China Healthways Institute, Inc.

Trademark Trial and Appeal Board

Feb 25, 2005

No. 76361091 (T.T.A.B. Feb. 25, 2005)

Mailed: February 25, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re China Healthways Institute, Inc. dba CHI Institute
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Serial No. 76361091
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Darren S. Rimer of Rimer & Mathewson LLP for China Healthways
Institute, Inc. dba CHI Institute.

Verna Beth Ririe, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hanak, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

China Healthways Institute, Inc. dba CHI Institute has
appealed from the final refusal of the trademark examining
attorney to register the mark shown below for the following goods
(as amended): "Newsletters in the field of health, human
wellness and vitality, but specifically excluding the field of
hospice care," in International Class 16.1

1 Application Serial No. 76361091, filed January 22, 2002, based on an
allegation of first use and first use in commerce in May 1993.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76361091
2

The application includes an English translation of "Chi" as
"vital energy force thought to be inherent in all things."
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the mark CHI for the goods and services identified below as to be
likely to cause confusion.2
Newsletters in the field of hospice care for children.
Class 16.

Charitable fund raising. Class 36.

Development and dissemination of educational materials of
others in the field of hospice care for children. Class 41.

When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E. I. du Pont de Nemours & Co.,

Applicant originally applied for registration in two additional classes
of goods, Class 10 for "electric massage apparatus for therapeutic use,
and accessories thereofor" (as amended), and Class 11 for "air
purifying units and ionizers for commercial and domestic use." Class
10 was subsequently divided out of this application (on March 4, 2003).
It is clear from the record that the refusal to register in the present
application pertains to Class 16 only.

2 Registration No. 2023750 issued December 17, 1996; Section 8 and 15
affidavits accepted and acknowledged, respectively.
Serial No. 76361091
3
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular
attention to the factors most relevant to the case at hand,
including the similarity of the marks and the similarity of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to the marks, applicant's mark, CHI and
design, and registrant's mark, CHI, in typed form, are identical
in sound. The marks are also identical in meaning. Applicant
states that CHI in English means "vital energy force thought to
be inherent in all things." That same meaning applies to
registrant's mark. The design element of applicant's mark
results only in a modest visual difference in the marks which is
not sufficient to differentiate one mark from another and does
not change the meaning or commercial impression both marks
create. If anything, the design element serves to reinforce the
impression of "energy" conveyed by the term "CHI" alone.
As our primary reviewing Court has stated, the identity
of words, connotation, and commercial impression weighs heavily
against the applicant. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1688 (Fed. Cir. 1993) citing In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1289-90
(Fed. Cir. 1984). It is clear that these highly similar marks,
if used in connection with related goods, would be likely to
cause confusion. We turn then to a consideration of the goods.
Serial No. 76361091
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The examining attorney argues that applicant's goods are in
part identical to the goods offered by registrant in that
newsletters in the field of hospice care would necessarily
provide information in the field of health. The examining
attorney contends that registrant's newsletters would include the
same type of information presented in applicant's newsletters and
that consumers would expect to see information about health in a
newsletter about hospice care. In addition, the examining
attorney has submitted a dictionary definition of "hospice" as "a
place or organization that provides care to people that are
dying," and copies of third-party registrations covering both
hospice care and other health care and wellness services to show
that the subject matter of the respective newsletters would be
perceived by consumers as likely to emanate from a common source.
It is well settled that goods need not be identical or even
competitive to support a finding of likelihood of confusion. See
Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). It is sufficient if the respective goods are
related in some manner and/or that the conditions surrounding
their marketing are such that they would be encountered by the
same persons under circumstances that could, because of the
similarity of the marks used thereon, give rise to the mistaken
belief that they emanate from or are associated with, the same
Serial No. 76361091
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source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
Registrant's newsletters in the field of hospice care for
children are very closely related to applicant's newsletters
which include information about health matters in general.
Applicant contends that the respective newsletters are offered in
different fields. In this regard, applicant has compared
printouts of pages from registrant's website with the actual
content of its own newsletters3 and moreover points out that
applicant has specifically excluded the field of hospice care
from its identification of goods.
Even with the exclusion, the topics covered by applicant's
newsletter still overlap with, or are at least very similar to,
the topics covered by registrant's newsletter. Applicant's
newsletters deal with all matters relating to health, which would
include children's health. Registrant's newsletters covering
hospice care for children would necessarily include matters
relating to children's health. This is confirmed by registrant's
website materials stating that "CHI is committed to the concept
of care called 'hospice.' It recognizes the right and need for
children and their families to choose health care and support

3 This evidence was properly made of record by applicant prior to
appeal. However, the examining attorney has properly objected to
additional materials submitted with applicant's brief as untimely, and
such materials have been given no consideration.

Serial No. 76361091
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whether in their own home, hospital, or hospice care facility."
In addition, the third-party registrations submitted by the
examining attorney showing that the marks have been registered
for both healthcare services and hospice services provide further
evidence that the respective newsletters would be perceived by
consumers as emanating from the same source. See In re Albert
Trostel & Sons Co., supra.
Applicant argues that the actual focus of its newsletters is
on the benefits of using applicant's therapeutic massager that is
offered for sale under its mark, and that the newsletters are
"likely" to be marketed to entirely different classes of
consumers. In particular, applicant maintains that its own
newsletters are directed to the adult population interested in
alternative health and "increasing their overall well being and
vitality in life," whereas registrant's newsletters are "likely
targeted" to hospitals and other organizations interested in
promoting the health of children.
The question of likelihood of confusion is based on the
goods as identified in the application and registration
regardless of what applicant may claim, or the record may show,
as to the actual content of the newsletters or the intended
audience. See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983). Apart from the exclusion of hospice care in
applicant's identification of goods, there is otherwise no
Serial No. 76361091
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limitation as to content, channels of trade or classes of
purchasers in applicant's identification of goods. Therefore, we
must assume that applicant's newsletters would cover all health
topics, including topics relating to children's health other than
hospice care, and that the newsletters would reach all the usual
classes of purchasers, including the ordinary purchasers and
healthcare professionals who may subscribe to or read
registrant's newsletters. Registrant's website materials and
applicant's newsletter show that, indeed, healthcare providers
are among the intended customers for both goods. Thus, the
purchasers are not only legally identical but identical in fact.
Because the marks are so similar, purchasers would naturally
assume that applicant's and registrant's newsletters covering
closely related, if not overlapping, children's health issues
come from the same source, or that there is otherwise some
affiliation or connection between them.
Decision: The refusal to register as to Class 16 is
affirmed.4 The application file will be forwarded to the Office
of the Commissioner for Trademarks for appropriate action with
respect to Class 11.5

4 Applicant's proposed amendment to Section 2(f) is neither timely nor
relevant and has been given no consideration.

5 We note that two third-party objections to registration have been
filed in this application, one on March 5, 2003 and the other on
February 20, 2004. The Board acknowledged the latter in an action
mailed September 9, 2004. These objections have had no bearing on our
Serial No. 76361091
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decision herein. However, because Class 11 was not the subject of the
examining attorney's refusal, and since this application would
otherwise proceed to registration in that class, the application is
being forwarded to the Office of the Commissioner for Trademarks for
consideration of the third-party objections as they pertain to Class 11
(and/or divided out Class 10, if appropriate). Applicant should note
that the time for appeal of the decision with respect to Class 16 runs
from the mailing date of this opinion.