Addressing whether confusion is likely between two stylized marks containing the word "chi" (which means vital energy and vital force in Chinese thought and medicine), the U.S. Court of Appeals for the Federal Circuit reversed the decision of the Trademark Trial and Appeal Board (the Board) and found that confusion is indeed likely. China Healthways Institute, Inc. (d.b.a. Chi Institute) v. Xiaoming Wang, Case No. 06-1464 (Fed. Cir., June 22, 2007) (Newman, J.).
China Healthways makes and sells electric therapeutic massagers under the mark CHI and owns a federal trademark registration for the same. Xiaoming Wang applied to register the mark CHI PLUS for "electric massage apparatus" and the application was opposed by China Healthways. It is undisputed that China Healthways has priority and that the parties’ goods are virtually identical. Relying on the known meaning of the word "chi," the Board concluded that "CHI" is at least highly suggestive, if not merely descriptive, when used on electric massagers and, therefore, a weak component of the marks. The Board went on to deny China Healthways’ opposition distinguishing the marks based on their other components—specifically, the stylized letter "I" in China Healthways’ mark, and the additional word "PLUS" in Wang’s mark. China Healthways appealed.
The Federal Circuit reversed the Board, concluding that "CHI" is a significant component of the marks when viewed in their entirety and must be given appropriate weight. While accepting its meaning in Chinese traditional medicine, the Court observed, the word "chi" does not mean an electric therapeutic massager. The Court also declined to view the differences between the marks as sufficient to avoid confusion and was critical of the fact that the Board dissected the marks by eliminating portions thereof and then simply compared the residue. The Court questioned such methodology, particularly in light of the identity of the goods, the identity of the intended consumers and the identity of the channels of trade. In addition, citing the DuPont factors, the Court found that the Board should have considered the evidence of actual confusion presented by China Healthways, as well as the fact that China Healthways has sold tens of thousands of electric massagers with the CHI mark, whereas Wang had only recently entered the market. Evidence of large sales volume, the Court noted, is relevant because one of the DuPont factors is the fame of the prior mark, as measured by volume of sales, advertising and length of use.
Practice Note: When goods in question are identical, a lesser degree of similarity between marks is required for finding likelihood of confusion. Also, marks should be compared in their entirety; dissecting marks is generally not the correct method.
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