Zheng Cai DBA Tai Chi Green Tea Inc. appealed an opinion of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) cancelling registration of his mark "WU DANG TAI CHI GREEN TEA" due to a likelihood of confusion with Diamond Hong, Inc.'s registered mark, "TAI CHI," pursuant to 15 U.S.C. § 1052(d) (2012).

The Federal Circuit affirmed the decision, and despite the two marks (shown below) looking substantially different in appearance at first glance, other factors weighed in favor of the cancellation.

Section 1052(d) provides that a trademark may be refused if it consists of or comprises a mark which so resembles a mark registered in the USPTO, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive (15 U.S.C. § 1052(d)).

In Application of E.I. DuPont DeNemours & Co., the Court articulated thirteen factors to consider when determining likelihood of confusion (DuPont factors).  Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.

The thirteen factors are as follows:  (1) similarity of the marks; (2) similarity and nature of goods described in the marks' registrations; (3) similarity of established trade channels; (4) conditions of purchasing; (5) fame of the prior mark; (6) number and nature of similar marks in use on similar goods; (7) nature and extent of actual confusion; (8) length of time and conditions of concurrent use without evidence of actual confusion; (9) variety of goods on which mark is used; (10) market interface between applicant and owner of a prior mark; (11) extent to which applicant has a right to exclude others from use of its mark; (12) extent of potential confusion; and (13) any other established probative fact on effect of use.

Between the two marks, in its likelihood of confusion analysis, the TTAB considered the first three DuPont factors, treating the remainder as neutral because neither party submitted evidence related to them.

Mr. Cai argued that the TTAB improperly weighed these three DuPont factors to arrive at an incorrect conclusion regarding likelihood of confusion. A summary of the analysis of these factors is included below.

1.  Similarity of the nature of the goods

With respect to the similarity and nature of the goods, the goods covered by each mark overlap.  Mr. Cai's WU DANG TAI CHI GREEN TEA mark identifies the goods as "Green tea; Tea; Tea bags."

In turn, among many goods identified in its registration, Diamond Hong's TAI CHI mark identifies "tea."  Given this plain overlap, the TTAB's determination that the parties' goods are identical in part is supported by substantial evidence.

2.  Similarity of established trade channels

With respect to similarity of the established trade channels through which the goods reach customers, the TTAB followed case law and presumed 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.

Since the marks cover identical goods (tea), this presumption attaches.  Mr. Cai failed to produce evidence to rebut this presumption.

3.  Similarity of the marks

With regard to the similarity of the marks themselves, the TTAB must examine the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.

The Federal Circuit noted that 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.

Where the goods at issue are identical, the degree of similarity necessary to support a conclusion of likely confusion declines.

Here, the marks were considered similar by the Federal Circuit, when considered as a whole, because they both invoke a large yin-yang symbol and prominently display the term TAI CHI.

Specifically, the WU DANG TAI CHI GREEN TEA mark to Mr. Cai is described as follows:  the color(s) green and white is/are claimed as a feature of the mark, and 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 mark is reproduced below.

Similarly, the TAI CHI mark of Diamond Hong is presented in the following terms:  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.  The mark is reproduced below.

The Federal Circuit noted that color is not claimed as a feature of Diamond Hong's mark, and this further highlights the likelihood of confusion because, as the TTAB correctly identified, Diamond Hong's mark could be presented in a green-and-white color scheme like Mr. Cai's mark.

The Federal Circuit agreed with the TTAB's findings as to the DuPont factors, and found that the findings were supported by substantial evidence.  Thus, the Federal Circuit affirmed the Opinion of the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board.

Despite the two marks looking quite different, the DuPont factors weighed heavily in factor of cancellation of Mr. Cai's mark since the nature of goods described in the marks' registrations were identical and the established trade channels were identical.

There were other DuPont factors that Mr. Cai could have perhaps argued, however, he encountered errors through submission of evidence, and further briefs by Mr. Cai were not considered.

Cai v. Diamond Hong, Inc. (Fed. Cir. 2018)
Panel: Chief Judge Prost and Circuit Judges Wallach and Hughes
Opinion by Circuit Judge Wallach