Fed Circuit Watch: Dangers of Pro Se Representation – Failure to Understand Procedural Rules

fed circuit watch likelihood of confusion section 2(d) trademark ttab

On August 27, 2018, the Court of Appeals for the Federal Circuit issued a rare trademark ruling, Zheng Cai, dba Tai Chi Green Tea Inc. v. Diamond Hong, Inc.,[1] dealing with the more mundane aspects of proper filing procedures and rules of evidence.  It also served as a reminder of the dangers of USPTO applicants or registrants filing papers in the USPTO proceedings pro se, as the procedural aspects ended badly for the pro se registrant.  The case also illustrates the basics of a likelihood of confusion analysis.

The facts are as follows.

Zheng Cai owns U.S. Trademark Reg. No. 4,114,136, for WU DANG TAI CHI GREEN TEA, in International Class 30 for, namely, green tea.

Source: U.S. Trademark Reg. No. 4,114,136, Mar. 20, 2012, to Zheng Cai (now cancelled)

Diamond Hong, Inc. owns U.S. Trademark Reg. No. 3,966,518, for TAI CHI, in multi-classes: International Class 3 for, namely, cosmetics, skin care preparations, namely, body balm and body oils; International Class 5 for dietary supplements and medicinal herbal extracts; International Class 29 for edible bird’s nest, canned or bottled fruits, and processed vegetables; International Class 30 for processed herbs; and International Class 33 for wine, distilled spirits, and liqueurs.  Diamond Hong petitioned for cancellation of WU DANG TAI CHI GREEN TEA based on likelihood of confusion with its own TAI CHI mark.  Cai represented himself in the cancellation proceeding before the TTAB.  The TTAB did not consider Cai’s briefing, partly because the factual evidence were not in conformity with the TTAB’s own rules (TBMP), and partly because Cai filed a reply brief, which was not allowed by the TBMP.  The TTAB then cancelled TAI CHI.

The Fed Circuit panel, composed of Chief Judge Prost and Judges Wallach and Hughes, with Judge Wallach writing for a unanimous court, affirmed, on both procedural and substantive grounds.

Judge Wallach observed that the TTAB does not allow reply briefs under its rules, and has broad discretion to allow reply briefs in exceptional circumstances (TBMP §801.02(d)).  The TBMP, although not vested with the force of law, is accorded deference as persuasive authority on trademark trial rules and procedures.  As such, the TBMP’s plain language specifically prohibits reply briefs by the defendant (i.e., Zheng Cai).  As such, the TTAB committed no error when it refused to consider Cai’s reply brief.  Further, as to Cai’s factual evidence in his initial brief, the TBMP resolves evidentiary issues in conformity with the federal rules of civil procedure (FRCP) and evidence (FRE), 28 U.S.C., and 37 C.F.R. (TBMP §702.02).  As such, Cai’s factual assertion that “our green tea is unique in the US market that no any [sic] other green tea is comparable to ours” was not evidence under any of the above authorities, and the TTAB did not err when it determined Cai submitted no evidence.[2]

As to the substantive issue of likelihood of confusion, Judge Wallach noted that the TTAB used the proper test to assess likelihood of confusion factors (DuPont factors).[3]  The TTAB considered primarily similarity of marks, similarity of goods, and similarity of trade channels when conducting its analysis.  Judge Wallach noted that the goods – green tea – overlap.  Since the goods overlap, there is a strong likelihood that the class of consumer for green tea goods would also be the same, placing both marks in the same trade channels.  He further determined that there was a similarity between the two marks, although a casual viewing would not necessarily reveal as such.  First, compared as a whole, both WU DANG TAI CHI GREEN TEA and TAI CHI both include the yin-yang symbol and the words “tai chi” prominently displayed within the marks.

Source: U.S. Trademark Reg. No. 3,966,518, May, 24, 2011, to Diamond Hong, Inc. (now cancelled)

Cai’s mark claims the green and white colors, while Diamond Hong’s mark does not claim a specific color (i.e., the mark is black and white).  Judge Wallach correctly determined that the standard black and white color actually highlights the likelihood of confusion, because TAI CHI could be presented in any other color scheme, including as green and white colors.  Based on his analysis, Judge Wallach found no error with the TTAB’s likelihood of confusion analysis.

There is a bit of irony with the result of this case.  TAI CHI’s registration was cancelled on August 27, 2018 (the same day as the Fed Circuit’s opinion issued) for failure to file a declaration under §8 (TMEP 1604.04), one of the required post-registration filings for trademark registrations.  Unfortunately, Diamond Hong was represented by counsel and could not plead it did not properly understand trademark procedures.  Conversely, Diamond Hong could have elected to not pursue continued registration for TAI CHI, and opted for the registration to lapse by not filing the §8 declaration.  If this were the case, it might lead one to believe its cancellation proceeding (which is not entirely inexpensive) was meant to drive a potential competitor out of business.

This case is also dissimilar to the case in the previous posting which also deals with a reply brief.  However, in that case, Ericsson Inc. v. Intellectual Ventures I LLC, the Fed Circuit found the PTAB erred when it failed to consider the petitioner’s further arguments in its reply brief, which was allowed under the patent trial rules.  Taken together, the cases illustrate the need to understand the USPTO’s sometimes Byzantine rules and procedures.  However, in this case, the support by a proper practitioner who understood these rules might have benefited the pro se respondent.

[1] ___F.3d___ (Fed. Cir. 2018), aff’g Diamond Hong, Inc. v. Zheng Cai, Cancellation No. 92062714, 2018 916315 (T.T.A.B. Feb. 14, 2018).

[2] See also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“attorney argument is no substitute for evidence.”).

[3] The thirteen factors are: 1) similarity of the marks; 2) similarity and nature of goods described; 3) similarity of established trade channels; 4) conditions of purchasing; 5) fame of 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 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 probative facts on effect of use.  See Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).