Diamond Hong, Inc.v.Zheng Cai DBA Tai Chi Green Tea Inc.

Trademark Trial and Appeal Board

Feb 14, 2018

No. 92062714 (T.T.A.B. Feb. 14, 2018)

Mailed: February 14, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Diamond Hong, Inc.
v.
Zheng Cai DBA Tai Chi Green Tea Inc
_____

Cancellation No. 92062714
_____

Bing Li of Law Offices of Bing Li, LLC,
for Diamond Hong, Inc.

Zheng Cai, pro se.
_____

Before Zervas, Taylor, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Diamond Hong, Inc. (Petitioner) petitions to cancel Registration No. 4114136 for
the mark WU DANG TAI CHI GREEN TEA and design, shown below

This Opinion Is Not a
Precedent of the TTAB
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(with “TAI CHI GREEN TEA” disclaimed) for “green tea; tea; tea bags” in
International Class 30, owned by Illinois individual Zheng Cai DBA Tai Chi Green
Tea Inc (Respondent).1 The registration includes the following translation statement:
“The English translation of ‘Tai Chi’ in the mark is extremely superior.”
Petitioner asserts priority and a likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), with its mark

registered for, in most relevant part, “processed herbs; processed ginseng used as an
herb; herbal food beverages; royal jelly for food purpose; and tea” in International
Class 30.2 We grant the petition to cancel.

1 Registration No. 4114136 on the Principal Register, issued March 20, 2012; Trademark Act
Section 8 affidavit of continued use accepted April 11, 2017. The description of the mark
states: “The mark consists of a circle outlined in green, that divides to be half green and half
white, with a single dot located at each half with the opposite color; on the top of the mark,
it has words ‘Tai Chi Green Tea’; at the bottom of the mark, it has words ‘Wu Dang’.” The
colors green and white are claimed as a feature of the mark.
2 Registration No. 3966518 on the Principal Register, issued May 24, 2011. The description
of the mark states: “The mark consists of a man engaged in a tai chi position atop a yin-yang
symbol with the term ‘TAI CHI’ below the symbol and a Chinese character on each side of
the symbol.” Color is not claimed as a feature of the mark. The registration includes
statements that the non-Latin characters in the mark “transliterate into ‘Tai Chi’ or Tai Ji,”
and “translate into English as ‘TAI CHI’.”
A combined declaration of use and incontestability under Sections 8 and 15 of the
Trademark Act was submitted on April 17, 2017. On August 14, 2017, the USPTO accepted
the Section 15 portion of the combined affidavit and the specimens submitted for the goods
identified in International Class 30, as well as other goods in Classes 5 and 33. Applicant was
allowed six months to submit specimens for goods identified in two other classes, 3 and 29.
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I. The Party Petitioner
The petition was filed on November 20, 2015 through ESTTA, the Trademark
Trial and Appeal Board Electronic Filing System, in the names of two entities:
Diamond Hong, Inc. and H&C Trading Co. Inc. Together, they are identified as
“Petitioner” or “Petitioners” in the initial pleading and subsequent papers. Each
corporation is the current owner of one of the two registrations pleaded in the Petition
for Cancellation.
USPTO fee records indicate that a fee of $300 was posted as a filing fee. At the
time the petition was filed, the fee for a cancellation was $300 per class, per
petitioner, and the subject registration includes one class. Thus, the payment of $300
was sufficient for one petitioner only.
Although ESTTA permits petitions to be filed by multiple petitioners, the filing
lists “Diamond Hong, Inc. & H&C Trading Co. Inc.” on one line as the name of the
petitioner. Had both parties been separately identified as distinct legal entities and
joint petitioners, the total filing fee would have been $600.
Rule 2.111(c) of the Trademark Rules of Practice in effect when the petition was
filed, 37 C.F.R. § 2.111(c), provided in relevant part as follows:
(1) The petition for cancellation must be accompanied by
the required fee for each party joined as petitioner for each
class in the registration for which cancellation is sought
(see § 2.6).
(2) An otherwise timely petition for cancellation will not be
accepted via ESTTA unless the petition for cancellation is
accompanied by a fee that is sufficient to pay in full for each
named party petitioner to petition for cancellation of the
registration of a mark in each class specified in the petition
for cancellation.
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(3) If an otherwise timely petition for cancellation is
submitted on paper, the following is applicable if less than
all required fees are submitted:
. . .
(iii) If persons are joined as party petitioners, each must
submit a fee for each class for which cancellation is sought.
If the fees submitted are sufficient to pay for one person to
petition for cancellation of the registration in at least one
class but are insufficient for each named party petitioner,
the first-named party will be presumed to be the party
petitioner. Additional parties will be deemed to be party
petitioners only to the extent that the fees submitted are
sufficient to pay the fee due for each party petitioner. . . .
Because Petitioner did not identify two joint petitioners in its ESTTA filing and
submitted a fee sufficient for only one party petitioner, we do not consider the entity
listed second in the petition, H&C Trading Co. Inc., to be a party to this proceeding.3
See Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB
2009); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.1 (TTAB 2009);
TBMP § 308.03 (June 2017) (“Two or more parties may file an opposition, or a petition
for cancellation, jointly. However, the required fee must be submitted for each party
joined as opposer, or petitioner, for each class in the application for which registration
is opposed, or for each class in the registration for which cancellation is sought.”).
II. Procedural Matters and Record
The record comprises the pleadings and, without any action by the parties, the file
of the involved registration. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).

3 In its brief, Petitioner characterizes the entities as “interrelated.” Appeal Brief at 1, 24
TTABVUE 4. They share the same street address, and the trial record includes a declaration
of William Cheung, who states that he is “the principal and president of DIAMOND HONG,
INC. and H & C TRADING CO. INC. (jointly ‘Petitioner’).” 22 TTABVUE 54. Nonetheless,
there is no evidence establishing that they are not two distinct corporations.
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Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Petitioner also made
of record its pleaded Registration No. 3966518 by submitting with its amended
pleading a current copy of information from the USPTO’s Trademark Electronic
Search System (TESS) database records showing the current status and title of the
registration. 15 TTABVUE 21-27. In addition, Petitioner submitted the following
evidence:
• The declaration mentioned supra of William Cheung, Petitioner’s
president, with exhibit, 22 TTABVUE 54-62 (“Cheung Decl.”);
• The declaration of Kenneth Cang Li, an attorney who represented
Petitioner during prosecution of its pleaded registration, with exhibits, 22
TTABVUE 2-53; and
• Plaintiff’s notice of reliance, with exhibits from USPTO records relating to
other applications and registrations owned by Respondent. 23 TTABVUE.
Respondent introduced no evidence.
Each party submitted a main brief, 24-25 TTABVUE, and Petitioner filed a reply
brief, 26 TTABVUE. Respondent also submitted a reply brief, 27 TTABVUE, which
we have given no consideration. TBMP § 801.02(d) (June 2017) (“There is no provision
for filing a reply brief, rebuttal brief, rejoinder brief, etc. by a party in the position of
defendant.”).
Respondent’s main brief is single-spaced, in contravention of Trademark Rules
2.126(a)(1) and 2.128(b), 37 C.F.R. §§ 2.126(a)(1) and 2.128(b). In the Board’s April 8,
2016 order setting aside default judgment in this case, the parties were warned that
single-spaced briefs violate the Trademark Rules, and that “[s]trict compliance with
Trademark Rule 2.126 and all other applicable rules and procedures is required in
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all future filings. Any filing that fails to comply with the Board’s rules may be given
no consideration.” 13 TTABVUE 1 n.1.
Because the text is only seven pages long, well under the 55-page limit even single-
spaced, and aids the Board in comprehending Respondent’s arguments in this
proceeding, we have in this case exercised our discretion to consider Respondent’s
main brief. We have not, however, considered the factual assertions and “figures”
displayed and discussed in Respondent’s brief, which are not evidence introduced into
the trial record. See, e.g., Enzo Biochem Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76
USPQ2d 1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no substitute for
evidence.”).
III. Petitioner’s Standing
Standing is a threshold issue that must be proven by the plaintiff in every
cancellation proceeding. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com
Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Any person who believes it is or will be
damaged by registration of a mark has standing to file a petition to cancel. Trademark
Act Section 14, 15 U.S.C. § 1064.
Our primary reviewing court has enunciated a liberal threshold for determining
standing. “A petitioner is authorized by statute to seek cancellation of a mark where
it has both a real interest in the proceedings as well as a reasonable basis for its belief
of damage.” Empresa Cubana, 111 USPQ2d at 1062 (Fed. Cir. 2014) (quotations
omitted). A “real interest” is a “direct and personal stake” in the outcome of the
proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir.
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1999). A claim of likelihood of confusion that “is not wholly without merit,” including
prior use of a confusingly similar mark, may be sufficient to “establish a reasonable
basis for a belief that one is damaged by the registration sought to be cancelled.”
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). Standing may be established by entry into the record of a petitioner’s pleaded
registration, if it is shown to be valid, subsisting, and owned by the petitioner. See,
e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012).
In this proceeding, Petitioner properly made of record its pleaded Registration
No. 3966518 and showed it to be valid, subsisting, and owned by Petitioner.
Petitioner’s claim of likelihood of confusion based on its ownership of Registration
No. 3966518 is not wholly without merit. We find that Petitioner has established its
standing.
IV. Priority
A party claiming prior use of a mark may petition to cancel a registration on the
basis of such prior use pursuant to Section 14 of the Trademark Act. See Brewski Beer
Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). In a cancellation
proceeding where both the petitioner and respondent are owners of registrations, the
petitioner must prove priority of use. Christian Broad. Network Inc. v. ABS-CBN Int’l,
84 USPQ2d 1560, 1565 (TTAB 2007). To establish priority on its likelihood of
confusion claim under Section 2(d) of the Trademark Act, Petitioner must prove that,
vis-à-vis Respondent, it owns “a mark or trade name previously used in the United
States . . . and not abandoned.” Trademark Act § 2(d).
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Respondent submitted no evidence of his use, but may rely for priority on the filing
date of the application that matured into the subject registration: May 23, 2011.
Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007).
Petitioner submitted testimony that it has used its mark in commerce in association
with tea products continuously since at least as early as October 1999. Cheung Decl.
¶ 8, 22 TTABVUE 56. We find that Petitioner has established its priority of use.
V. Petitioner’s Preclusion Argument
Petitioner contends that the subject registration should be cancelled because three
prior applications filed by Respondent for the marks and for
tea and related goods and services were refused registration due to a likelihood of
confusion with pleaded Registration No. 2449580, owned by H&C Trading Co. Inc.,
and one of the refusals was affirmed by this Board on appeal. Because H&C Trading
is not a party to this proceeding, we need not reach Petitioner’s argument. We note,
nonetheless, that this contention is unavailing. With respect to the two refusals that
were not appealed, “[a] decision by an examining attorney during examination of an
application as to whether or not there is likelihood of confusion with another
registered mark has no preclusive effect.” Super Bakery Inc. v. Benedict, 96 USPQ2d
1134, 1135 n.1 (TTAB 2010). As to the refusal affirmed on ex parte appeal, Petitioner
does not specify what doctrine it invokes, but claim preclusion (res judicata), issue
preclusion (collateral estoppel), and stare decisis do not apply here because neither
the marks nor the parties are the same in this proceeding as in the ex parte appeal.
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VI. Likelihood of Confusion
We proceed to analyze Petitioner’s likelihood of confusion claim on the merits. A
presumption of validity attaches to a trademark registration, and the party seeking
cancellation must rebut this presumption by a preponderance of the evidence. West
Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir.
1994). Section 14(1) of the Trademark Act provides that a cancellation action may be
brought on the ground of likelihood of confusion before a registration is five years old.
The petition before us was filed within five years from the date the subject
registration issued.
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however,
key considerations include the similarities between the marks and the similarities
between the goods or services, the first two du Pont factors. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). We
address the relevant du Pont factors in turn.
A. Similarity of the Goods, Customers, and Channels of Trade
We begin with the second and third du Pont factors, assessing the similarity or
dissimilarity of the parties’ goods and their established, likely-to-continue trade
Cancellation No. 92062714
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channels. We must make our determination regarding the similarity between the
goods based on the goods as they are identified in the registrations, not on any
extrinsic evidence of actual use. See, e.g., In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1749 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). Likelihood of
confusion must be found if there is likely to be confusion with respect to any item
within the identification of goods for a particular class. Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 123 USPQ2d 1744.
The identification of goods in Respondent’s subject registration and Petitioner’s
pleaded registration both include “tea.” The parties’ goods thus are identical in part.
Turning to du Pont factor three, because Respondent’s and Petitioner’s goods are
identical in part, we must presume that the identical goods move in the same
channels of trade and are available to the same classes of customers for such goods –
here, general consumers who consume or purchase tea. See Am. Lebanese Syrian
Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB
2011); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (finding Board entitled to rely on this presumption). The second and third du
Pont factors thus strongly support a finding of a likelihood of confusion.
B. Similarity of the Marks
We next consider the first du Pont factor, the similarity of the parties’ marks. In
a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
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impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). We must assess the
marks as they are set forth in the registrations. See, e.g., Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Where, as here, the marks are used in association with identical goods, the degree
of similarity between the marks necessary to support a determination that confusion
is likely declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330,
102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century
Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Considered as a whole, Petitioner’s mark and Respondent’s mark share strong
similarities in appearance, sound, meaning, and overall commercial impression. With
respect to appearance, both marks incorporate a large yin-yang symbol and, because
color is not claimed as a feature of Petitioner’s mark, it could be presented in a green-
and-white color scheme like Respondent’s mark. See Viterra, 101 USPQ2d at 1909.
Both marks also make prominent use of the identical term TAI CHI, which are the
only words in Petitioner’s mark and are reinforced by the Chinese characters, which
translate into English as “TAI CHI.” Under the doctrine of legal equivalents, the
significance of the literal term TAI CHI also is strengthened by the figurative image
Cancellation No. 92062714
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in Petitioner’s mark who is, as per the description of the mark, “a man engaged in a
tai chi position.” See Squirrel Brand Co. v. Green Gables Inv. Co., 223 USPQ 154, 155-
56 (TTAB 1984); Clover Farm Stores Corp. v. James G. Gill Co., 142 USPQ 233, 234
(TTAB 1964). The marks thus convey similar meanings.
There are differences; Respondent’s mark does not include a human figure but
does comprise the additional wording “GREEN TEA” and “WU DANG,” which
distinguishes the marks somewhat, particularly aurally. However, because “green
tea” is generic in association with Respondent’s identified goods, which include
“green tea,” consumers are likely to accord that phrase less weight in distinguishing
the parties’ goods. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997). The term WU DANG in Respondent’s mark is likely to be viewed by
consumers as designating a variation or brand extension of Petitioner’s mark pointing
to a common source. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010) (affirming Board decision that ML likely to be perceived as a
shortened version of ML MARK LEES, and noting that “the presence of an additional
term in the mark does not necessarily eliminate the likelihood of confusion if some
terms are identical”).
For all of these reasons, we find the marks to be similar in appearance, meaning,
and overall commercial impression when considered as a whole. The first du Pont
factor weighs in favor of a finding that confusion is likely, particularly considering
that the parties’ marks are used in conjunction with goods that are identical in part,
that is, tea.
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VII. Conclusion
We have found that the parties’ marks are similar, and that the goods, customers,
and channels of trade are identical in part. These factors weigh in favor of a
conclusion that confusion is likely. There is no evidence pertaining to the remaining
du Pont factors, which we treat as neutral. Considering the record evidence as a
whole, we find that Petitioner has carried its burden to establish by a preponderance
of the evidence that Respondent’s mark is likely to cause consumer confusion with
Petitioner’s prior used and registered mark in association with tea.
Decision: The petition to cancel Registration No. 4114136 is granted.