Diamond Hong owns the Tai Chi mark shown above on the left and Tai Chi Green Tea is has the mark on the right. Are these confusingly similar if both used in the hot beverage market?
The PTAB sided with cancellation petitioner and senior mark holder Diamond Hong and the Federal Circuit affirms here. Zheng Cai, DBA Tai Chi Green Tea Inc. v. Diamond Hong, Inc. (Fed. Cir. 2018).
A difficulty here is that Zheng Cai represented himself pro se and did not exactly follow either TTAB or Federal Circuit procedure. In particular, Cai presented a set of factual assertions and images in his brief, but did not follow the particular brief filing rules. Because of the procedural failure, the TTAB refused to consider the materials presented — finding that Mr. Cai “introduced no evidence.” As Manafort can attest — it is difficult to win a case without presenting any evidence. On appeal, the Federal Circuit affirmed the TTAB procedure with two main points:
- The TTAB has authority to manage its own procedure; and
- Mr. Cai’s Main Brief contains numerous assertions of fact without actually introducint the supporting evidence — i.e., no evidence.
In a cancellation proceeding, the moving party still has the burden to make its case. Here, the Federal Circuit affirmed the confusing similarity (Applying the DuPont factors). The court writes:
The marks are similar, when considered as a whole, because they both invoke a large yin-yang symbol and prominently display the term TAI CHI.
Cancellation affirmed.
= = = = =
Interesting backstory: On the same day this case was released supporting Diamond Hong’s Mark (No. 3966518), the USPTO also cancelled the mark. “Registration cancelled because registrant did not file an acceptable declaration under Section 8.”
One of the marks the petitioner used to demand Cancellation of wu dang Tai Chi Green was canceled on August 23,2018. That means the basis for petition to cancel wu dang Tai Chi Green is gone and all the claims the petitioner made to demand the Cancellation of Wu Dang Tai Chi Green Tea appear to be fraudulent. But the circuit Court made their decision on August 27,2018 to affirm the ttab decision. It appears the Court did not look at any documents needed for them to make their decision.
Any opinions?
Anyone knows Chinese will know how laughable the decision is.
A new law or statute is needed to govern the registration, cancelation and disputes of trademarks involving foreign languages or foreign significant cultural symbols. It requires judges, examing attorneys to seek opinions of experts on that foreign language and culture the marks involved.
Ignorance of the foreign language and culture the marks involved guarantees the wrong decisions.
Anyone who is interested in trademark law can go through the documents of this case and know how ridiculous the decision by ttab and circuit Court is. Many good dessertations can be written on this case
For instance, the petitioner committed fraud in his testimony in 22 ttabvue, 04/24/2017. Since none in the Board of ttab know Chinese, the blatant Fraud of the petitioner was not caught.
In the petitioner’s filing on 04/24/2017 (22 TTABVUE, P-Testimony).
Petitioner claims that (#8, P-Testimony ) :
“Petitioner is the owner or registrant of a number of foreign trademark registrations or
applications for TAI CHI, its Chinese equivalent 太極 and a Yin-Yang symbol marks for tea
goods. True copies of Registration Certificates for “TAI CHI” and the Yin-Yang symbol marks
issued by the Chinese Trademark Office are collectively submitted herein as Exhibit C “.
Petitioner claims that his marks are registered in China for ‘tea goods’, that is under international category 30, which is the category that defendant claims and the petitioner’s base to demand the Cancellation of the defendant’s mark. Petitioner claims he has proof of that his mark is registered in China under ‘tea goods’ in Exhibit C.
But in Exhibit C, his registration does not have anything to do with tea goods (international category 30) , it is only for ” beer,… Fruit drinks （果茶）…. ” and etc. They are only registered under international categories 32 and 33.
He deceives the board for he knew none of the Board know Chinese. one knows Chinese will immediately notice this fraud.
According to rules 2.20, fraud under oath will have serious consequences. But the Board is ignorant of Chinese, they see nothing here.
The question is:
If the judges are ignorant of foreign language or the meaning of the words in foreign language or the foreign culture symbol appear in the marks in dispute, how could they conclude the meaning of the words in the marks or the total impression of the marks are the same or different ?
There we need a new statute here.
This Case may be brought to the Supreme Court of the United States.
All those who are interested in trade mark law should study this case and follow it to Supreme Court of the United States.
This is ridiculous. Anyone with eyes and basic knowledge about the meaning of Tai chi and the symbol represents Tai Chi will know how laughable the decision is. That is due to the complete ignorance of the judges about the true meaning and the meaning of the symbol
Represents Tai Chi. This case will be brought to the Supreme Court of the United States. Anyone who is interested in trade mark law should follow it and judge themselves link to ttabvue.uspto.gov
DARN!
There goes my splendiferous plan to market “Tai Chi Chai Tea“.
(try saying that fast five times)
+1
Marks are no way confusing. Tai Chi and yin-yang symbol are generic.
A man standing there on the yin-yang symbol in a Tai chi stance is not confusing with Green Tea and Wu Dang.
Ridiculous outcome.
Probably even worse as they are acting like putting two generic tools of trademarks together makes it not only distinctive but swallows all marks with the two generic tools.
What. A. Joke.
That’s not the issue. The issue is whether an ordinary consumer seeing the marks on two boxes of tea would wonder if the same producer was behind both.
You could answer this with a survey of 100 consumers. Just show them the marks and ask them whether it is more likely or not that if those marks appeared on different boxes of the same product would the producer of both be expected to be the same.
I’d expect some relationship is all I’m saying. Maybe the other 99 people wouldn’t. [shrugs]. But I’m guessing a lot of them would.
I know what the test is. I do a little bit of Trademark work.
Neither TAI CHI nor the Yin Yang symbol is generic in the trademark sense with respect to tea, which is the relevant question. As far as I am aware, neither is even descriptive. GREEN TEA, however, is generic, and, without actually looking at the case, I am assuming, disclaimed. I have no idea what WU DANG means, but IMO the TTAB certainly got it right that TAI CHI and the Yin Yang are the dominant portions of both marks.
Trademark law is nothing like patent law.
Seems like an easy case. I know I’d be confused about the source.
Note that it’s not the similarity of the “marks” that is confusing but the identity of the phrase “Tai Chi” within the marks. That phrase has nothing to do with green tea outside of this commercial context so the assumption is that the same company is using the arbitrarily chosen phrase to mark its product. It’d be the same result if two different chocolate chip cookie companies used the phrase “Jolly Jitterbug” on their cookie boxes.
Except Tai Chi has a well known meaning and “Jolly Jitterbug” does not.
Jolly Jitterbug is what it is: a happy dance.
Tai Chi is an exercise.
As labeling “concepts” for a consumable product, there’s no difference between them.
The fact that TAI CHI has a well-known meaning is a non sequitor in this context because it doesn’t describe tea. APPLE has a well-known meaning, but it is an inherently distinctive mark when applied to computers.
I think that Tai Chi and the Yin Yang symbol are describing the mental state the tea is supposed to give you.
I don’t know. I admit TM litigation was many, many years ago for me.
Still do you think that they are saying this Tai Chi tea? It seems like they are saying that. The brand name seems to be Wu Dang.
I think I would to look at this closer. Still my radar tells me there is something wrong with this decision.
[I think that Tai Chi and the Yin Yang symbol are describing the mental state the tea is supposed to give you.]
Maybe, but that would really only make the mark suggestive rather than arbitrary, and either way it’s inherently distinctive. The senior applicant actually overcame an OA where the examining attorney required a disclaimer of TAI CHI as merely descriptive. In the context of a cancellation or opposition, the mark is whatever the registration says the mark is.
Frankly, the substantive holding of this case isn’t interesting or surprising, really just the procedural aspects. No idea why Dennis is blogging about a TTAB (incorrectly referred to as PTAB) appeal.
You are probably right.
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