Zheng Cai

Trademark Trial and Appeal Board

Sep 30, 2008

No. 78821249 (T.T.A.B. Sep. 30, 2008)

Mailed: September 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zheng Cai
________

Serial No. 78821249
_______

Zheng Cai, pro se.

James W. MacFarlane1, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Hairston, Zervas and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Zheng Cai has filed an application to register on the
Principal Register the mark TAI CHI GREEN TEA and design,
shown below,

for goods ultimately identified as “Woolong tea, Black tea;
beverages made of Woolong tea and Black tea; Green tea,

1 The application was assigned to the current examining attorney
for consideration of the request for reconsideration and to write
the brief.

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 78821249
2
beverages made of green tea” in International Class 30.2
“GREEN TEA” and the non-Latin characters that mean “GREEN
TEA” have been disclaimed.
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark is likely to be confused
with the mark in U.S. Registration No. 2449580, TAI CHI and
design, shown below,

2 Serial No. 78821249, filed February 23, 2006, and alleging a
bona fide intention to use the mark in commerce on woolong and
black teas and beverages, and July 18, 2005 as the date of first
use of the mark anywhere and in commerce on green tea and green
tea beverage. [We note that the wording “Based on Intent to Use”
and “Based on Use In Commerce” is included in the identification
of goods. However, for purposes of clarity, we have omitted it
from the recitation above.] The application also contains the
following description, color, translation and transliteration
statements: “The mark consists of an image adopted from the Tai
Chi graph, Taijitu, but the black part of the Tai Chi graph is
changed to green. The image looks like two drops of water, one
is up and one is down, and there are two tiny dots in each part
of the two sides. The color green appears on the right side of
the Tai Chi graph and the color white appears on the left side of
the graph. The tiny dot on the left side of the graph is at the
top of that portion of the graph and it is in green. The tiny
dot on the right side of the graph is at the bottom of that
portion of the graph and it is in white. Surrounding the top
portion of the circle formed by the Tai Chi graph are the words
‘Tai Chi Green Tea’ in green and at the bottom of the circle are
the words Tai Chi Green Tea in green again, but this time the
words are written in Chinese characters.”; “The colors green and
white are claimed as a feature of the mark.”; The foreign wording
in the mark translates into English as Tai Chi Green Tea.”; and
“The non-Latin characters in the mark transliterate to “Tai Chee
Lyu Cha.”

Ser No. 78821249
3

for “herbal food supplements; and food supplements
consisting of ginseng and/or royal jelly, namely ginseng
extractum and ginseng royal jelly” in International Class
5; and “herbal teas; herbal food beverages” in
International Class 30.3
When the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
December 6, 2007, the examining attorney denied the request
for reconsideration and, on December 15, 2007, this appeal
was resumed. Briefs were filed by both applicant and the
examining attorney. For the reasons discussed below, we
affirm the refusal to register.
We initially note that inasmuch as both applicant and
the examining attorney focused their discussion of the
relatedness of the goods on applicant’s recited goods vis-
à-vis the herbal teas and herbal food beverages identified
in the cited registration, we will do the same.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

3 Registration No. 2449580, issued May 8, 2001, Section 8
Affidavit accepted, Section 15 Affidavit acknowledged.

Ser No. 78821249
4
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first consider whether applicant’s “woolong tea;
black tea; beverages made of woolong tea and black tea;
green tea, [and] beverages made of green tea” and
registrant’s “herbal teas; [and] herbal food beverages” are
related. In analyzing the relatedness of these goods, it
is not necessary that the goods of applicant and the
registrant be similar or even competitive to support a
finding of likelihood of confusion. It is sufficient that
the respective goods are related in some manner and/or that
the circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
conditions which could, because of the marks used
therewith, give rise to a mistaken belief that they
Ser No. 78821249
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originate from or are in some way associated with the same
source. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The examining attorneys have made of record twenty
third-party registrations to establish the relatedness of
the goods. These use-based registrations show that each
entity adopted a single mark for woolong, black and/or
green teas and beverages, on the one hand, and herbal teas
and herbal food beverages, on the other. Third-party
registrations that individually cover different items and
that are based on use in commerce serve to suggest that the
listed goods and services are of a type that may emanate
from a single source. See In re Mucky Duck Mustard Co., 6
USPQ2d at 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
These registrations include:
Registration No. 3044179 for “black tea and green tea”
and “herb tea for food purposes and herbal tea for food
purposes”;

Ser No. 78821249
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Registration No. 3024481 for inter alia “black tea and
green tea” and “herb tea for food purposes and herbal
tea for food purposes”;

Registration No. 3050641 for, inter alia, “black tea
and green tea” and “herb tea and herbal teal”;

Registration No. 3116863 for, inter alia, “black tea
and green tea” and “herbal tea”; and

Registration No. 3094553 for, inter alia, “black tea
and green tea” and “herb tea and herbal tea”;

Registration No. 3180831 for, inter alia, “black tea
and green tea” and “herb tea and herbal tea”;

Registration No. 3183823 for, inter alia, “black tea
and green tea” and “herb tea and herbal tea”;

Registration No. 2857720 for, inter alia, “black tea”
and “herb and herbal tea”;

Registration No. 3330791 for, inter alia, “green tea”
and “herbal tea”; and

Registration No. 3320523 for, inter alia, “black tea
and green tea” and “herb tea and herbal tea.”4

The third-party registrations suggest that black,
green and herbal teas emanate from the same source.
Accordingly we find that the goods are commercially related
such that, if identified by similar marks, confusion as to
source is likely.
Applicant has advanced several arguments in an attempt
to distinguish his goods from those of the registrant and

4 The other registrations of record are: Registration Nos.
3260259, 3183821, 3336887, 3167015, 3309640, 3304641, 3255810,
3307348, and 3310012. We also note that we have not relied on
Registration No. 2494288 because it was cancelled on July 4, 2008
pursuant to Section 8 of the Trademark Act.
Ser No. 78821249
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we address each one in turn. First, applicant questions
the probative value of the third-party registrations to
demonstrate the relatedness of the goods. We find this
argument unavailing. As pointed out by the examining
attorney, “this type of evidence has long been accepted by
the Board as proof … that goods may come from the same
source. See, e.g., In re Mucky Duck Mustard Co., Inc., 6
USPQ2d at 1470. The more registrations that incorporate
the goods at issue, the stronger the inference that
consumers may perceive the goods as emanating from the same
source.” (Br. at unnumbered p. 10). The nineteen
registrations of record clearly support the inference that
the goods are related.
Next, applicant contends that his goods and
registrant’s goods are “totally different and mutually
exclusive”; applicant’s teas are derived from the Camellia
Sinensis plant, the source of all tea, whereas registrant’s
herbal tea, although identified as tea, is instead an
herbal infusion of leaves, roots, seeds, or flowers of
other plants except the Camellia Sinensis plant. (Reply
br. p. 18). We reiterate that the goods of the parties
need not be identical to find a likelihood of confusion;
they need only be related in a manner which leads to a
Ser No. 78821249
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mistaken belief that they emanate from the same source. In
re Mucky Duck Mustard Co., supra.
Applicant also argues that FDA regulations requiring
herbal teas to be labeled with certain information obviates
the likelihood of confusion. Registrant’s disclosure on
the product packaging of the precise kinds of herbs in his
herbal teas does not obviate consumer confusion as to the
source of the respective goods. The question to be
determined in this case is not whether the goods are likely
to be confused but rather whether there is a likelihood of
confusion as to the source of the goods because of the
marks used thereon. In re Rexal Inc., 223 USPQ 830, 831
(TTAB 1984).
Finally, to the extent that applicant is arguing that
the examining attorney inappropriately claims that his
identified goods are within registrant’s logical zone of
expansion, we have not relied on this contention by the
examining attorney as it is unnecessary to our resolution
of this appeal. See In re 1st USA Realty Professionals
Inc., 84 USPQ2d 1581, 1854 (TTAB 2007) (“[W]e look [in an
ex parte proceeding] at the question of the relatedness of
the [goods or] services identified in applicant's
application and those in the cited registration based on
whether consumers are likely to believe that the [goods or]
Ser No. 78821249
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services emanate from a single source, rather than whether
the Examining Attorney has shown that the registrant herein
has or is likely to expand its particular business to
include the [goods or] services of applicant.”)
Further, in the absence of any limitations in the
identification of goods as to channels of trade and classes
of purchasers in the application and the cited
registration, we must presume that the goods will be
offered in all normal channels of trade for such goods,
e.g., grocery stores, gourmet shops and tea shops, and will
be purchased by the normal classes of purchasers, including
ordinary consumers. In re Elbaum, 211 USPQ 639 (TTAB
1981).
In view of the above, the du Pont factors of the
relatedness of the goods, channels of trade and classes of
purchasers favor a finding of likelihood of confusion.
Turning then to a consideration of the marks, we must
determine whether applicant’s mark and registrant’s mark,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). Although we must compare the marks in their
entireties, one feature of a mark may be more significant
Ser No. 78821249
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than another and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“There
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.”). The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impressions that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general, rather
than a specific, impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark is and the cited mark is .
Applicant essentially maintains that the marks are
strikingly different in appearance, sound and meaning, and
accordingly the overall commercial impressions differ.
Applicant particularly argues that the design portion of
Ser No. 78821249
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his mark, as well as the color green, are more likely to be
impressed upon a purchaser’s memory. Applicant also argues
that “the true meaning of ‘Tai Chi’ in Tai Chi Green Tea,
which is an adjective and means ‘ultimate supreme’, or ‘the
extremely high.’ Also, the attorney fails to notice that
‘Tai Chi’ is a direct translation of Chinese word [sic].”
(Br. at p. 2).
The examining attorney, conversely, contends that the
marks are highly similar in appearance, sound and meaning
thus creating similar commercial impressions. More
specifically, he argues that the marks are similar in
commercial impression because they share the identical,
dominant wording “TAI CHI.”
We find applicant’s mark substantially similar to the
cited mark in terms of appearance, sound, connotation and
commercial impression. As regards the appearance of the
marks, both marks are similar as to the shared wording “Tai
Chi,” and both include similar designs featuring what the
record shows to be the “Tai Chi Graph,” “which represents
not only the definition of Tai Chi, but also a concept of
yin-yang.” (Appendix I to Applicant’s Response to the
Refusal of Registration, filed December 19, 2006)5. The

5 Citing to an article found at:
http://www.etc.cmu.edu/projects/mastermotion/TaiChi.htm.
Ser No. 78821249
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minor differences in the designs do not serve to
distinguish the marks. As regards applicant’s mark,
contrary to applicant’s assertion, the disclaimed term
“GREEN TEA” does not distinguish applicant’s mark from the
cited mark. Rather it clearly describes the type of tea
sold by applicant, and it is not source signifying. See In
re National Data Corp., 224 USPQ at 751 (“That a particular
feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted
rationale for giving less weight to a portion of the
mark.”). Nor are the Chinese characters source-identifying
inasmuch as they translate to the English words TAI CHI
GREEN TEA and, accordingly, would be analyzed in the same
manner as the English words. We also do not find the color
green to be a distinguishing feature. Since the cited
registration includes no claim of color, we must consider
the possibility that the registrant’s mark may be rendered
in the color green. TMEP § 807.14(d)(i)(5th ed. 2007) (and
the authority cited therein).
As regards the sound of the marks, both are similar
insofar as the wording “Tia Chi” is concerned. The
presence of the disclaimed words “Green Tea” in applicant’s
mark does nothing to distinguish the marks in any
Ser No. 78821249
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significant way. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ 1531, 1534 (Fed. Cir. 1997).
As to the connotation of the marks, applicant
maintains that there is no likelihood of confusion because
the wording “tai chi” is an adjective, meaning “the Supreme
Ultimate,” “the very top,” and “[o]nce it is placed in
front of any noun, it became [sic] descriptive.” (Reply
br. at p. 6). In addition, though acknowledging that the
term is also an abbreviation of “Tai Chi Chaun,” a physical
exercise popular in China, applicant contends that
consumers will know that its mark means “The Supreme
Ultimate Green Tea.”
Applicant supported this position with, inter alia, a
definition taken from the online version of the Oxford
English Dictionary, which defines “Tai Chi” as follows
(emphasis supplied):
T’ai Chi Also Tai Chi, t’ai chi, etc. [ad.
Chinese taifi, f. tai extreme+ji limit] 1. In
Toaism and Neo=Confusionism, the Supreme
Ultimate (See quota. 1955). Also, the symbol
that represents this.” 2. In full T’ai Chi
Ch’uan, a Chinese martial art, believed to have
been devised by a Taoist priest in the Sung
dynasty (960-1279), promoting meditative as
well as physical proficiency.

By this, we presume that applicant is arguing that the
literal portion of its mark connotes a top of the line
green tea, while the cited mark connotes a Chinese martial
Ser No. 78821249
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arts exercise. Even if we assume that the marks had
somewhat different connotations, the differences would not
outweigh the similarity in appearance and sound.
To the extent that applicant also argues that the
wording “tai chi” is laudatory and suggestive of something
ultimate and/or supreme, and therefore marks that
incorporate the term are entitled to only a limited scope
of protection, we find such argument unpersuasive. Again
even assuming that the wording “tai chi” has some laudatory
suggestiveness, even suggestive marks are deserving of
protection, in particular here where the goods are closely
related and the marks are so similar.6 King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
109 (CCPA 1974); and Hollister Incorporated v. IdentAPet,
Inc., 193 USPQ 439 (TTAB 1976). In any case, applicant did
not establish that purchasers would attach the laudatory

6 Moreover, during prosecution, applicant argued that the
wording “TAI CHI” is a “big” word in Chinese and in Chinese
culture meaning “best” or “top,” and suggested that the Board
require registrant to immediately disclaim the wording “TAI CHI,”
as no one should be allowed to register the word for its
exclusive use. To the extent that applicant is asserting that
the TAI CHI portion of registrant’s mark is descriptive, such a
claim is an impermissible collateral attack on the cited
registration and will not be entertained in this appeal. In re
Dixie Restaurants, 41 USPQ2d at 1534; and In re Peebles Inc., 23
USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP §207.01(d)(iv)(5th
ed. 2007).

Ser No. 78821249
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significance rather than martial arts significance to the
wording “tai chi.”
As noted previously, the marks are similar in
appearance, having the wording TAI CHI and a variation of
the “Tai Chi Graph” in common. As such, purchasers of
herbal teas and herbal food beverages who are familiar with
registrant’s mark may view applicant’s mark as a variant
thereof, and that such mark identifies a new line of teas
sponsored by or approved by registrant. While differences
admittedly exist between the marks when viewed on the basis
of a side-by-side comparison, for reasons discussed above,
we find that they are substantially similar in appearance,
sound and connotation and convey the same overall
commercial impression. Accordingly, the du Pont factor of
the similarity of the marks favors a finding of likelihood
of confusion.
After careful consideration of the arguments and all
of the evidence of record, even if those arguments and
evidence have not been specifically referenced in this
decision, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark and the cited mark, their contemporaneous use on
related goods is likely to cause confusion as to the source
or sponsorship of such goods.
Ser No. 78821249
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Last, to the extent that any of the arguments made by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.