Federal Circuit: less distinctive portions of a mark still considered in likelihood of confusionJune 22, 2007

In a case decided today, the Federal Circuit reversed the Trademark Trial and Appeal Board's denial of an opposition to registration of a trademark. Specifically, the court rejected the Board's finding that there was no likelihood of confusion because the Board improperly considered an element present in both marks a "weak component" of the competing marks and that other components of the marks adequately distinguish them, instead of comparing the marks as a whole. More details of China Healthways Institute, Inc. v. Wang after the jump.The appellant, China Healthways Institute (d/b/a Chi Institute), makes and sells electric therapeutic massagers using the registered mark depicted below:

Chi mark

The registration claims first use of the mark in 1993. The appellee, Wang, applied for registration of the mark CHI PLUS depicted below for "electric massage apparatus" in 2002:

Chi plus mark The Board, finding no likelihood of confusion, noted that "Chi" is "at least very highly suggestive, if not merely descriptive" in connection with the claimed goods, and as a result, based its analysis predominantly on the differences between the "non-Chi" portions of the marks.

The Federal Circuit disagreed, finding that the word CHI was a significant component of the marks when viewed in their entirety. The court noted that marks must be compared in their entirety when the overall commercial impression is based on the entirety of the marks, even if portions of the marks are considered less distinctive. The court felt the Board also gave too little consideration to the similarity of the goods, the intended consumers, and the channels of trade.Finally, the court determined that the Board erred in declining to consider evidence of actual confusion in the marketplace. Combined with the evidence of fame of Chi Institute's mark, as measured by sales volume and length of use, the court concluded that confusion was likely, and reversed the Board's decision to allow the Chi Plus mark to register.To read the full decision in China Healthways Institute, Inc. v. Wang, click here.

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