It Is Incorrect to Compare Marks by Eliminating Portions and Simply Comparing the Residue
June 22, 2007
Last Month at the Federal Circuit - July 2007
Judges: Newman (author), Friedman, Rader
[Appealed from: TTAB]
In China Healthways Institute, Inc. v. Wang, No. 06-1464 (Fed. Cir. June 22, 2007), the Federal Circuit reversed the TTAB’s decision to deny China Healthways Institute, Inc.’s (“Chi Institute”) opposition to registration of Xiaoming Wang’s mark CHI PLUS, holding that there is likelihood of confusion between Wang’s mark CHI PLUS and Chi Institute’s mark CHI & Design.
Wang applied to register the mark CHI PLUS for an electric massage apparatus. Chi Institute opposed registration of the mark based on its prior use of the mark CHI & Design in connection with its electric therapeutic massagers. Although noting that the goods covered by the parties’ marks were “legally identical,” the TTAB found no likelihood of confusion. Relying on dictionary definitions of the term “chi” as meaning vital energy and vital force, the TTAB found “CHI” to be “highly suggestive, if not merely descriptive,” when used in connection with massage devices. Slip op. at 4. On this basis, the TTAB reasoned that the common CHI component of the marks is a relatively weak contributor to trademark status, and analyzed likelihood of confusion based on the differences, not the similarities, of the marks. The TTAB concluded that the additional wording “PLUS” in Wang’s mark and the design element in Chi Institute’s mark were sufficient to avoid a likelihood of confusion.
In reversing the TTAB’s decision, the Federal Circuit noted that the word CHI is a significant component of the marks when viewed in their entirety and has significant descriptive aspects that raise a likelihood of confusion and weigh against registration of multiple marks for identical goods. The Court stated that “[i]t is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue.” Id. at 5. The word CHI, reasoned the Court, is an integral part of both marks and must be given appropriate weight.
The Court noted that the word “chi” does not mean an electric massage apparatus and that when the marks are viewed in their entirety, the addition of “PLUS” to a mark already established and in use in commerce is indeed likely to cause confusion. The Court found it significant that Chi Institute had sold tens of thousands of electric massagers under its CHI & Design mark, while Wang had only recently entered the market. Accordingly, the Court reversed the TTAB’s decision, holding that confusion is likely as to the source of electronic massagers associated with the mark CHI & Design and the mark CHI PLUS.