Zheng Cai (“Registrant”) filed a notice of appeal before the Court of Appeals for the Federal Circuit (“Federal Circuit”) on March 12, 2018 (Case No. 2018-1688), seeking review of the Board’s final decision in Diamond Hong, Inc. v. Zheng Cai DBA Tai Chi Green Tea Inc. (Cancellation No. 92062714). In that case, the Board sustained Diamond Hong, Inc.’s (“Petitioner”) petition to cancel Registrant’s TAI CHI GREEN GEA WU DANG & Design mark shown below for “green tea; tea; tea bags,” on the ground of likelihood of confusion with Petitioner’s registered mark TAI CHI & Design shown below for “processed herbs; processed ginseng used as an herb; herbal food beverages; royal jelly for food purpose; and tea.”

The Board held that Petitioner established priority of use of its mark dating back to 1999.  The Board observed that “in a cancellation proceeding where both the petitioner and respondent are owners of registrations, the petitioner must prove priority of use.” Citing Christian Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1565 (TTAB 2007).  Registrant did not present any evidence of prior use of its mark, and instead relied on the May 26, 2011 filing date of its underlying application. With respect to the goods, the Board found that the identification of goods in the Registrant’s registration and Petitioner’s pleaded registration both included tea. Here, the parties’ goods were considered identical in part for purpose of a likelihood of confusion.  Where the goods are identical, the Board presumed that the such goods move in the same channels of trade and are available to the same classes of consumers, in this case general consumers who consume or purchase tea. Thus, the Board found that both the second and third du Pont factors favored Petitioner. The Board next considered the first du Pont factor, namely, the similarity of the parties’ marks in their entirties.  As a whole, the Board concluded, Petitioner’s and Registrant’s marks share strong similarities in appearance, sound, meaning, and overall commercial impression.  According to the Board, both marks “incorporate a large yin-yang symbol.  Because color was not claimed as part of Petitioner’s registered mark, the Board noted that it could be presented in a green-and-white color scheme like Registrant’s mark.  Further, the Board noted that both marks make prominent use of the identical term TAI CHI, which are the only works in Petitioner’s mark and reinforced by the Chinese characters that also mean “tai chi.”  There are differences between the marks, as the Board acknowledged the terms “GREEN TEA” and “WU DANG” in Registrant’s mark.  However, the Board found that “green tea” is generic in association with Registrant’s goods, and thus consumers are likely to accord less weight in distinguishing the parties marks.  Moreover, the Board concluded that “WU DANG” is likely to be viewed by consumers as a variation or brand extension of Petitioner’s mark. Based on the similarities of the marks, identical goods, and the same customers and channels of trade, the Board sustained the petition for cancellation of Registrant’s mark. Registrant’s appeal to the Federal Circuit is pending.