The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision to cancel a registration after the TTAB refused to consider the registrant’s reply brief and the evidence included in the registrant’s main brief. Zheng Cai, d/b/a Tai Chi Green Tea Inc. v. Diamond Hong, Inc., Case No. 18-1688 (Fed. Cir. Aug. 27, 2018) (Wallach, J). 

Diamond Hong petitioned to cancel Zheng Cai’s (d/b/a Tai Chi Green Tea) registration for “WU DANG TAI CHI GREEN TEA & Design” based on a likelihood of confusion with Diamond Hong’s registration for “TAI CHI & Design” (both shown below). Both registrations covered “tea,” among other things. The TTAB granted the petition to cancel the registration, citing certain TTAB Manual of Practice (TBMP) provisions as support for its decision not to consider Cai’s reply brief or the fact statements included in Cai’s main brief. Consequently, the TTAB stated, “[Cai] introduced no evidence.” 

Cai appealed the TTAB’s finding on likelihood of confusion and its decision to exclude the evidence in his main brief. 

The Federal Circuit agreed with the TTAB that the numerous assertions of fact in Cai’s brief (e.g., “Our Green Tea is so Unique in the US Market that no Any [sic] Other Green Tea is Comparable to Ours”) could not properly be considered evidence “under any of the relevant rules,” such as the Federal Rules of Evidence, the Federal Rules of Civil Procedure or the US Code, which the TBMP states should dictate evidentiary matters. Furthermore, the Court concluded that the TTAB was within its discretion in deciding not to consider Cai’s reply brief, as the TBMP does not require it, and “[a]lthough the procedural guidelines in the TBMP do not have the force of law . . . the TBMP is accorded a degree of deference to the extent that it has the power to persuade.”

Additionally, the Federal Circuit affirmed the TTAB findings on likelihood of confusion. The Court only considered three likelihood of confusion factors—the similarity of the goods, the similarity of the trade channels and the similarity of the marks—since neither party submitted evidence relative to the other factors. In this case, the Court concluded that substantial evidence supported the finding that the goods were identical in part as both covered “tea.” Likewise, the Court found that the TTAB properly presumed that the goods traveled in identical trade channels and to similar consumers, since the goods were identical and Cai failed to produce any evidence in rebuttal of that presumption. Finally, the Court agreed that the third factor—similarity of the marks—also weighed in favor of a likelihood of confusion, since both marks “invoke a large yin-yang symbol and prominently display the term TAI CHI.”