Fed Circuit rules on yin-yang trademark appeal

 

The US Court of Appeals for the Federal Circuit has upheld the cancellation of a trademark for green tea on the grounds that it is likely to be confused with an earlier-registered mark for ‘Tai Chi’.

 

Circuit Judge Evan Wallach delivered the court’s decision on Monday, August 27.

 

Diamond Hong, an importer of Asian food and drink, owns the ‘Tai Chi’ mark in international classes 5 and 30 for teas and food supplements. The black and white figurative mark was registered in 2001, and features a large yin-yang symbol with the words ‘Tai Chi’ around it.

 

The alcohol importer petitioned the Trademark Trial and Appeal Board (TTAB) for cancellation of ‘Wu Dang Tai Chi Green Tea’, a figurative trademark owned by an individual called Zheng Cai, doing business as Tai Chi Green Tea.

 

Cai’s mark also covers teas, in international class 30.

 

The green and white mark was registered in 2012 and features the words ‘Wu Dang Tai Chi Green Tea’ around a large yin-yang symbol.

 

In February, the TTAB cancelled Cai’s mark on the grounds that it is likely to be confused with the earlier-registered ‘Tai Chi’ mark.

 

On appeal, Cai argued that the TTAB improperly excluded his evidence.

 

In response, the TTAB said it considered the arguments presented in Cai’s main brief but not the factual assertions, as these were not considered evidence under the relevant guidelines.

 

The TTAB said it did not consider Cai’s subsequent reply brief because the TTAB’s Manual of Procedure does not provide for such filings.

 

The board said it therefore came to the conclusion that Cai “introduced no evidence”.

 

At the Federal Circuit, Wallach said that the TTAB’s evidential determinations were “clearly in line” with the language of the manual, which says “that a party in the position of a defendant” is not permitted to file a reply brief.

 

Diamond Hong instigated the cancellation proceedings, so Cai was in the position of the defendant, he explained.

 

The Federal Circuit also confirmed that certain assertions in Cai’s brief, such as “our green tea is so unique in the US market that no any [sic] other green tea is comparable to ours”, do not count as evidence.

 

Wallach held that the TTAB did not abuse its discretion in determining that Cai submitted no evidence.

 

In addition, the Federal Circuit said that the TTAB did not err in finding that a likelihood of confusion exists between Cai’s mark and Diamond Hong’s earlier-registered mark.

 

The marks “both invoke a large yin-yang symbol and prominently display the term Tai Chi”, the court said.

 

Wallach said that the TTAB correctly determined that the goods covered by the marks are similar, and noted that they reach the same customers through similar trade channels.

 

He said that Cai’s arguments are “unpersuasive”, and affirmed the TTAB’s decision.