ZHENG CAI, DBA TAI CHI GREEN TEA INC., Appellant v. DIAMOND HONG, INC., Appellee
2018-1688
Decided: August 27, 2018
The Trademark Trial and Appeal Board (“TTAB”) canceled the registration of mark “WU DANG TAI CHI GREEN TEA” due to a likelihood of confusion pursuant to 15 U.S.C. § 1052(d) with Diamond Hong, Inc.’s (“Diamond Hong”) registered mark, “TAI CHI.” Zheng Cai (“Mr. Cai”), appearing pro se, appealed the TTAB’s exclusion of evidence from his main brief and its finding of likelihood of confusion. The Federal Circuit affirmed.
The Court held that the “TTAB did not abuse its discretion in determining that Mr. Cai submitted no evidence.” The TTAB disregarded factual assertions in Mr. Cai’s brief, which the Court stated were “not evidence under any of the relevant rules”.
Mr. Cai, in the position of a defendant, filed a reply brief that the TTAB did not consider. The Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) states that the TTAB is not required to permit “a party in the position of defendant” to file a reply brief. The Court indicated that the TTAB has “significant latitude in applying the TBMP when the language therein is ‘permissive,’” and affirmed the TTAB’s action.
In its likelihood of confusion analysis, the TTAB considered the first three DuPont factors, treating the rest as neutral because neither party submitted evidence related to them. The factors considered were the similarity of the marks, similarity and nature of goods described in the marks’ registrations, and similarity of trade channels.
The Court agreed with the TTAB that the goods overlap and are similar. Mr. Cai’s WU DANG TAI CHI GREEN TEA registration identified the goods as, inter alia, “Green tea; Tea; Tea bags.” Diamond Hong’s TAI CHI registration identifies the goods as “tea.”
Federal Circuit case law “presumes that the identical goods move in the same channels of trade.” The Court stated that “Mr. Cai failed to produce evidence to rebut this presumption.”
The Court stated that the TTAB must examine the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The Court noted that where “the goods at issue are identical, the degree of similarity necessary to support a conclusion of likely confusion declines.”
The Court stated that the TTAB must examine the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The Court noted that where “the goods at issue are identical, the degree of similarity necessary to support a conclusion of likely confusion declines.”
Considering the marks in their entirety, the Court found them to be similar “because they both invoke a large yin-yang symbol and prominently display the term TAI CHI.” The Court indicated that the “TTAB’s findings as to the DuPont factors are supported by substantial evidence and the TTAB did not err in finding a likelihood of confusion.”
Read more: Federal Bar member attorneys may access the full case summary by Barnwell Whaley attorney Bill Killough in the September issue of Federal Circuit Case Digest.
Additionally, you may read the full opinion here.
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B.C. “Bill” Killough is a registered patent attorney with Barnwell Whaley law firm with offices in Charleston, SC and Wilmington, NC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.
