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December 15, 2018 Vol. 73 No. 21 Back to Bulletin Main Page

UNITED STATES: Federal Circuit Confirms TTAB’s Exclusion of Evidence Is Proper and Affirms Cancellation

On August 27, 2018, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB’s) decision to cancel respondent Zheng Cai’s registration for WU DANG TAI CHI GREEN TEA & Design for “green tea; tea; tea bags,” after confirming likelihood of confusion with petitioner Diamond Hong, Inc.’s registration for TAI CHI & Design covering, in part, “tea.” The court also made a precedential ruling that the TTAB had properly excluded the evidence in the respondent’s main brief and also properly rejected his reply brief. Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367 (Fed. Cir. 2018).


First, the court addressed whether the TTAB had abused its discretion in excluding the respondent’s evidence.
During the cancellation proceeding, the pro se respondent did not introduce evidence within the testimony period. Afterward, he submitted a main brief, then a reply brief, but both of which were single spaced and thus violated the rules of the Trademark Trial and Appeal Board Manual of Procedure (TBMP). The TTAB nonetheless considered the arguments in the respondent’s main brief but refused to consider the factual assertions and “figures” as they were not evidence introduced into the trial record per the TBMP. The TTAB also rejected the entire reply brief because the TBMP does not provide for such filing.

The court agreed with the TTAB’s approach. The court held that, while the procedural guidelines in the TBMP do not have the force of law, it is accorded a degree of deference to the extent that it has the “power to persuade.” Per the TBMP, evidentiary matters should be governed by the Federal Rules of Evidence, the Federal Rules of Civil Procedure, Title 28 of the United States Code, and the rules of practice in trademark cases. Here, the TTAB correctly determined that the numerous assertions of fact in the respondent’s main brief, such as “Our Green Tea is so Unique in the US Market that no Any Other Green Tea is Comparable to Ours” cannot be properly considered as evidence under any relevant laws referenced by the TBMP. The TTAB also properly rejected the reply brief because, per the TBMP, it is not required to permit “a party in the position of defendant”—such as the respondent in this case—to file a reply brief. The court therefore concluded that the TTAB had not abused its discretion in excluding the evidence.

The court also confirmed that the TTAB’s finding of likelihood of confusion was supported by substantial evidence. The court considered the first three DuPont factors in its analysis: (1) similarity of the goods; (2) similarity of established trade channels; and (3) similarity of the marks. It agreed with the TTAB that the parties’ goods were identical in part as they both include “tea.” It also found that the TTAB correctly presumed that the goods traveled in the same trade channels to the same classes of customers, and that the respondent failed to produce evidence to rebut this presumption. Moreover, the marks were found to be similar when examined in their entireties because they both invoked a large yin-yang symbol and prominently displayed the term “tai chi.”

 In view of the above, the court affirmed to cancel the respondent’s registration.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 

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