China Healthways Institute, Inc.v.Xiaoming Wang

Trademark Trial and Appeal Board

Apr 28, 2006

No. 91157392 (T.T.A.B. Apr. 28, 2006)

Mailed:
April 28, 2006
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

China Healthways Institute, Inc. dba Chi Institute
v.
Xiaoming Wang

________

Opposition No. 91157392
against Serial No. 76435273
_______

David Z. Ribakoff of the Law Office of David Z. Ribakoff for
China Healthways Institute, Inc. dba Chi Institute.

Xiaoming Wang, pro se.
_______

Before Walters, Bucher and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Xiaoming Wang seeks registration on the Principal
Register of the following mark:

for “electric massage apparatus” in International Class 10.1

1 Application Serial No. 76435273 was filed on July 26, 2002
based upon applicant’s allegation of first use anywhere and first
use in commerce at least as early as May 31, 2002. Applicant has
disclaimed the word “Chi” apart from the mark as shown.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91157392
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Registration has been opposed by China Healthways
Institute, Inc. dba Chi Institute. As its ground for
opposition, opposer asserts that applicant’s mark when used
in connection with
applicant’s goods so
resembles opposer’s
previously used mark,
which opposer refers to
as its “Chi logo,” as to
be likely to cause confusion, to cause mistake or to deceive
under Section 2(d) of the Lanham Act.
Applicant, in its answer, has denied the salient
allegations in the opposition.
The Record
By operation of the rules, the record includes the
pleadings and the file of the opposed application. Opposer,
as part of its case-in-chief, has also made of record the
testimonial deposition of Richard H. Lee, president of China
Healthways Institute, Inc., and exhibits thereto.
Although applicant failed to introduce any evidence
during his assigned testimony period, he attempted to use
his brief as a vehicle for the introduction of evidence.
Opposition No. 91157392
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Accordingly, in an order dated February 16, 2006, the Board
granted opposer’s motion to strike applicant’s declaration
and other exhibits attached to his brief, as well as any
factual statements contained in applicant’s main brief that
rely upon this stricken material. Additionally, any of the
materials previously submitted by applicant with his answer
or in support of his response to opposer’s motion for
summary judgment are not of record for the purpose of this
final determination and, therefore, have not been considered
herein.
Procedural Matters
Before turning to the record and the merits of this
case, we must discuss several preliminary matters.
In his answer, applicant asserted numerous “affirmative
defenses,” the majority of which are essentially
amplifications of his denials.2 Applicant also asserted as
affirmative defenses that opposer has committed fraud on the
United States Patent and Trademark Office in several
proceedings/prosecutions (¶ 19), and that opposer has been
trying to obtain an illegal monopoly in this field, and as
part of this attempt, has been guilty of intimidation

2 This includes applicant’s assertion that “chi” is a generic
term.
Opposition No. 91157392
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against its competitors who are also marketing electric
massage apparatus (¶ 20). Neither of these affirmative
defenses has been considered because neither defense is
acceptable as pleaded. Rule 9(b) of the Federal Rules of
Civil Procedure requires that the circumstances constituting
fraud be stated “with particularity.” Hence, applicant’s
pleading of fraud is deficient because it is not stated with
particularity. Applicant’s pleading regarding an “illegal
monopoly” is essentially a claim of unfair competition,
which is not within the scope of the Board to determine.
See TBMP 309.03(a)(1). Furthermore, applicant submitted no
evidence in support of any of his claims. Therefore,
applicant’s allegations as to opposer’s alleged fraud on the
USPTO and its alleged acts of unfair competition have not
been considered.
Both parties have also alluded to prior litigation
between opposer herein and companies allegedly associated in
some way with applicant. For example, copies of court
documents correctly entered into this record by opposer show
that opposer was the plaintiff in Civil Action No. CV02-
03137 LGB (JWJx) filed in the United States District Court
for the Central District of California, complaining of
copyright infringement, trademark infringement, false
Opposition No. 91157392
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advertising and unfair competition, brought against more
than a dozen parties. While opposer did submit the court’s
order of April 1, 2005 from that proceeding, opposer did not
plead collateral estoppel or res judicata in its notice of
opposition, nor has any such issue been tried herein. Also,
applicant is not listed among the defendants in this court
proceeding. Therefore, we find this evidence to have no
relevance in this opposition proceeding and we have not
considered opposer’s allegations that applicant is the owner
of one or more of the defendant companies in the civil
proceeding, or that the court reached certain factual
findings that should be applicable herein.
Factual Findings
China Healthways Institute, Inc. develops and
manufactures therapeutic massagers that produce an
infrasonic signal transmitted to the body through a
transducer apparatus. This field of mind-body interventions
is a form of alternative medicine growing out of traditional
Chinese medicine. Opposer’s literature discusses how the
involved device acts on biofield forces, and hence, is able
to reduce inflammation and the impacts of trauma; and that
following in the tradition of QiGong masters who claim to
Opposition No. 91157392
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cure a wide variety of diseases with energy released from
their fingertips, this electronic device offers external
QiGong, or energy practice, for patients who seek to improve
the flow and balance of energy in a beneficial way. Opposer
has developed a nationwide customer base, including
professionals in fields of complementary and alternative
medicine such as chiropractors, massage therapists,
physicians in practice of pain medicine, as well as chronic
pain patients. Opposer has sold 2,000 to 3,000 massager
units each year since 1993.
As noted, other than the involved application,
applicant has offered no evidence for the record.
China Healthways Institute, Inc. has standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit has enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be (is)
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Opposition No. 91157392
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Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer’s evidence of use of its CHI logo in
connection with the sale and marketing of an electric
massage apparatus for therapeutic use as well as with
related accessories and replacement parts is sufficient to
establish opposer’s interest and, therefore, standing in
this proceeding.
Priority
In the absence of any evidence of use, the earliest
date that applicant can rely on is his constructive use
date, his filing date herein, of July 26, 2002.
According to the testimony of Mr. Lee, opposer started
selling massagers having the CHI logo in 1993. Opposer
introduced into the record invoices from 1993 to 2005.
These invoices identify the involved goods as “Infratonic
QGM Med Device,” “Infratonic QGM Ther Massagr” and
“Infratonic QGM Therapeutic.” However, none of the invoices
contains the CHI logo, or even the word “Chi.” (Exhibits 3
- 5 to Lee testimony).
Nonetheless, Mr. Lee testified that all of opposer’s
various massagers, as the device has evolved over the past
dozen years, had the CHI logo in the upper right hand corner
Opposition No. 91157392
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of the faceplate. Lee testimony at p. 14. There is no
basis in the record for the Board to question the accuracy
of Mr. Lee’s testimony. We note, however, from the copies
of photographs of opposer’s evolving machine (Exhibit 2 to
Lee testimony), the first model where the CHI logo is
clearly visible to us is the Infratonic 8 model, which
opposer testified it started marketing in 2001 (Exhibit 2e).
In any event, this date still precedes the filing date of
the opposed application. In view thereof, opposer has
established its priority of use of its CHI and design mark.
Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Act. Our determination of
likelihood of confusion is based upon our analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
Opposition No. 91157392
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differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Azteca Restaurant Enterprises, Inc.,
50 USPQ2d 1209 (TTAB 1999), and the cases cited therein.
The goods
We turn first to a consideration of the relationship of
the goods as described in the application and in connection
with which the prior mark is in use.
In its answer, applicant argues that his product is
different from opposer’s in appearance, characteristics and
technology, that his devices are sold directly to health
care consumers rather than to professionals such as
chiropractors, massage therapists or physicians, and that
his massagers are used in ways quite different from the way
professionals use opposer’s massagers. Although opposer
argues that the parties’ respective massagers are closely
related, it makes several arguments not unlike those made by
applicant about the differences in the parties’ current
products. For example, in order to support its arguments
about the severe damages it suffers when applicant tries to
pass off his products as opposer’s products, opposer
discusses its continuous advances into patented digital
Opposition No. 91157392
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technology, and alleges that applicant currently markets
massagers having the technology, appearance and
functionalities of its ten-year-old analog models.
However, for our purposes in determining likelihood of
confusion, we note that the identification of goods in the
application is not limited in any way, and therefore, we
must conclude that both parties are involved in marketing
devices correctly characterized as electric massage
apparatus. As a result, we find that the goods involved
herein are legally identical. This factor favors opposer.
Similarly, as to two related du Pont factors, we must
presume these respective parties’ goods will move through
all the same channels of trade to the same classes of
ordinary consumers.
The Marks
We turn next to a consideration of the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
As to appearance, both marks contain the word “chi.”
However, opposer’s mark also contains a prominent, non-
Opposition No. 91157392
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literal image.3 This image is accentuated elsewhere on the
trade dress of the goods and on opposer’s website, where it
sometimes appears on its own, apart from the literal
element. By contrast, applicant’s mark has the additional
word “PLUS.” As to sound, the difference will be the single
syllable term “Chi” versus the two-word term, “Chi Plus.”
As to connotation, opposer argues that the letters C·H·I
in its mark represents an acronym or initialism for
opposer’s trade name, namely, “China Healthways Institute.”
Further, opposer’s mark is described by its president as
including “hands over the ‘I’ of the logo represent[ing] a
person sitting up healthy (sic) in a hospital bed.”
By contrast, applicant’s mark is , with the word
“chi” disclaimed. Although applicant has disclaimed the
word “chi,” we cannot consider this as evidence that the
term is merely descriptive or generic. An applicant cannot
avoid a likelihood of confusion claim by disclaiming a
portion of its mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 672,

3 While opposer has not affirmatively established that its mark
is inherently distinctive, we find that the prominent design
element is sufficiently distinctive to render the mark inherently
distinctive in relation to opposer’s goods, regardless of any
alleged weakness or lack of inherent distinctiveness in the term
“chi” alone.
Opposition No. 91157392
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223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ
390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck,
Inc., 340 F.2d 978, 144 USPQ 433 (CCPA 1965); and In re MCI
Communications Corp., 21 USPQ2d 1534, 1538-39 (Comm’r Pats.
1991).
While applicant has failed properly to place his
evidence into the record, we can take judicial notice of
dictionary entries defining the word “chi”:
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)4

chi also chٰi 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 be essential to good health in
traditional Chinese medicine. [Chinese
(Mandarin) qi, air, spirit, energy of life.] 5

This connotation of the word “chi” is most relevant as
applied to opposer’s and applicant’s therapeutic infrasonic

4 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (Eleventh Ed. 2003). It is
settled that the Board may properly take judicial notice of
dictionary definitions. See Hancock v. American Steel & Wire Co.
of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
5 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (Fourth
Edition).
Opposition No. 91157392
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massagers. We note, for example, that in discussions of
putative energy fields that surround and penetrate the human
body, “chi” is the equivalent of “Qi,” and opposer’s
invoices of more than a dozen years identify the involved
goods as “QGM” therapeutic medical devices, where the
letters QGM stand for “QiGong Machine.” Further, opposer’s
literature touts the incredible cures caused by the capacity
of its therapeutic massager’s transducer to change the flows
of vital energy within the patient’s body.
Hence, while the letters “CHI” may also function as an
acronym or initialism for opposer’s trade name, China
Healthways Institute, we find that the word “chi” has a
well-known meaning among those knowledgeable about Eastern
medical treatments, and it is this connection that provides
the more likely connotation of the term “chi” in both
parties’ marks. Specifically, the “chi” portion of both
marks is at the very least highly suggestive, if not merely
descriptive, when used in connection with the involved
goods.
While we must consider the similarity or dissimilarity
of the marks when viewed in their entireties, “there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of the
Opposition No. 91157392
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mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., supra at 751. We note that the only
common element between the marks is the highly suggestive or
merely descriptive term “chi.” Therefore, we find that the
marks are distinguished by their respective additional
matter, and conclude that their overall commercial
impressions are not similar.
Renown of the prior mark
Finally, we turn to the du Pont factor focusing on the
fame of opposer’s prior mark. In its notice of opposition,
opposer refers to its “famous CHI … trademark ….” We have
concluded that cumulatively, opposer has indeed sold tens of
thousands of these massager units since 1993. Each unit
retails for prices that have ranged over the years from
several hundred dollars to current prices approaching a
thousand dollars. Nonetheless, we are not able to conclude
that its CHI logo is famous, or even well-known. For
example, we do not know what market share opposer’s sales of
therapeutic massage machines represent, the extent to which
the pleaded mark is used on the machines comprising
opposer’s total sales, or the prominence of the pleaded mark
in opposer’s advertising and promotion. Nor can we
Opposition No. 91157392
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extrapolate from the evidence the relevant purchasers’
perceptions of the mark.
Summary of Likelihood of Confusion Determination
In conclusion, while these goods must be deemed to be
identical, given the relative weakness of the “Chi”
component of opposer’s composite mark and opposer’s failure
to establish that its mark is either famous or well known,
we find there is no likelihood of confusion herein. Kellogg
Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ 1142,
1143-44 (Fed. Cir. 1991) [FROOTEE ICE and elephant design is
so different from FROOT LOOPS, that even if goods were
closely related, and opposer’s mark were famous, there was
no likelihood of confusion].
Decision: The opposition is hereby dismissed and the
application will be forwarded for the issuance of a
registration.