Opposition No. 91/157,392) CHINA HEALTHWAYS INSTITUTE, INC. (doing business as Chi… v. Xiaoming Wang

United States Court of Appeals for the Federal Circuit
2006-1464
(Opposition No. 91/157,392)
CHINA HEALTHWAYS INSTITUTE, INC.
(doing business as Chi Institute),
Appellant,
v.
XIAOMING WANG,
Appellee.
David Z. Ribakoff, Law Offices of David Z. Ribakoff, of Los Angeles, California,
for appellant.
Xiaoming Wang, of Bakersfield, California, pro se.
Appealed from: United States Patent and Trademark Office, Trademark Trial and
Appeal Board

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United States Court of Appeals for the Federal Circuit
2006-1464
(Opposition No. 91/157,392)
CHINA HEALTHWAYS INSTITUTE, INC.
(doing business as Chi Institute),
Appellant,
v.
XIAOMING WANG,
Appellee.
DECIDED: June 22, 2007
Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit
Judge.
NEWMAN, Circuit Judge.
China Healthways Institute, Inc., doing business as Chi Institute, appeals the
decision of the United States Patent and Trademark Office Trademark Trial and Appeal
Board,1 wherein the Board denied Chi Institute's opposition to registration of the trademark
1 China Healthways Institute. Inc. v. Wang, Opposition No. 91157392 (TTAB
April 28, 2006).

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"Chi PLUS" on application of Xiaoming Wang ("Wang"), on the ground that there was no
likelihood of confusion. We reverse the decision of the Board.
BACKGROUND
The determination of likelihood of confusion is a question of law based on underlying
facts. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 671 (Fed. Cir.
1984). Applying the criteria of the Administrative Procedure Act, 5 U.S.C. '706, we give
plenary review to the Board's legal conclusion that confusion is not likely, see In re Int'l
Flavors & Fragrances, Inc., 183 F.3d 1361, 1365 (Fed. Cir. 1999), and review the Board's
findings of fact on the standard of support by substantial evidence. See On-Line Careline
Inc. v. Am. Online Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000) (applying the APA to issues of
likelihood of confusion).
Chi Institute makes and sells electric therapeutic massagers in association with the
trademark CHI, illustrated in the trademark registration as follows:
The registration states first use in commerce in 1993.
Wang applied for registration of the mark CHI PLUS for "electric massage
apparatus," and was accorded constructive use as of the application filing date of July 26,
2002, absent evidence of actual use. The application illustrates the mark as follows:
2006-1464 2

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Chi Institute filed an opposition on the ground that the two marks are so similar, in view of
their use on the same kind of product, that there is a likelihood to cause confusion or
mistake or to deceive. 15 U.S.C. '1052(d) provides:
' 1052. Trademarks registrable on principal register; concurrent
registration
No trademark by which the goods of the applicant may be distinguished from
the goods of others shall be refused registration on the principal register on
account of its nature unless it --
* * * *
(d) Consists of or comprises a mark which so resembles a mark registered
in the Patent and Trademark Office, 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: . . .
The Board found that confusion was not likely, and rejected the opposition. This appeal
followed.
DISCUSSION
The Board found that the goods of applicant and opposer are legally identical and
that they move in the same channels of trade to the same class of consumer. However,
the Board found that "CHI" is a weak component of the marks, and the other components
of the marks adequately distinguish them. In support of the position that the identical use
of "chi" should receive little or no weight, the Board cited dictionary definitions that "chi"
means vital energy and vital force in Chinese thought and medicine:
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
(Fourth Edition):
chi also ch'i or Qi or qi(che) n. The vital force believed in Taoism and
other Chinese thought to be inherent in all things. The unimpeded circulation
of chi and a balance of its negative and positive forms in the body are held to

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2006-1464 4
be essential to good health in traditional Chinese medicine. [Chinese
(Mandarin) qi, air, spirit, energy of life.]
MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY (Eleventh Ed. 2003):
chi [Ch (Beijing) qi, lit., air, breath] vital energy that is held to animate
the body internally and is of central importantance in some systems of
Eastern medical treatment (as acupuncture) and of exercise or self-defense
(as tai chi).
The Board concluded that "chi . . . has a well known meaning among those knowledgeable
about Eastern medical treatments," and is "at least very highly suggestive, if not merely
descriptive, when used in connection with the intended goods." On this basis the Board
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. Thus the Board concentrated its analysis on the difference
between the stylized letter "I" in Chi Institute's mark, and the word "PLUS" in Wang's mark,
and held that the marks are "distinguished by their respective additional matter."
We conclude that the Board erred in its analysis, for the word CHI is a significant
component of these marks when viewed in their entirety. The marks must be compared in
their entirety, at least when the overall commercial impression is reasonably based on the
entirety of the marks. See Herbko Intern., Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165
(Fed. Cir. 2002) ("Turning to the relevant DuPont factors, the 'similarity or dissimilarity of
the marks in their entireties' is a predominant inquiry. This inquiry examines the relevant
features of the marks, including appearance, sound, connotation, and commercial
impression. Although examining the marks in their entireties, the comparison, for rational
reasons, may give more or less weight to a dominant feature of the marks.") (citations
omitted).

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2006-1464 5
The Board erred in declining to give any significant weight to the similarities of the
marks, particularly in light of the identity of the goods, the identity of the intended
consumers, and the identity of the channels of trade. The word CHI has significant
descriptive aspects that raise the likelihood of confusion and weigh against registration of
multiple marks for identical goods. It is incorrect to compare marks by eliminating portions
thereof and then simply comparing the residue. See Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 673 (Fed. Cir. 1984) ("Of paramount interest is not the
descriptive nature of SPICE, but the overall commercial impression derived by viewing the
marks in their entireties . . . . Arguments to the effect that one portion of a mark possesses
no trademark significance leading to a direct comparison between only what remains is an
erroneous approach.") Spice Islands v. Frank Tea & Spice Co., 505 F.2d 1293, 1295
(CCPA 1974); Specialty Brands, 748 F.2d at 672 ("Although applicant disclaimed the word
"spice" apart from SPICE VALLEY as a whole, the marks are viewed in their entireties.")
The word CHI is an integral part of both marks and must be given appropriate weight.
Accepting that the word "chi" has a meaning in Chinese traditional medicine, the
word "chi" does not mean an electric therapeutic massager. Applying the DuPont factors to
the marks viewed in their entirety, the addition of "plus" to a mark already established and
in use in commerce for electric therapeutic massagers is indeed likely to cause confusion or
mistake or to deceive. The similarities of the two marks are so strong as to be likely to lead
customers to believe that the products to which they refer come from the same source.
The word CHI is the major component of both marks, and in both it is set forth in heavy
letters. The fact that in Wang's mark only the first letter, "C," is a capital letter, whereas in
the Institute's mark all of the letters are shown as capitals, is unlikely to suggest different

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2006-1464 6
sources of the product. The addition of the word "PLUS" in Wang's mark is unlikely to
avoid the confusion for "Plus" ordinarily connotes a related superior product, not one from a
different source. And the use of a square dot over the capital "I" in Wang's mark, instead of
the circular dot atop two arms in the Institute's mark, is unlikely to prevent customer
confusion over the source of the products to which these marks pertain.
Chi Institute provided evidence of actual confusion in the marketplace. The Board
declined to consider this evidence, and also declined to consider Wang's purportedly
countervailing evidence because it was not proffered during the assigned testimony period.
Evidence of actual confusion is relevant to determination of likelihood of confusion, and to
the extent that it was properly proffered it should have been considered. DuPont, 476 F.2d
at 1361.
The Board criticized the absence of evidence from Chi Institute of its "market share,"
and criticized the evidence of Chi Institute's use of CHI on its products and in advertising.
The Board gave little weight to China Healthways evidence that it has sold tens of
thousands of electric massagers with the CHI mark, whereas Wang had only recently
entered the market with an electric massager. This too is a relevant factor. See DuPont,
476 F.2d at 1361 ("The market interface between the applicant and the owner of a prior
mark" should be considered). Evidence of large sales volume and length of use is highly
relevant, whatever the market share. See Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 1569 (Fed. Cir. 1983) ("One of [the DuPont] factors is the fame of the prior
mark, as measured by volume of sales, advertising, and length of use.")

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Viewing the marks in their entirety, we conclude that confusion is likely as to the
source of electronic massagers associated with the mark CHI and the mark CHI PLUS.
The decision of the Board is reversed.2
REVERSED
2 Wang states in his brief that a settlement in a district court action bars this
appeal. China Healthways disputes that position, and neither side provides further
exposition. We do not decide this aspect, which in all events appears to raise issues other
than likelihood of confusion, where the Board must consider the public interest as well as
that of the parties.

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