always plead a first use date: court struggles with famous foreign marks doctrine without it

Teng v. Tao, No. 2:25-cv-05360-WLH-AJR, 2026 WL 2055494 (C.D. Cal. Jun. 5, 2026)

Teng sued Tao for various trademark-related claims. Teng is allegedly the chairman of Plaintiff Heilongjiang Tang Huo Kung Fu Catering Co., a Chinese company that operates restaurant businesses abroad. The Tang Huo Kung Fu brand allegedly operates widely in Asia, including in China and South Korea and has received various awards and media recognition, under these marks:

Teng alleged that overseas reputation has created recognition of their marks among certain U.S. consumer communities, particularly in Asian communities in the United States, such as in Los Angeles (specifically Los Angeles’ Koreatown) and Berkeley, California, but alleged no first use in US commerce, though it did allege that, when Tao filed to register at the USPTO in 2019, it had already existed for 11 years with nearly 300 restaurants in China and 150 restaurants in South Korea, among other locations. Teng did not allege first use in the US or anything more than an application to register in the US, which was abandoned.

Defendants operate at least one restaurant in California using the name “TANG HUO KUNG FU SPICY HOT POT.” Defendant Tao Jin secured a registration for its word + design mark in July 2020.

The court concluded that plaintiffs didn’t, and apparently couldn’t, allege a valid ownership interest in the mark at issue. They claimed that the famous mark exception applied under Grupo Gigante (whose logic I don’t think survives Abitron, but the Fourth Circuit’s Belmora workaround probably does).

Under Grupo Gigante, “where the mark has not before been used in the American market, the court must be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in the relevant American market is familiar with the foreign mark.” “At this stage, the Court is persuaded that Plaintiffs have sufficiently alleged the necessary level of consumer recognition necessary to invoke the famous mark exception to the territoriality principle with respect to the market in which Defendants use the mark.” (That is, Berkeley and LA’s Koreatown.) But they needed to replead to actually allege a date of first use (which was also key to their cybersquatting claim).

False association: §43(a) doesn’t explicitly require ownership (citing Blinded Veterans). Thus plaintiffs sufficiently pled a claim. (Query: suppose they’re the junior user, full stop—if ownership isn’t required for a §43(a) claim, why can’t big entrants use reverse confusion to eliminate small senior users? Is your answer “causation”? Is your answer that this wouldn’t work because the small senior user could assert a counterclaim? But, if there’s no registration, how would a §43(a) counterclaim be resolved except by using ownership priority rules? Abandoning a separate concept of unfair competition has caused many such puzzles.)

Anyway, plaintiffs sufficiently pled confusion, e.g., a post on Red Note that a customer was disappointed in the quality of defendants’ food, apparently attributing the failure to Tang Huo Kung Fu.

Puzzlingly, the court held that the inability to make a trademark infringement claim also meant there was no actionable statement under California’s FAL, despite the survival of the false designation of origin claim.

Cancellation of registration: Fraud requires pleading with particularity. “Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application.” “Plaintiffs’ insufficient allegations of foreign fame and diaspora recognition do not establish U.S. use or ownership. Without a plausible allegation that Plaintiffs possessed superior U.S. rights at the time of the trademark application, Plaintiffs cannot demonstrate that any USPTO statement about ownership or others’ rights was false, much less knowingly false.” (Plaintiffs’ counsel really needs to use Belmora to replead.) Nor did they allege facts demonstrating that any specific USPTO submission was actually false, material or made with an intent to deceive.

They also sought cancellation on §2(a) false affiliation grounds. Under Belmora, “[t]o determine if a petitioner falls within the protected zone of interests, we note that § 14(3) pertains to the same conduct targeted by § 43(a) false association actions—using marks so as to misrepresent the source of goods.” That worked here for services, too, at the pleading stage.