as generic). Chinese is considered a common modern language, and the doctrine of foreign equivalents applies to marks displayed in Chinese characters. In re Oriental Daily News, Inc., 230 USPQ 637, 638 (TTAB 1986) (“[W]e see no reason why descriptive Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 14 words represented by Chinese characters should be treated any differently from descriptive words in other contemporary languages.”). In this case, the relevant consuming public includes those ordinary purchasers in the United States who are familiar with, or fluent in, the Chinese language: The “ordinary American purchaser” is not limited to those purchasers who speak only English. “[R]ather, the term includes all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” Highlights for Children, 118 USPQ2d at 1271 (citing In re Spirits Int’l, 563 F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009)). See also In re Sadoru Group., 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.”). We apply the doctrine of foreign equivalents in determining whether the purported marks are generic designations. Translating the Chinese Characters in the Registrations Our starting point in considering the translations of the marks is Respondent’s given translations: Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 15 A. SHANGHAI (上海) YANGCHUN (阳春) MIAN (面) -- 上海阳春面 The parties agree that “Shanghai” is a reference to a city in China.42 Respondent’s given translation for 阳春 (YANGCHUN) is “sunny and spring.” While we accept that the characters individually have such translations, the evidence shows that together, and in connection with noodles and noodle soup, the phrase “yangchun mian” means “plain noodle”43 or “clear noodle soup,”44 and that upon encountering the designation 上海阳春面, purchasers who speak Chinese or read Chinese characters would understand the entire designation to mean “Shanghai plain noodles” or “Shanghai clear noodle soup.” B. LANZHOU (兰州) XIAN (鲜) LAMIAN (拉面) -- 兰州鲜拉面 Respondent’s given translation is “blue place, fresh, hand-made noodle in Lanzhou.” While we accept, for purposes of this decision, that “LAN” 兰 in Chinese means “blue” and “ZHOU” 州 means “place” standing alone or in other contexts,45 the combination LANZHOU 兰州 specifically identifies a city in China and would readily be perceived as such by prospective purchasers in the United States who speak 42 Q. Lin testimony, 31 TTABVUE 99 (referring to Shanghai city); S. Lin testimony, 19 TTABVUE 49, 86-7 (referring to Shanghai, China). 43 Exhibits 14 and 24 of S. Lin testimony, 22 TTABVUE 41 and 78. 44 Exhibits 9 and 24, 22 TTABVUE 29 and 78. The translation of “yangchun” is discussed more fully infra. 45 Q. Lin testified that during prosecution of the LANZHOU XIAN LAMIAN application he advised the examining attorney concerning the translation of the mark “that lan ... meant blue ..., [and] zhou ... literally means place….” 31 TTABVUE 93-4. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 16 Chinese or read Chinese characters.46 Indeed, when asked for his personal translation of the mark, Q. Lin said “Lanzhou fresh noodle.”47 Based on this evidence, we find that when those purchasers encounter the designation 兰州鲜拉面 on a package of noodles, they understand the entire designation to mean “Lanzhou fresh hand-pulled noodles.” C. SHANXI (山西) DAOXUE (刀削) MIAN (面) -- 山西刀削面 Although the character-by character translation of 山西刀削面 is “Shanxi knife-cut noodles,” Respondent’s given translation of the designation is “Shanxi style knife-cut noodle.” We find Respondent’s addition of the word “style” to the character- by-character translation does not make Respondent’s translation improper although none of the characters independently translates to “style.” Use of the term may simply reflect Chinese usage or Respondent’s understanding that the mark is not inherently distinctive. As noted, this registration is on the Supplemental Register. It is necessary to address another point regarding the Chinese characters in the designations before we turn to the substantive bases upon which Petitioner has filed the petitions to cancel Respondent’s registrations. That is, some of the Chinese characters have two representations, a traditional script and a modernized, simplified script, that are used interchangeably by merchants of packaged Asian 46 During his discovery deposition, Q. Lin agreed that Lanzhou names a city in China. 23 TTABVUE 23. 47 23 TTABVUE 39. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 17 noodles.48 For instance, the traditional form of the character 兰 (LAN) in LANZHOU is 蘭. The traditional form of the character 阳 (YANG) in YANGCHUN is 陽. The traditional form of 面 (MIAN) is 麵. The record shows that merchants use both the traditional and modernized versions of these characters interchangeably on their packaging. The witnesses, in discussing the designations as shown on their own as well as on third-party packaging, have not differentiated in terms of their pronunciation (as transcribed by the court reporter) or meaning between the different scripts in which any of the characters in the relevant designations are displayed. Thus, because both versions of the characters in the relevant designations are identically translated, have been recognized by the witnesses as identical, and the parties have not argued that the differences impact whether the designations would be considered generic or merely descriptive, we find the perception of the relevant public of the designations is unaffected by whether or not any Chinese characters are displayed in traditional script or in simplified script; we treat the terms as 48See, e.g., Herzberg, Speak and Read Chinese (2016) (explaining that there are currently two different versions of many of the Chinese characters, the traditional form, and the simplified form established in the 1950s in order to promote literacy); Pellatt, Translating Chinese Culture The Process of Chinese-English Translation (2014) (postulating that the two distinct systems in use today promote unification among otherwise distinct groups in China, Singapore, Hong Kong and Taiwan). See also https://www.britannica.com/topic/Chinese- languages#ref609522 (“In 1956 a simplification of the characters was introduced that made them easier to learn and faster to write.”), accessed June 15, 2017. The Board may take judicial notice of information from dictionaries, encyclopedias and other standard reference works. In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1798 n.8 (TTAB 2017) (citing B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”)); see also Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011) (encyclopedias); In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works). Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 18 interchangeable for purposes of analyzing whether the registered designations are generic or merely descriptive. Finally, we note that the Chinese characters 上海阳春面 SHANGHAI YANGCHUN MIAN are oriented horizontally in the ’834 Registration, but used vertically by both parties in the packaging examples depicted above. (The other marks are registered and used vertically.) Following conventional Chinese writing styles, characters written in vertical columns are read from top to bottom. Although SHANGHAI YANGCHUN MIAN is read from left to right in Respondent’s registration, this orientation apparently does not affect its pronunciation, meaning, or public perception, and the parties have not raised this as an issue. Determining Whether the Registered Marks are Generic Petitioner argues that each of the designations used by Respondent for its packaged noodles is in fact in widespread use as the common name for specific types of noodles, and for noodle dishes that are made with the named type of noodles as a key ingredient of the noodle dish. Respondent does not dispute that the designations are the common names of “well-known traditional Chinese noodle dish[es],”49 but argues that even if that is the case, the designations are not generic for uncooked, plain, and refrigerated noodle products. Rather, Respondent contends, they are all 49 Respondent’s brief, 38 TTABVUE 7. Also, during his testimony deposition, Q. Lin agreed with the statement in his affidavit filed in connection with Petitioner’s summary judgment motion that “the terms Lanzhou Xian Lamian, Shanxi Daoxue Mian, and Shanghai Yang Chun Mian are strongly associated with the well-known Chinese noodle dishes and are popular in restaurants throughout China and Chinatowns located in major cities in the US.” 31 TTABVUE 1028 and Exhibit GG, paragraph 44, at 1125. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 19 capable of trademark significance; additionally, Respondent argues that 兰州鲜拉面 (LANZHOU XIAN LAMIAN) is suggestive or merely descriptive with acquired distinctiveness, and 上海阳春面 (SHANGHAI YANGCHUN MIAN) is merely descriptive with acquired distinctiveness. A generic term “is the common descriptive name of a class of goods or services.” Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). See also In re Cordua Rests, Inc., 823 F.2d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (“Churrascos” is generic for genus of restaurant services because relevant public, namely restaurant patrons, understands term to refer to style of grilling meat, which food is a key offering of churrascos restaurants). “The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” Marvin Ginn, 228 USPQ 528, 530. Determining a mark’s genericness requires “a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?” Id. Evidence of the public’s understanding of the mark may be obtained from “any competent source, such as consumer surveys, dictionaries, newspapers and other publications.” Princeton Vanguard, 114 USPQ2d at 1830 (citing In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 20 (Fed. Cir. 1985)). Where a mark consists of a combination of terms, the entire formulation must be considered generic, not merely the constituent parts. Princeton Vanguard, 114 USPQ2d at 1831. What is the Genus of Goods at Issue? As previously noted, the identification of goods in all three registrations is “Asian noodles; Chinese noodles; noodles” and the registration for SHANGHAI YANGCHUN MIAN also covers “pasta and noodles.” The term “noodles” broadly encompasses Asian and Chinese noodles, as well as those common to other regions, and “Asian” encompasses “Chinese” noodles as a more specific type.50 Collins dictionary notes that noodles are “used especially in Chinese and Italian cooking.”51 We therefore find that “noodles” is the genus of the goods at issue in this case. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (“[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration”). Respondent concedes in its brief that the three designations are generic for “noodle dishes,” stating that “[t]he Trademarks are the names of three traditional 50 We take judicial notice of the definition of “noodles” as meaning “narrow, ribbonlike strip[s] of dough, usually made of flour, eggs, and water.” American Heritage Dictionary of the English Language, (5th ed. 2017); https://ahdictionary.com/word/search.html?q=noodles, accessed May 30, 2017. The Board may take judicial notice of dictionary definitions from online dictionaries that exist in printed format or regular fixed editions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 51 We also take judicial notice of the above definition from https://www.collinsdictionary.com/ dictionary/English/noodle, accessed July 11, 2017. Univ. of Notre Dame, 213 USPQ at 596. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 21 and well-known noodle dishes that are deeply rooted in Chinese culture.”52 However, Respondent argues that the noodles it sells in the supermarket are distinguishable from prepared noodle dishes that are sold in a restaurant. Respondent asserts that although the designations may be generic for noodle dishes sold in a restaurant, [b]ecause each name used by Registrant as a trademark is known by consumers to be a specific Chinese dish, a ‘thought’ is required for consumers to conclude the nature of Registrant’s goods when consumers see the Trademarks. Thus, it is suggestive, if not inherently distinctive, when the names are used as trademarks on a product that is not the dish. ... Each of the Trademarks refers to a specific Chinese noodle dish. Thus, the Trademarks are not generic names for noodles.53 In other words, Respondent contends that the designations, which are admittedly generic for “noodle dishes,” are not generic for uncooked noodles. Petitioner contends that Respondent’s narrow view is “nonsensical” in that “all three of these varieties are and always have been either the name of the noodles or noodle dish in Chinese cooking.”54 The evidence, discussed more fully infra, shows use of the marks in connection with both prepared noodle dishes and uncooked noodles. To illustrate, when discussing the designation SHANXI DAOXUE MIAN, Petitioner’s witness, S. Lin, was asked, “When Chinese people call Shanxi Daoxue Mian, they’re going to reference to a dish or reference to a noodle?” Although his 52 38 TTABVUE 7. 53 Id. 54 37 TTABVUE 7. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 22 initial answer was: “Local dish,” when next asked: “Reference to the noodle itself?” he answered: “Noodle itself describing a local specialty product.”55 The Office typically provides as broad an attribution to a term as is recognized by the purchasing public. Here, the relevant purchasing public will likely consider noodle-based prepared meals within the definition of “noodles” because noodles constitute the main ingredient of noodle dishes such as noodle soups, and because prepared noodles are simply called “noodles.” Accordingly, the genus at issue in this case covers both noodles sold in packages (wet and dry) and prepared noodle dishes (soup and plated) as may be purchased in restaurants. Thus, if the marks are generic for noodle dishes, which Respondent admits, we find that they are also generic for the noodles which comprise the key ingredient of the noodle dishes. See, e.g., Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 129 USPQ 411, 413 (CCPA 1961) (finding HA-LUSH-KA generic for “egg-noodles and egg noodle products--namely, macaroni, spaghetti, and egg noodle novelties in different shapes, all having the required egg content” because it is the name, in Hungarian, “of at least some of the noodle products”); see also In re Seats, Inc., 225 USPQ 364 (Fed. Cir. 1985) (proposed mark 55 19 TTABVUE 115. As an attempted analogy, Respondent submitted a copy of a third- party registration for the mark BUFFALO WILD WINGS (Reg. No. 4152108). 33 TTABVUE 6. Respondent argues that “[b]ecause ‘Buffalo Chicken Wings’ is a well-known name of a dish, the term is suggestive, if not inherently distinctive, when used as a trademark for raw, frozen, and packaged poultry products.” 38 TTABVUE 7. We find the registration inapposite. Contrary to Respondent’s assertion, the fact that a registration issued for the mark BUFFALO WILD WINGS for franchising services in connection with restaurants does not mean that BUFFALO CHICKEN WINGS would be registrable as a trademark for raw or prepared chicken. (There is no indication that WILD is descriptive or generic for franchising services, while CHICKEN obviously is generic for chicken wings.) The registration is of no persuasive value. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 23 SEATS is generic for ticket reservation services which issue tickets to seats for various events at various venues); In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, 1157, (TTAB 2009) (holding that TIRES TIRES TIRES is generic for retail tire sales); In re Northland Aluminum, 227 USPQ at 964 (term “Bundt,” which is a generic name for a type of baked ring cake is also generic for the packaged cake mix used to make the cake). Cf. In re Cordua Rests., Inc., 118 USPQ2d at 1637 (“But a term can be generic for a genus of goods or services if the relevant public—here, the restaurant- going public—understands the term to refer to a key aspect of that genus—e.g., a key good that characterizes a particular genus of retail services”); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1791, (TTAB 2002) (“[A] term which is the generic name of a particular category of goods is likewise generic for any services which are directed to or focused on that class of goods.”). Does the Public Primarily Use or Understand the Terms to Refer to the Genus at Issue? We next consider whether the relevant public understands the terms 兰州鲜拉面 (LANZHOU XIAN LAMIAN), 上海阳春面 (SHANGHAI YANGCHUN MIAN), and 山西刀削面 (SHANXI DAOXUE MIAN) primarily to refer to “noodles.” As indicated above, the relevant public is comprised of the potential purchasers of the goods, in this case, ordinary purchasers who understand Chinese (both those fluent in Chinese and those familiar with the language but not fluent) and who shop in supermarkets, grocery stores, food warehouses and the like where basic staples such as noodles are sold. If this relevant public primarily uses or understands the terms Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 24 to refer to the category or class of goods in question, the terms are generic for the goods. SHANGHAI YANGCHUN MIAN We begin by considering whether the phrase 上海阳春面 (SHANGHAI YANGCHUN MIAN) is generic for “noodles.” There is no dispute that the characters 阳春面 (“yangchun mian”) name a traditional Chinese noodle dish made with plain noodles, soy sauce and green onions.56 In addition, the record shows that several unrelated third-party manufacturers use the characters 阳春面 (“yangchun mian”) by themselves (that is, without the word “Shanghai”) to identify the type of packaged noodles they are selling. For example, the following two packages each display the three Chinese characters for “Yangchun Mian” (the characters for “yang” and “mian” are in traditional script). The first package57 includes the wording “Flat Noodle” while the second58 describes the contents of the package as “noodel [sic] stick white”: 56 Respondent’s president, Q. Lin, testifies that “Yang Chun Mian originally was the noodle that poor people would eat because they just boil the noodle, put some soy sauce and greens onions in there just to eat it.” 31 TTABVUE 100. 57 19 TTABVUE 140, Exhibit 12. 58 19 TTABVUE 142, Exhibit 14. The three characters are written left to right, then top to bottom. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 25 The following manufacturers also use just “yangchun mian” (in English transliteration and Chinese),59 with no translation, although the third example60 describes the noodles as “dried” in the far lower left-hand corner:”61 59 Packaging shown in the bottom photograph does not display an English transliteration, and the upper two packages show the term “yangchun” as two words: “yang chun.” 60 19 TTABVUE 141, Exhibit 13. 61 The first two examples are found at 19 TTABVUE 138, Exhibit 11, and 19 TTABVUE 143, Exhibit 15. The third example is found at 19 TTABVUE 141, Exhibit 13. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 26 . Petitioner’s witness, S. Lin, identified a recipe book of Chinese noodle dishes offering traditional yangchun mian, illustrated below.62 62 19 TTABVUE 111, Exhibit 19 (at 19 TTABVUE 147-8). S. Lin translated the title of this book as “400 popular classical noodle dish.” 19 TTABVUE 111. A copy of this book was also Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 27 The translator’s note indicates that the entry in the table of contents marked with the first red box is for “Yangchun Mian (clear soup noodle).” The second entry (also marked with a red box) is for “Lanzhou hand-pulled noodles.”63 The ingredient list for making “Yangchun Mian” includes “150g yangchun noodle”: attached as an exhibit to Petitioner’s Notice of Reliance, where the book was identified as “400 Noodle Dishes.” 22 TTABVUE 18-9, Exhibit 5. 63 The entry for Lanzhou hand-pulled noodles is discussed infra. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 28 Another recipe book, attached as an exhibit to Petitioner’s Notice of Reliance, and identified as “200 Noodle Dishes – Noodle Wikipedia,” also provides a recipe for making “Yanchuan [sic] Mian.”64 The cover page and table of contents are shown below: 64 22 TTABVUE 12-14, Exhibit 3. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 29 The translator’s note indicates that entry number 11 in the table of contents (marked with the first red box) is for “Yangchun Mian (clear soup noodle).” Entry number 25 (also marked) is for “Lanzhou hand-pulled noodles.”65 Entry number 42 (also marked) is for “Sliced noodles with preserved vegetable and minced pork.”66 The ingredient list includes “Yangchun noodles”: 65 Discussed further infra. 66 Entry no. 42 is not discussed further as it is not clear that it refers to “daoxue mian” or “Shanxi daoxue mian.” Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 30 These examples demonstrate that “yangchun mian” is generic for a type of Asian or Chinese noodles. We now consider whether the composite term “Shanghai yangchun mian” is also generic for these noodles. Respondent, in discussing the addition of “Shanghai” to “yangchun mian,” provides conflicting testimony. On the one hand, Q. Lin asserts that he is the one who added the term “Shanghai” to the generic name, and that this noodle dish is never referred to as “Shanghai Yangchun Mian” in a restaurant: “Only Yang Chun Mian is referred to for a noodle dish in the restaurant and this dish in the restaurant is never Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 31 referred to as Shanghai Yang Chun Mian.”67 On the other hand, Q. Lin states: “Shanghai Yang Chun Mian was traditionally a popular dish in Jiangsu . . . and Zhejiang . . . [r]egion of China.”68 The designation is used to identify a particular type of “relatively thinner noodle.”69 Petitioner’s witness, S. Lin, testified that he sold Shanghai Yangchun Mian at the restaurant where he worked in 2004,70 and that it is “a traditional regional gourmet food in Shanghai, China.”71 S. Lin identified the following two “CHUNSI” brand noodle packages that bear the designation SHANGHAI YANGCHUN (or SHANGHAI STYLE) NOODLES:72 67 31 TTABVUE 27. 68 31 TTABVUE 12-13. 69 31 TTABVUE 17. 70 19 TTABVUE 12. 71 19 TTABVUE 49. 72 19 TTABVUE 51-4, Exhibits 8 and 9 (19 TTABVUE 135 and 136). Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 32 (Although the English description varies on these two packages, the Chinese characters are the same: 上海 (Shanghai), 陽 (the traditional script for 阳, yang), 春 (chun), and 麵 (the traditional script for 面, mian)). Likewise, the following evidence supports Petitioner’s argument that there are Asian (or Chinese) noodles that are referred to as “Shanghai yangchun mian.” On the package shown below, the Chinese characters for “Shanghai yangchun mian” are displayed, along with the English wording “Shanghai Noodles:”73 The following package uses different Chinese characters, but the product is described, in English, as “Shanghai Noodle”: 74 73 19 TTABVUE 137. 74 19 TTABVUE 144, Exhibit 16. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 33 Based on the evidence, we find that the designation 上海阳春面 (SHANGHAI YANGCHUN MIAN) is generic as applied to Asian or Chinese noodles. It is a combination of a geographic place name with a phrase meaning “plain noodles” that has come to signify, as a whole, a particular type of noodles or noodle dish known as Shanghai plain noodles, or “Shanghai yangchun mian.” Even accepting that the direct translation of “yangchun” is “sunny, spring,” the evidence shows that consumers who are fluent in or familiar with Chinese are likely to take the phrase as a whole to refer to the particular type of noodles. Accordingly, 上海阳春面 (SHANGHAI YANGCHUN MIAN) is a generic designation for noodles and Respondent’s claim under Section 2(f) is unavailing. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 34 LANZHOU XIAN LAMIAN We next consider whether 兰州鲜拉面 (LANZHOU XIAN LAMIAN) is generic for noodles. Respondent, in its brief, refers to “Lanzhou Lamian” as “a well-known Chinese noodle dish that originated in Lanzhou City, China. . . . [T]his noodle dish is also called ‘Lanzhou hand-pulled noodles.’”75 Respondent also submitted several examples illustrating that “Lanzhou Lamian” is generic. For example, Respondent submitted an excerpt from Wikipedia for “Lanzhou beef lamian,” a “type of Chinese noodle dish originated in Lanzhou, China, and generally popular in China.”76 Further, Respondent’s President Q. Lin testified that Respondent sells a dry noodle product under the name “Lanzhou Lamian”77 and Respondent appears to use “Lanzhou noodles” in a generic sense to identify fresh packaged noodles, as displayed on the gold sticker (shown below) forming part of Respondent’s packaging for “Yidu Noodles”: 75 38 TTABVUE 13. The term “hand-pulled noodles” refers to noodles that traditionally have been created by pulling the noodle dough by hand to create long strings of noodles, doubling the strands, and repeating the process until the noodles reach the desired thickness. See, e.g., http://wiki.goour.com/doc-view-22765.html, Petitioner’s Notice of Reliance Exhibit 15, 22 TTABVUE 42 (English version Exhibit 16) (“Hand-pulled is a unique skill. Holding both ends, you can stretch your arms outward with evenly distributed strength. Then, you can fold the two ends and put them on one of your fingers on the left hand, hook the other end with the other hand, turn your palm upward, make the noodles form a noose and stretch them to both sides. After the noodles are stretched, put the end in your right hand to your left finger and continue to stretch the noodles on the other end.”). 76 32 TTABVUE 33, Exhibit H. 77 31 TTABVUE 114; no copy of the packaging for this product was submitted. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 35 78 There is evidence of third-party media use describing Lanzhou fresh hand- pulled noodles as well-known among relevant consumers. For example, an online article (in Chinese) describes the “long history” of Lanzhou hand-pulled noodles: “Today, due to delicious taste and affordable price, Lanzhou hand-pulled noodle restaurants are all over China as well as many countries and regions around the world. Lanzhou is truly the home to beef noodles in the entire world.”79 Another Chinese-language article from “Wikipedia, the free Wikipedia-Chinese Version”80 describes the development of making “hand-pulled noodles”: “Lanzhou hand-pulled 78 Identified at 31 TTABVUE 966 as fresh noodles; packaging at Exhibit Z (31 TTABVUE 1081). 79 “Lanzhou Hand-pulled Noodles,” Exhibit 15 to Petitioner’s Notice of Reliance, 22 TTABVUE 43 (English translation at 49). 80 “Hand-Pulled Noodles,” Exhibit 21 to Petitioner’s Notice of Reliance, 22 TTABVUE 72 (English translation at 74). Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 36 noodles and Shanxi sliced noodles are well-known. In China today, there are Lanzhou noodle shops everywhere, which serve Lanzhou noodles, Shanxi sliced noodles and other noodle dishes made by chefs from different places.”81 These well-known hand- pulled noodles have come to be known as Lanzhou noodles. Although Respondent concedes that Lanzhou Lamian may be generic for noodles, Respondent argues that Lanzhou Xian Lamian is not. Q. Lin testified that: “Lanzhou Lamian is available in the restaurant but they — but not Lanzhou Xian Lamian.”82 He also asserts that Respondent was the first to introduce the phrase Lanzhou Xian Lamian to the supermarket consumer in a context outside of restaurants: “When we promote -- before we promote Lanzhou Xian Lamian, there was no other Lanzhou Xian Lamian in the market.”83 On the other hand, Q. Lin uses the phrase generically in his testimony: Q. When did you first hear about Lanzhou Xian Lamian? 81 Id. This latter Wikipedia reference appears to be a foreign website. Nonetheless, we find that the article has probative value in this case because our inquiry concerns the perception of those ordinary purchasers in the United States who are familiar with, or fluent in, the Chinese language—who are clearly a large segment of the prospective purchasers of the goods in the registrations—regarding products which originated from outside of the United States. “Information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern United States consumer impression of a proposed mark.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007). See also In re King Koil Licensing Co., 79 USPQ2d 1048, 1050 (TTAB 2006) (“We therefore disagree with applicant’s essential contention that a general consumer in the United States would not turn to foreign web sites when researching products they may be planning to purchase. Such consumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser.”). Use of “Shanxi sliced noodles” in the reference is discussed more fully, infra. 82 31 TTABVUE 27. 83 31 TTABVUE 26. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 37 A. It should be around the time when I was in college. Q. Is Lanzhou Xian Lamian served right after it was cooked -- it is cooked? A. Yes, as soon as you order your food from the menu then the Lanzhou Xian Lamian will be cooked in the kitchen and then they would serve the noodles. Q. Is it fair to say that the noodles are freshly made before they are cooked at any restaurant? A. Lanzhou Xian Lamian is the noodles that is freshly cooked in the kitchen by the cook and is mixed with the broth, the meat broth, and beef and vegetables and they first handmade those noodles. And I need to explain that as far as Lanzhou Xian Lamian is concerned, the cook has to freshly make the noodles instantly as the customers order that dish.84 Respondent’s stated reasons for adding the character “xian” to the mark were “to indicate that [Respondent’s] products are like fresh hand-pulled noodles, which are a major ingredient of ‘Lanzhou Lamian’ [and to] suggest[] that the products have a long shelf life in a refrigerator.”85 Further, Q. Lin acknowledges that Respondent attempts to draw a connection in the public’s mind between the noodle dishes sold by restaurants under the name Lanzhou Lamian and the packaged noodles sold by Respondent: “As far as the Lanzhou Xian Lamian is concerned we added the word Xian, X-I-A-N with an idea that to let our customer feel that our brand of noodle is 84 31 TTABVUE 10-11. The following exchange also supports a genericness finding: “Q. Can you tell me the history of Lanzhou Xian Lamian?” A. I saw Lanzhou Xian Lamian from, in the restaurant before. Lanzhou Xian Lamian basically was cooked with beef and vegetables in a restaurant. When we ordered a dish like that it was very popular as we just ordered any ordinary dish in a restaurant.” 31 TTABVUE 10. 85 Response No. 14 to interrogatories, 23 TTABVUE 113. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 38 the same -- is the similar Lanzhou Xian Lamian that they had in the restaurant.”86 Also, although Respondent’s noodles are machine-pulled, rather than made fresh by hand, as Respondent notes, “[Lanzhou Xian Lamian] indicates that Registrant’s product is suitable for making traditional ‘Lanzhou Lamian’ which contains beef, hand-pulled noodles and flavored soup.”87 As noted above, the recipe book “200 Noodle Dishes” contains an entry for “Lanzhou hand-pulled noodles” in the table of contents. The exhibit did not include a copy of the page showing the recipe itself. However, the recipe book “400 Noodle Dishes” also has an entry for Lanzhou Hand-pulled Noodles, and a recipe:88 86 31 TTABVUE 97-8. 87 Response No. 4 to interrogatories, 23 TTABVUE 111. 88 22 TTABVUE 19. The Chinese characters shown on this page transliterate to Lanzhou lamian, with the characters for “lan” and “mian” appearing in traditional script. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 39 The record also contains evidence of one third-party manufacturer who uses “Lanzhou Xian Lamian” for Asian noodles. The packaging is depicted below, with “Lanzhou Xian Lamian” (read vertically from right to left) described on the packaging as “Lanzhou Ramen”:89 90 Given the record, we believe that relevant consumers of Respondent’s noodles will understand “Lanzhou Xian Lamian” to refer to a type of noodle dish made with fresh, i.e., “wet,” hand-pulled noodles, and will perceive any package of fresh noodles 89 We take judicial notice of these definitions of “ramen”: From Japanese cookery, “ramen” is defined as “a bowl of clear soup containing noodles, vegetables, and often bits of meat.” At www.dictionary.com/browse/ramen?s=t; accessed April 23, 2017. “Ramen” is an English word borrowed from Japanese but originating from Chinese: “Etymology: < Japanese rāmen (1930 or earlier) < Chinese lāmiàn hand-pulled wheat-flour noodles < lā pull, stretch, lengthen + miàn noodle, with miàn assimilated to Japanese men noodle (1566 or earlier; < the base of Chinese miàn).” Oxford English Dictionary (3d ed. June 2008) (note omitted); at http://www. oed.com/view/Entry/241573?redirectedFrom=ramen&. Accessed June 26, 2017. 90 19 TTABVUE 128, Exhibit 2 to S. Lin testimony. Q. Lin testified that Respondent “asked them to stop selling products with this trademark” and that he thinks they stopped. 31 TTABVUE 34. But during his discovery deposition, when asked: “But you haven’t filed a lawsuit yet, correct?” Q. Lin answered: “Because according to them, they want to do some investigation about this product.” 23 TTABVUE 30. There is no evidence in the record that the third-party manufacturer has ceased sales of this product. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 40 promoted as 兰州鲜拉面 (LANZHOU XIAN LAMIAN), including Respondent’s noodles, as a key ingredient for making fresh Lanzhou Lamian (as a noodle-based soup or simply as a plate of noodles). Accordingly, we find that 兰州鲜拉面 (LANZHOU XIAN LAMIAN) is a generic designation for noodles.91 SHANXI DAOXUE MIAN We now turn to the mark 山西刀削面 (SHANXI DAOXUE MIAN). Based on the evidence of record, we find that the designation is generic for the type of noodles known as “Shanxi knife-cut noodles.” Shanxi is a province in China.92 Petitioner’s witness S. Lin described Shanxi Daoxue Mian as “a local traditional gourmet food” that has “probably been around for a hundred years.”93 He explains that “daoxue” describes a noodle that traditionally is made by “using a blade or a knife to slice the noodles” directly into boiling water,94 and that “Shanxi Daoxue Mian [is] traditionally cut with a knife.”95 Knife-cut noodles are typically wider than other types.96 When asked who invented Shanxi Daoxue 91 The record does not reveal whether the rules of Chinese grammar would place an adjective, such as the word “fresh,” before or after the word or phrase it modifies. However, because “Lanzhou hand-pulled noodles” is a generic term for a type of noodle, adding the word “fresh” before the entire phrase or in-between the words does not change its nature; “fresh Lanzhou hand-pulled noodles” would remain generic, as would “Lanzhou fresh hand-pulled noodles” and “Lanzhou hand-pulled fresh noodles.” 92 19 TTABVUE 34. 93 19 TTABVUE 33, 34. 94 19 TTABVUE 37. 95 Id. 96 31 TTABVUE 12. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 41 Mian, S. Lin replied: “So it’s a local historic traditional gourmet food in the Shanxi province.”97 Growing up in China, S. Lin commonly ate these noodles.98 In 2001 or 2002, he “saw it in other people’s restaurants but not in the restaurant I work[ed] in.”99 By 2004, S. Lin recalled seeing Shanxi Daoxue Mian in Asian markets in the United States.100 He has seen other companies selling Shanxi Daoxue Mian, and named “Shen Mei and Hua Long and other companies,” as sellers of Shanxi Daoxue Mian in the United States.101 Respondent agrees that “Shanxi Daoxue Mian is available in the restaurant”102 and that it is the common name of a traditional noodle dish in China.103 Q. Lin testified that he had heard the term Shanxi Daoxue Mian in restaurants in China before Respondent started using the term,104 and that it is “quite popular in recent years” in China.105 When asked, “Is Daoxue Mian a style of noodle?” Q. Lin replied: “Daoxue Mian or Shanxi Daoxue Mian is referred to among ordinary Chinese people 97 19 TTABVUE 14. 98 19 TTABVUE 15. 99 19 TTABVUE 35. From S. Lin’s testimony: “Q. And whe[re] would you buy it in the restaurants? A. In noodle restaurants in Chinatown. Q. In Chinatown in the United States? A. Yes. So the noodle restaurants, they all have this type of Shanxi Daoxue Mian.” 19 TTABVUE 35. 100 19 TTABVUE 13. 101 19 TTABVUE 14. 102 31 TTABVUE 27. 103 “Q. Is Shanxi Daoxue Mian a traditional noodle dish in China? A. Yes, it is a dish -- traditional dish, yes.” Q. Lin testimony, 31 TTABVUE 12. 104 31 TTABVUE 1009. 105 31 TTABVUE 99. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 42 as the type of noodles that the cook hold it on his hand with a knife and shave the noodles into the wok to be cook[ed] and that’s how people generally understand and refer to.”106 He equivocates somewhat later on, when he asserts that “[b]efore we made it, there were noodle dish called Daoxue Mian, but not Shanxi Daoxue Mian.”107 However, Respondent acknowledges that its “trademark noodle products obviously also make our consumers to recall those Yang Chun Mian and Shanxi Daoxue Mian and Lanzhou Lamian that they had in the restaurant so, they feel close to it.”108 Later he expounds: “The marks also give consumers, typically Chinese Americans, a feeling of home.”109 In his affidavit filed in connection with Petitioner’s summary judgment motion, Q. Lin attested: SHANXI, DAOXUE AND MIAN (‘[山西] 刀削 [面]’ in Chinese) refers to a well-known Chinese noodle dish originated in Shanxi province in China. The noodle dish contains shaved noodles, flavored soup, and fresh vegetables, such as cucumber, leek, mung bean sprouts, and soybean sprouts, in a mild meat-broth with a touch of Shanxi vinegar. The noodles are wide and freshly cut from dough by a knife at the time the dish is being cooked.110 106 31 TTABVUE 1010. 107 31 TTABVUE 1011. 108 31 TTABVUE 96. 109 31 TTABVUE 1126. 110 31 TTABVUE 1120, affidavit paragraph 17, submitted as Exhibit GG to Q. Lin’s testimony. Similar statements are made in Q. Lin’s testimony: “Shanxi Daoxue Mian is also a type of noodles that is provided to the customers in the restaurant and Shanxi Daoxue Mian was the type of dish that is instantly prepared. And there’s a characteristic of this dish which is that the cook stands next to the wok and use a knife to shape the noodles and put them into the wok to cook it. And Shanxi Daoxue Mian contains meat, different vegetables and a lot of vinegars because people from Shanxi . . . like vinegars. There’s a characteristic for the Shanxi Daoxue Mian and the noodle was, the noodle is wider for this type of dish -- for this type of noodle.” 31 TTABVUE 12. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 43 Respondent has sold “wet” Shanxi Daoxue Mian noodles since 2007 and “dry” Shanxi Daoxue Mian noodles since 2015.111 Evidence of third-party use of 山西刀削面 (SHANXI DAOXUE MIAN) shows that Shanxi sliced or “knife-cut” noodles are a category of noodles. S. Lin identified the following third-party package of noodles as “Shanxi Daoxue Mian,”112 and that “this is sold in many Asian supermarkets in the United States”:113 114 As can be seen, the Chinese characters 山西刀削面 (SHANXI DAOXUE MIAN, with “mian” in traditional script as 麵) are displayed along with the English translation “Shanxi Noodles.” 111 31 TTABVUE 22 and 115. 112 19 TTABVUE 38. 113 19 TTABVUE 39. S. Lin could not identify the manufacturer, but confirmed that the product was not made by either Petitioner or Respondent. 114 19 TTABVUE 130, Exhibit 3 to S. Lin testimony. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 44 Respondent’s Notice of Reliance includes pages from a Google search for pictures of 山西刀削面 (SHANXI DAOXUE MIAN), including the following package (“mian” is again displayed in traditional script): 115 An online article from the Austin Chronicle about “Chen’s Noodle House” describes a “unique treat from the Shanxi province of northern China: dao xiao mian, or ‘knife-cut’ noodles,” available not only as a soup but also as “a huge mound of” stir- fried noodles.116 Petitioner attached to its Notice of Reliance excerpts from a third 115 Respondent’s Notice of Reliance, Exhibit M, 32 TTABVUE 51. The manufacturer of these noodles is not identified, but the package does not bear the house mark of either Petitioner (Lam Sheng Kee) or Respondent (Havista). See S. Lin testimony, 19 TTABVUE 9 (identifying Lam Sheng Kee as Petitioner’s house mark); Q. Lin testimony, 31 TTABVUE 984 (identifying Havista as Respondent’s house mark). 116 32 TTABVUE 38 (emphasis in original). At http://www.austinchronicle.com. According to YellowBridge.com, “Xiao” is an accepted transliteration of the Chinese character 削 (XUE). At http://www.yellowbridge.com/chinese/dictionary.php, accessed May 5, 2017. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 45 recipe book, entitled “Noodle Lovers – 250 Noodle Dishes,”117 which includes a recipe for “Shanxi sliced noodles” that calls for “sliced noodles” and other ingredients:118 117 Excerpts from a total of three recipe books were included in the record. 118 Petitioner’s Notice of Reliance Exhibit 7; 22 TTABVUE 25. The Chinese characters used to identify this recipe are 山西刀削麵, that is, “Shanxi Daoxue Mian” (with “mian” in traditional script). Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 46 Webpages from an “Interactive Encyclopedia” at Baike.com discusses the evolution of “hand-rolled” noodles that are made by being sliced with a knife.119 Under the heading “Hand-rolled Noodles – Characteristics,” the text reads: “It is the most common homemade dish for people in Shanxi.”120 The Baike website elsewhere discusses the origins of “Shanxi sliced noodle”: Shanxi sliced noodle is a traditional Shanxi pasta for the Han ethnic group and it is world-widely famous for its unique flavor. It is named for the fact that the noodles are sliced by a knife. … Moreover, there are various seasonings of the sliced noodle (commonly known as ‘toppings’ or mixtures), including tomato sauce, fried meat sauce, mutton soup, golden needle mushroom, fungus and eggs sauce, making it a popular dish among pasta lovers. Shanxi sliced noodle shortlisted as one of the top five famous pastas in China, and other four are Beijing noodles with gravy, Shangdong I-Fu noodle, Henan baked fish noodle, and Sichuan dandan noodle. … Whether in movies, TV shows or books, when it comes to stories about Shanxi, we will always have such a mental image: a skilled chef, with ready dough atop his head, two slicing knifes in his hands, and the sliced noodles are ‘swishing’ away. The ‘flying knife and slicing noodle’ of Shanxi has become a type of performing art showcased in the 2010 Shanghai World Expo.121 119 22 TTABVUE 58, Exhibit 18 (English translation Exhibit 19 at 64). Petitioner identifies the article as “‘Hand-rolled Noodle’ www.baike.com/wiki/手擀面&prd=so_1_doc.” 120 22 TTABVUE 66. 121 22 TTABVUE 84, Exhibit 26 (includes English translation). Petitioner identifies the article as “‘Shanxi Sliced Noodle’ – Chinese article and English Translation http://baike.baidu.com/view/111597.htm Date Last Updated: January 6, 2016.” Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 47 A Wikipedia article relates that “Shanxi sliced noodles are well-known. In China today, there are … Shanxi sliced noodles and other noodle dishes made by chefs from different places.”122 While these articles have not been considered for the truth of the matter asserted therein, they show that consumers have been exposed to the use of 山西刀削面 (SHANXI DAOXUE MIAN) to refer to a category of noodles, those that have been sliced by knife from a hand-rolled noodle block into individual noodles. Accordingly, based on the evidence and testimony of record, we find that 山西刀削面 (SHANXI DAOXUE MIAN) is a generic designation for noodles. Conclusion Having determined that 兰州鲜拉面 (LANZHOU XIAN LAMIAN), 上海阳春面 (SHANGHAI YANGCHUN MIAN), and 山西刀削面 (SHANXI DAOXUE MIAN) are generic for “noodles,” including Asian and Chinese noodles, we find that none of the registrations may be maintained on the Principal or Supplemental Register. Further, with respect to LANZHOU XIAN LAMIAN and SHANGHAI YANGCHUN MIAN, inasmuch as evidence of acquired distinctiveness cannot change the result, we need not consider Respondent’s showing directed to proving acquired distinctiveness of these two terms. See Northland Aluminum, 227 USPQ at 964 (“Having affirmed the Board’s conclusion that BUNDT is a common descriptive name, neither obsolete nor obscure, evidence of secondary meaning cannot 122 22 TTABVUE 74. Cancellation Nos. 92058825, 92058903, 92059010, and 92059339 48 change the result.”); Weiss Noodle Co., 129 USPQ at 414 (“[N]o matter what the market situation may have been as to indication of origin or secondary meaning, the common descriptive name of the product cannot become a trademark owned exclusively by one vendor.”); In re G. D. Searle & Co., 360 F.2d 650, 149 USPQ 619, 624 (CCPA 1966) (“Where it appears from the evidence that registrability of the term is precluded under sections 45 and 2, inquiry under sections 2(e) and 2(f) is not necessary.”). Decision: The petitions to cancel Respondent’s registrations for the marks 兰州鲜拉面 (LANZHOU XIAN LAMIAN), 上海阳春面 (SHANGHAI YANGCHUN MIAN), and 山西刀削面 (SHANXI DAOXUE MIAN) (Cancellation Nos. 92058825, 92059339, and 92058903 respectively), are granted and Registration Nos. 4387485, 4040834, and 4348383 will be cancelled in due course. However, the petition to cancel Respondent’s Reg. No. 4387486 for the mark LAOPUO SHOUGAN MIAN (Cancellation No. 92059010) is denied.