# United States **Court of Appeals**  **for the Federal Circuit**

______________________ ZHENG CAI, DBA TAI CHI GREEN TEA INC., Appellant

v.

DIAMOND HONG, INC., Appellee

______________________

2018

- 1688

______________________ Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 92062714.

______________________

Decided: August 27 , 2018

______________________

Z HENG C AI , Vernon Hills, IL, pro se.

J ONATHAN E. M OSKIN , Foley & Lardner LLP, New York, NY, for appellee. Also represented by D IANE G RACE E LDER , Chicago, IL.

______________________

Before P ROST , Chief Judge, W ALLAC H and H UGHES , Circuit Judges.

W ALLACH , Circuit Judge.ZHENG CAI v. DIAMOND HONG , INC

. 2

Appellant Zheng Cai DBA Tai Chi Green Tea Inc. (“Mr. Cai ”) appeals an opinion of the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“ TTAB ”) cancelling registration of his mark “WU DANG TAI CHI GREEN TEA” due to a likel ihood of confusion with Appellee Diamond Hong, Inc.’s (“Diamond Hong”) registered mark, “TAI CHI ,” pursuant to 15 U.S.C. § 1052(d) (2012). See Diamond Hong, Inc. v. Zheng Cai , Cancellation No

. 92062714, 2018 WL 916315,
at *5–8 (T.T.A.B. Feb. 14, 2018) ; see also 15 U.S.C. § 1052(d) (providing a mark may not be placed on the principal register if it so resembles a mark already regi stered “as to be likely

. . . to cause confusion”)

. We have jurisdiction pursuant to 28 U.S.C. § 12 95(a)( 4)(B) (2012). W e affirm.

D ISCUSSION Diamond Hong petitioned for cancellation of Mr. Cai’s mark based on a likelihood of confusion with its registered TAI CHI mark

. See Appellee’s Supp l . App. 23

. The TTAB found likeli hood of confusion, giving limited consideration to Mr. Cai’s brief ing because it “contraven[ed]” certain provisions of the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)

. Diamond Hong

, 2018 WL 916315, at *3, *5−7. 1

Mr. Cai appeals the TTAB’ s evidentiary ruling excluding evidence in his main brief

, and its finding of likelihood of confusion

. See Appellant’s Br. 2

– 3. W e address each argument in turn.

1 The TTAB also made prerequisite findings on standing and priority of use in Diamond Hong’s favor that are not challenged on appeal. See Diamond Hong

, 2018 WL 916315, at * 4. See generally Appellant’s Br.ZHENG CAI v. DIAMOND HONG , INC

. 3

I. The TTAB’s Evidentiary Ruling

A. Stan dard of Review

We review TTAB evidentiary rulings for abuse of di scretion. Coach Servs

. , Inc. v. Triumph Learning LLC , 668 F.3d 1356, 136 3 (Fed. Cir. 2012) . “We will reverse only if the [TTAB]’s evidentiary ruling was: (1) clearly unre asonable, arbitrary, or fanciful; (2) based on an erroneous conclusi on of law; (3) premised on clearly erroneous findings of fact; or (4) the record contains no evidence on which the [TTAB] could rationally base its decision.” Id

. (internal quotation marks , brackets, and citation omi tted).

B . The TTAB Did Not Abuse Its Di scretion in Excluding Mr. Cai’s Evidence

The TTAB considered the arguments presented in Mr. Cai’s M ain B rief but did not “consider[] the factual asse rtions and ‘figures’ displayed and discussed in [Mr. Cai ’s ] brief, which are not evidence introduced into the trial record.” Diamond Hong

, 2018 WL 916315, at * 3; see Appellee’s Supp l . App. 69 −75 (Mr. Cai ’s Main Brief ) ; see also 37 C.F.R. §§ 2.126(a)(1), 2.128(b) (201 6 ) (setting forth rules for submission of briefs to the TTAB) . The TTAB also did not consider Mr. Cai’s reply brief because the TMBP does not provide for such filing s and gives the TTAB broad discretion in consider ing them

. Diamond Hong

, 2018 WL 916315, at *3 (citing TBMP § 801.02(d) (June 2017) ( “There is no pro vision for filing a reply brief, rebuttal brief, rejoinder brief, etc. by a party in the pos ition of defendant. If a party in the position of defendant files such a brief, it may be stricken, or given no conside ration, by the [TTAB] .”)). The TTAB therefo re stated that Mr. Cai “introduced no evidence.” Id

. Mr. Cai contends that the TTAB improperly excluded evidence submitted in his brief s . Appellant’s Br. 2–3 . We disagree.ZHENG CAI v. DIAMOND HONG , INC

. 4

Although the procedural guidelines in the TBMP do not have the force of law, see TBMP Introduction (explai ning that “[t]he manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or dec isional law and is not binding upon the [TTAB or] its reviewing tribunals”), the TBMP is accorded a degree of defe rence to the extent that it has the “power to pe rsuade,” Christensen v. Harris Cty. , 529 U.S. 576, 58 7 (2000) (internal quotation marks and citation omitted); see id. (describing agency manuals as documents that “lack the force of law

, ” but are still “enti tled to respect” (internal quotation marks and citation omitted) ). Indeed, we have affirmed the TTAB’s determinations, specifically with regard to evidence admission, where they are clearly in line with the language of the TBMP. See, e.g.

, Bishop v. Flou rnoy , 319 F. App’x 897, 899− 900 (Fed. Cir. 2009) ( agreeing with the TTAB that it was not required to consider certain evidence based on TBMP guidelines); In re DSS Env tl. , Inc. , 113 F. App’x 902, 907 (Fed. Cir. 2004) (similar); see also Am. Rice, Inc. v. Dunmore Props. S.A.

, 353 F. App’x 428, 432 (Fed. Cir. 2009) (affirming a TTAB determination based on the TBMP concerning denial of a motion for time to conduct discovery).

The TTAB did not abuse its discretion in determining that Mr. Cai submitted no evid ence

. With respect to Mr. Cai ’s Main Brief, the TBMP provides that evidentiary matters are resolved in accordance with the “Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of th e United States Code, and the rules of practice in trademark cases (i.e., the provisions of Part 2 of Title 37 of the Code of Federal Regulations).” TBMP § 702.02. Mr. Cai’s Main Brief contains numerous assertions of fact. See , e.g. , Appellee’s Suppl. App. 71 (“Our Green Tea is so Unique in the US Market that no Any [sic] Other Green Tea is Comparable to Ours.”) . This information is not evidence under any of the relevant rules, as the TTABZHENG CAI v. DIAMOND HONG , INC

. 5

recognized. See Diamond Hong

, 2018 WL 916315, at * 3 (ci ting Enzo Biochem

, Inc. v. Gen

- Probe Inc. , 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”)).
With respect to his Reply Brief, the plain language of the TBMP states that the TTAB is not required to permit “a party in the position of defendant” to file a reply brief. TBMP § 801.02(d); see Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, L .L.C. , 600 F.3d 1343, 1346 (Fed. Cir. 2010) ( stating that we give the TTAB significant latitude in applying the TBMP when the l anguage therein is

“ permissive ” ). Because Diamond Hong initiated the cancellation proceedings by filing a petition, see Appellee’s Suppl. App. 23, Mr. Cai was in the position of a defen dant, and was therefore not entitled to file a reply brief, see TBMP § 801.02(d). Accordingly, the TTAB did not abuse its discretion in applying the TBMP and excluding Mr. Cai’s submissions

. I I. Likelihood of Confusion

A. Standard of Review and Legal Standard
We review the TTAB’s legal conclusions de novo and its findings of fact for substantial evidence. In re N.C. Lottery , 866 F.3d 1363, 1366 (Fed. Cir. 2017). “Substa ntial evidence is ‘such relevant evidence as a reasonable mind would accept as adequate to support a conclusion.’” Stone Lion Capital Partners, L.P. v. Lion Capital LLP

, 746 F.3d 1317, 1321 (Fed. Cir. 2014) (quoting Consol. Edison Co. of N.Y. v. N.L.R.B. , 305 U.S. 197, 229 (1938)). “Where two different conclusions may be warranted based on the evidence of record, the [TTAB]’s decision to favor one conclusion over the other is the type of decision that must be sustained by this court as supported by substa ntial evidence.” In re Bayer Aktiengesellschaft , 488 F.3d 960, 970 (Fed. Cir. 2007) (citat ion omitted)

.ZHENG CAI v. DIAMOND HONG , INC

. 6

Section 105 2(d) provides that a trademark may be r efused if it
[c] onsists of or comprises a mark which so rese mbles 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) (emphasis added). In Application of E.I. DuPont DeNemours & Co. , our predecessor court articulated thirteen factors to consider when determining likelihood of confusion (“ DuPont factors”). See 476 F.2d 1357, 1361 (CCPA 1973). 2 “Not all of the DuPont factors are relevant to every case, and only factors of significanc e to the particular mark need be considered.” In re Mighty Leaf Tea , 601 F.3d 1342, 1346 (Fed. Cir. 2010) (citation omitted)

. “Likelihood of confusion is a question of law with underlying factual findings made pursuant to the DuPont factors.” Stone Lion Capital Partners , 746 F.3d at 1321 (citation omitted); see Herbko Int’l, Inc. v. Kappa

2 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 o n 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 m ark ; (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. See Application of E.I. DuPont , 476 F. 2 d at 1361.ZHENG CAI v. DIAMOND HONG , INC

. 7

Books, Inc. , 308 F.3d 1156, 1165 (Fed. Cir. 2002) (“[A] showing of actual confusion is not necessary to establish a likelihood of confusion.” (citation omitted)). “This court reviews the [TTAB]’s factual findings on each DuPont factor for substantial evidence, and its legal conclusion of likelihood of confusion de novo.” Stone Lion Capital Partners , 746 F.3d at 1321 (citation s omitted)

. B. The TTAB Did Not Err in Find ing Likelihood of Confusion Between the Two Marks
In its likelihood of confusion analysis, t he TTAB co nsidered the first three DuPont factors, treating the rest as neutral because neither party submitted evidence related to them. Diamond Hong

, 2018 WL 916315, at *5–8 (co nsidering similarity of the marks, similarity and nature of goods described in the marks’ registrations, and similarity of trade channels)

. Mr. Cai argues the TTAB improperly weighed these three DuPont factors to arrive at an in correct conclusion regarding likelihood of confusion

. See Appellant’s Br. 11−19

. We disagree with Mr. Cai

. Substantial evidence supports the TTAB’s findings with respect to each DuPont factor

, and the TTAB did not err as to its ultimate conclusion of likelihood of confusion. We analyze the factor s in the same order as the TTAB : similarity of the nature of the goods, similarity of esta blished trade channels, and similarity of the marks

. See Diamond Hong

, 2018 WL 916315, at *5–8

. With respect to the similarity and nature of the goods, the goods co vered by each mark overlap. Mr. Cai’s WU DANG TAI CHI GREEN TEA mark identifies the good s as “Green tea; Tea; Tea bags. ” Appellee’s Suppl. App. 14 . In turn, among many goods identified in its registration

, Diamond Hong’s TAI CHI mark identifies “tea.” Id . at 15

. Given this plain overlap, the TTAB ’s determination that the “parties’ goods

. . . are identical in part” is supported by substantial evidence. Diamond Hong

, 2018 WL 916315,
at *6.ZHENG CAI v. DIAMOND HONG , INC

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With respect to similarity of the established trade channels through which the goods reach customers

, the TTAB properly followed our case law and “presume[d] that the identical goods move in the same channels of trade and are available to the same c lasses of customers for such goods

— here, general consumers who consume or purchase tea.” Id .; see In re Viterra Inc. , 671 F.3d 1358, 1362 (Fed. Cir. 2012) (“[I] t is well established that, absent restrictions in the application and registration, [identical ] goods and services are presumed to travel in the same channels of trade to the same class of purchas ers .” (inte rnal quotation marks and citation omitted) ). As discussed above, the marks cover identical goods , tea, compare Appellee’s Suppl. App. 14

, with id . at 15

, and therefore this presumption attaches, see In re Vite r ra , 671 F.3d at 1362. Mr. Cai failed to produce evidence to rebut th is presumption. See Appellant’s Br. 16 −19 (making arg uments without citing evidence concerning trade channels)

. With regard to the similarity of the marks the mselves, we have stated the TTAB must examine “ the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation[,] and commercial impression.” In re Viterra , 671 F.3d at 13 62 (internal quotation marks and citation omitted)

. “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 wo uld be likely to assume a conne ction between the parties.” Coach Servs

. , 668 F.3d at 1368 (internal quotation marks and citation omitted)

. “[W]her e . . . the goods at issue are identical, the degree of similarity necessary to support a conclusion of like ly confusion declines.” In re Viterra , 671 F.3d at 136 3 (i nternal quotation marks and citation omitted)

. 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. Specifically, theZHENG CAI v. DIAMOND HONG , INC

. 9

WU DANG TAI CHI GREEN TEA mark is described as follows:
[t] he color(s) green and white is/are claimed as a feature of the mark.

. . . The mark consists of a circle outlined in green, that divi des 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 bot tom of the mark, it has words “ Wu Dang. ”
Appellee’s Suppl. App. 14

. Similarly, t he TAI CHI mark is presented in the following terms: “ [t] he mark consists of a man engaged in a tai chi position atop a yin

- yang sy mbol with the term ‘T ai C hi ’ below the symbol and a Ch inese character on each side of the symbol. ” Id . at 15

. T he fact that color is not claimed as a feature of Diamond Hong’s mark, id

. , 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 ,” Diamond Hong

, 2018 WL 916315, at * 7.

Mr. Cai’s arguments against these findings rehash those he made below and seek to rely on evidence either not admitted by the TTAB or not even submitted to it. See Appellant’s Br. 11 –19. We do not consider e vidence that is not part of the trial record. 15 U.S.C. § 1071(a)(4) (“The United States Court of Appeals for the Federal Circuit shall review the decision from which the appeal is taken on the record before the United States Patent and Trademark Office .” (emphasis added) ). The refore, the TTAB’s findings as to the Du Pont factors are supported by substantial evidence and the TTAB did not err in finding a likelihood of confusion

. C ONCLUSION

We have considered Mr. Cai’s remaining arguments and find them unpersuasive. T he Opinion of the U.S.ZHENG CAI v. DIAMOND HONG , INC

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Patent and Trademark Office’s Trademark Trial and Appeal Board is

AFFIRMED

C OSTS

No costs.