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Incorrect to Eliminate Portions of A Mark and Then Compare

Jun.25.2007

In China Healthways Institute, Inc. v. Wang (No. 2006-1464; June 22, 2007), the Federal Circuit reverses the Trademark Trial and Appeal Board’s denial of Chi Institute’s opposition to the registration of the mark CHI PLUS by Wang for “electric massage apparatus.” Chi Institute makes and sells electric therapeutic massagers under the trademark CHI (Stylized).

Chi Institute filed an opposition on the grounds that there is a likelihood of confusion as the two marks are similar. The Board held that there was no likelihood of confusion even though the goods are legally identical and move in the same channels of trade to the same class of consumers. In so holding, the Board concluded that CHI is a weak component of the marks and is at the least, very highly suggestive, if not merely descriptive when used in connection with the intended goods.

The Court disagrees finding that “the word CHI is a significant component of these marks when viewed in their entirety” and must be given appropriate weight. The Court holds that it is “incorrect to compare marks by eliminating portions thereof and then simply comparing the residue.” The Court concludes that the similarities of the two marks are so strong as to be likely to lead consumers to believe that the products they are purchasing come from the same source.

[http://fedcir.gov/opinions/06-1464.pdf]

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