An Evidentiary Ruling and a Finding of Likelihood of Confusion Against a Pro Se Litigant’s Trademark

| October 15, 2018

Zheng Cai, DBA Tai Chi Green Tea Inc., v. Diamond Hong, Inc.

August 27, 2018

Before Prost, Wallach and Hughes.  Opinion by Wallach.


The United States Court of Appeals for the Federal Circuit (“CAFC”) reviewed the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board’s (“TTAB”) opinion of the cancellation of Zheng Cai, doing business as Tai Chi Green Tea Inc.’s (“Mr. Cai”, pro se appellant) trademark, petitioned by Diamond Hong, Inc. (“Diamond Hong”).  The court reviewed the three prongs of “DuPont factor” test and found the TTAB’s opinion regarding likelihood of confusion was correct.  Mr. Cai did not rebut the argument and the CAFC affirmed the TTAB’s opinion.

Japanese Summary


TTABでは、Diamond Hong社がTai Chi Green Tea Inc.社としてビジネスを行っているCai Zheng氏の所有する商標登録の取り消しを申立てた。TTABは申立てを認め、商標取り消し決定を下した。Cai氏は本人訴訟で取り消し決定を不服とし、CAFCに控訴した。Cai氏は当該商標はDiamond Hong社の商標との混同のおそれはないと反論したが、CAFCはDuPont factorsテストの3項目について再検討し、TTABの決定を支持した。



This case was appealed from the USPTO’s TTAB.  Diamond Hong petitioned to cancel Mr. Cai’s trademark “WU DANG TAI CHI GREEN TEA” arguing that the trademark has a likelihood of confusion with the Diamond Hong’s registered mark “TAI CHI” under 15 U.S.C. § 1052(d) (2012).[1]  The TTAB’s finding was in Diamond Hong’s favor.[2]  Then, Mr. Cai, pro se appellant, appealed to the CAFC regarding the TTAB’s evidentiary ruling and finding of likelihood confusion.[3]

The TTAB’s Evidentiary Ruling

The CAFC reviewed the evidentiary ruling for abuse of discretion and found that the TTAB was correctly excluding Mr. Cai’s evidence because it correctly followed the Trademark Trial and Appeal Board Manual of Procedure (the TBMP).  The TBMP itself does not have “the force of law,” however, under TBMP § 702.02, it follows the “Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the rules of practice in trademark cases.”  The evidence Mr. Cai submitted to the TTAB was not evidence under any of the above rules.  Therefore, the TTAB correctly applied the TBMP and excluded Mr. Cai’s evidence.

Likelihood of Confusion and “DuPont Factors”

Likelihood of confusion is one of the major factors of trademark infringement.  As the CAFC mentioned in this case, under 15 U.S.C. § 1052(d), a trademark cannot be registered if it “consists of or comprises a mark which so resembles 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.”  (Emphasis added.)

In In re E.I. DuPont DeNemours & Co,[4] the CAFC established a thirteen “DuPont factors” test to determine whether there is likelihood confusion between the accused mark and the registered mark.

Following the case, the CAFC developed case law for the “DuPont factors” test.  Precedential cases established that the court needs to consider that “only factors of significance to [a] particular mark need be considered”[5] and “[l]ikelihood of confusion is a question of law with underlying factual findings made pursuant to the DuPont factors.”[6]  Evidence of actual confusion is “not necessary to establish a likelihood of confusion.”[7]

In this case, the TTAB considered three factors from the “DuPont factors”:  “(1) similarity of the marks, (2) similarity and nature of goods described in the marks’ registrations, (3) similarity of established trade channels”[8] between Mr. Cai’s WU DANG TAI CHI GREEN TEA mark and Diamond Hong’s TAI CHI mark. The CAFC reviewed the application.

DuPont Factors” Test 1:  Similarity of the Marks

The similarity or dissimilarity of the marks must be determined by “whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.”[9]  “[T]he degree of similarity necessary to support a conclusion of likely confusion declines”[10] when the goods identification are the same.

Diamond Hong’s mark was registered with the USPTO twice (Nos. 2,449,580 on May 8, 2001 and 3,966,518 on May 24, 2011) and described as “[t]he mark consists of a man engaged in a tai chi position atop a yin-yang symbol with the term ‘Tai Chi’ below the symbol and a Chinese character on each side of the symbol.”[11]  













Mr. Cai’s mark was registered with the USPTO (No. 4,114,136 on March 20, 2012) and described as “[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 divides 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 bottom of the mark, it has words ‘Wu Dang.’”








The CAFC stated that “[t]he marks are similar, when considered as a whole, because they both invoke a large yin-yang symbol and prominently display the term TAI CHI.” (Emphasis added.)

Regarding the color of the mark, the TTAB’s opinion stated that Diamond Hong’s mark “could be presented in a green and white color scheme like [Mr. Cai’s] mark.”[12]  Mr. Cai’s argued this finding, but did not provide any evidence as “part of the trial record.”  Under 15 U.S.C. § 1071(a)(4), “the [CAFC] shall review the decision from which the appeal is taken on the record before the [USPTO].”  Therefore, the CAFC did not consider evidence Mr. Cai tried to present.  The CAFC supported the TTAB’s opinion.

DuPont Factors” Test 2:  Similarity and Nature of Goods Described in the Marks’ Registrations

Diamond Hong’s registered mark identifies “tea” and its International Trademark Classifications are 3, 5, 29, 30 and 33.  Mr. Cai’s mark identifies the goods as “Green tea; Tea; Tea bags”[13] and its International Trademark Classification was 30.  The CAFC determined the goods identification is “plain overlap” and therefore supported the TTAB’s determination.

DuPont Factors” Test 3:  Similarity of Established Trade Channels

In In re Viterra Inc,[14] the CAFC confirmed that when there are no “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 purchasers.”

In this case, Mr. Cai was required to rebut this presumption because of the similarity of goods.  However, he failed to do so.  The CAFC agreed with the TTAB’s decision on this prong of the “DuPont factors” test.

Therefore, the CAFC considered Mr. Cai’s argument, but affirmed the TTAB’s opinion.


  • It is extremely difficult to defend and argue pro se when the adverse party has counsel. If the appellant had counsel, the attorney could introduce appellant’s evidence more effectively.  The possibility also exists that counsel could negotiate settlement with the opponent.
  • A likelihood of confusion determination is made on a case-by-case basis and therefore, it is not always easy to predict the outcome of any given case. Searching registered trademarks to consider the “DuPont factors” test with counsel before submitting a trademark application would be helpful to avoid litigation.

Full Opinion


[1] Diamond Hong, Inc. v. Zheng Cai, Cancellation No. 92062714, 2018 WL 916315, at *5–8 (T.T.A.B. Feb. 14, 2018)


[3] Appellant’s Br. 2–3.

[4] In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).

[5] In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010).

[6] Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014).

[7] Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002).

[8] The other “DuPont factors” are: “(4) conditions of purchasing; (5) fame of the 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 a 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 established probative fact on effect of use.”

[9] Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012).

[10]  In re Viterra Inc., 671 F.3d 1358, 1363 (Fed. Cir. 2012).

[11] Appellee’s Suppl. App. 15.

[12] Diamond Hong, 2018 WL 916315, at *7.

[13] Appellee’s Suppl. App. 14, with id. at 15.

[14] In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012)




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