CHI mark for massagers rubs Federal Circuit up the wrong way

In China Healthways Institute Inc v Wang (Case 06-1464 (Fed Cir, June 22 2007)), the US Court of Appeals for the Federal Circuit has reversed a decision of the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) and found that two stylized marks containing the word 'chi' (which means 'vital energy' and 'vital force' in Chinese) are likely to be confused when applied to the same goods.

China Healthways Institute Inc makes and sells electric therapeutic massagers under the mark CHI, for which it owns a federal trademark registration. It opposed Xiaoming Wang's application to register the mark CHI PLUS for "electric massage apparatus". It was undisputed that China Healthways had priority and that the parties' goods are virtually identical. Relying on the known meaning of the word 'chi' (ie, vital energy or force), the TTAB 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's decision, 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 that 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 volumes, 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.

Han (Jason) Yu, McDermott Will & Emery, Los Angeles