East Health Development Group, Inc.v.Sound Vitality, LLC

Trademark Trial and Appeal Board

Aug 16, 2011

No. 91165143 (T.T.A.B. Aug. 16, 2011)

Mailed:
August 16, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

East Health Development Group, Inc.
v.
Sound Vitality, LLC
_____

Opposition No. 91165143
to application Serial No. 76975262
_____

East Health Development, Group, Inc., pro se.

David Z. Ribakoff, Enenstein & Ribakoff APC for Sound
Vitality, LLC.
______

Before Walters, Bucher and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Sound Vitality, LLC (“applicant”) seeks to register
the mark CHI and design, shown below, on the Principal
Register, for an “electric massage apparatus for
therapeutic use, and related replacement parts,” in Class
10.1

1 During the course of the proceeding, the original applicant
China Healthways, Inc. assigned its entire right, title and
interest in its mark and application to Sound Vitality, LLC. In
its June 8, 2010 order, the Board substituted Sound Vitality, LLC
as the defendant.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91165143
2

Applicant provided the following translation statement in
its application: “The English translation of ‘CHI’ is
‘Vital energy force thought to be inherent in all things.’”
East Health Development Group, Inc. (“opposer”)
opposed the application on the ground that the word “Chi”
is generic and that applicant must disclaim the exclusive
right to use the word “Chi” if the mark is registered.
Applicant, in its answer and amended answer, denied the
salient allegations in the notice of opposition.
Preliminary Issues
A. Whether the word “Chi” is descriptive was tried by
implied consent?

As indicated above, opposer alleged that the word
“Chi” is generic when used in connection with an “electric
massage apparatus for therapeutic use, and related
replacement parts.” However, in its brief, opposer argued
that the word “Chi” is both generic and merely descriptive.
During the trial, opposer introduced very little relevant
evidence. Applicant, in its brief, essentially ignored the
issue(s) before us and argued that opposer’s arguments were
Opposition No. 91165143
3
rejected by the Court of Appeals for the Federal Circuit in
a different opposition between the parties when it held
that applicant owns the mark CHI and design at issue with
respect to electric therapeutic massagers.2
In its brief, applicant did not expressly consent to
try the issue of whether the word “Chi” when used in
connection therapeutic massagers is merely descriptive, nor
did applicant object to opposer’s assertion that the word
“Chi” is merely descriptive. Thus, we must determine
whether that issue was tried by implied consent. Implied
consent to the trial of an unpleaded issue can be found
only where the nonoffering party (1) raised no objection to
the introduction of evidence on the issue, and (2) was
fairly apprised that the evidence was being offered in
support of the issue. Morgan Creek Productions Inc. v.
Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB 2009);
H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-1721
(TTAB 2008); TBMP § 507.03(b) (3rd ed. 2011). Fairness
dictates that in deciding whether an issue has been tried
by consent, there must be an absence of doubt that the non-
moving party is aware that the issue is being tried. Safer
Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1034-35 (TTAB
2010) (applicant was not aware opposer intended to rely on

2 Applicant’s Brief, pp. 4-5.
Opposition No. 91165143
4
registration to prove likelihood of confusion until opposer
filed rebuttal notice of reliance); Morgan Creek
Productions Inc. v. Foria International Inc., 91 USPQ2d at
1139.
Implicit in a finding that the evidence establishes
that the word “Chi” is generic for applicant’s goods is a
holding that that the word “Chi” is at least merely
descriptive of applicant’s goods under Section 2(e)(1).
“The generic name of a thing is in fact the ultimate in
descriptiveness.” H. Marvin Ginn Corp. v. International
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986). Accordingly, under the circumstances
presented in this opposition, we find that the issue of
whether the word “Chi” in applicant’s mark is merely
descriptive was tried by implied consent and we deem the
notice of opposition to be amended to include opposer’s
claim that the word “Chi” is merely descriptive.
B. Evidence attached to opposer’s brief.
Opposer attached thirteen exhibits to its brief.
Exhibits and other evidentiary materials attached to a
party’s brief on the case can be given no consideration
unless they were properly made of record during the time
for taking testimony. See, e.g., Syngenta Crop Protection,
Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB 2009);
Opposition No. 91165143
5
Bass Pro Trademarks LLC v. Sportsman Warehouse, Inc., 89
USPQ2d 1844, 1848 (TTAB 2008); Life Zone Inc. v. Middleman
Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008). See also
Trademark Rule 2.123(l), 37 CFR §2.123(l) (“Evidence not
obtained and filed in compliance with these sections will
not be considered”). Accordingly, to the extent that the
evidence attached to the briefs was not made of record
during opposer’s testimony period, it has been given no
consideration.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b).
A. Opposer’s testimony and evidence.
1. The testimony deposition of Xiaoming Wang,
opposer’s Director, taken upon written questions, with
attached exhibits;
2. Opposer’s first notice of reliance;3 and
3. Opposer’s second notice of reliance.

3 Pursuant to the Board’s September 30, 2009 Order, six of the
fifteen documents attached to the notice of reliance were
stricken. We are not listing the individual documents comprising
the notices of reliance because, as noted above, most of the
documents are not relevant to the issue of whether applicant’s
mark is generic or merely descriptive.
Opposition No. 91165143
6
B. Applicant’s testimony and evidence.
1. Pursuant to the Board’s June 8, 2010 order,
applicant introduced the testimony deposition of Richard H.
Lee, applicant’s President, opposer in the previous
opposition, with attached exhibits taken in Opposition No.
91157392;
2. The April 21, 2010 testimony deposition of
Richard H. Lee.4
Evidence
In its application, applicant translated the word
“Chi” as the “vital energy force thought to be inherent in
all things.”
According to The American Heritage Dictionary of the
English Language (4th ed. 2000), the word “Chi” is defined
as follows:
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

4 Although the witness identified and authenticated exhibits, the
exhibits were not attached to the transcript filed with the
Board. We will not require applicant to provide the exhibits
because, based on the testimony, the exhibits do not appear to be
relevant to any of the issues before us.
5 Applicant’s notices of reliance, Exhibit B.
Opposition No. 91165143
7
A copy of Registration No. 2655359 for the mark CHI
LITE for an “acupuncture instrument, namely, electric
acupuncture point stimulator device.” The registration has
the following translation statement: “The word “Chi’ means
‘life energy’ in Chinese.” Registrant disclaimed the
exclusive right to use the word “Chi.”
In a “Release and Settlement Agreement” (June 28,
2004)6 between the parties resolving an action in the United
States District Court, Central District of California, Case
No. CV 02-03137 LGB (JWJx), and “certain actions,
applications and appeals … presently pending before the
United States Patent and Trademark office (“USPTO”) and the
Trademark Trial and Appeals [sic] Board (“TTAB”) …
involving the Parties and relating to trademarks and
related intellectual property rights related to
[therapeutic massage devices],” the parties agreed, inter
alia, to the following:7
3.1 The Parties agree that [applicant]
owns, and may use and retain the
following marks, and [opposer] agrees
not to use the following” mark .

* * *

6 Wang Dep., Exhibit 3
7 Paragraph No. 4.2 provides that this agreement does not resolve
any actions regarding “Chi” marks filed by the parties including,
inter alia, the application at issue in this opposition.
Opposition No. 91165143
8
3.7 The Parties agree that they are not
restricted, as to each other, from
using terms in their generic sense such
as “chi”, or “chaos’ (such as to
describe a chaotic or chaos or random
frequencies of infrasonic waves or
signals and a chaotic or chaos energy
patterns) or “qi gong”, regardless of
the case, font or font attributes used
to express such terms.

Excerpts from applicant’s advertising newsletters
shown below.8

8 Lee Dep., Exhibit 7.
Opposition No. 91165143
9

Gua Sha
Meridian Therapy

Gua Sha is an extraordinary traditional
Chinese system of promoting Qi9 and
blood circulation while removing toxins
and stagnant fluids for the rapid
relief of pain and discomfort. Our kit
includes a training video, Gua Sha tool
that grabs and quickly removes stagnant
Qi, and a detailed instruction booklet,
all, in a handy carrying case.

* * *

Books:

Bioelectric Vitality – Exploring the
Science of Human Energy

By Richard H. Lee

Discover the electromagnetic tenets
that underlie Qi in a way that is both
understandable to the western scientist
and consistent with the traditional
Chinese principles of vital energy.

9 “Qi” is defined as “chi.” The Random House Dictionary of the
English Language (Unabridged), pp. 356 and 1576 (2nd ed. 1987).
The Board may take judicial notice of dictionary evidence.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). See also The American Heritage
Dictionary of the English Language, supra.
Opposition No. 91165143
10
Pain Relief Breakthrough
New Hope for Chronic Pain

The effect of this massage activity is
pain management through muscle
relaxation, and enhanced local
circulation of Qi, blood, and endocrine
fluids.

Whether CHI is generic?
In determining whether a term is generic, the critical
issue is whether the record shows that members of the
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
in question. H. Marvin Ginn Corp. v. International Ass’n
of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986); In re Women's Publishing Co. Inc., 23 USPQ2d
1876, 1877 (TTAB 1992). Making this determination
“involves a two-step inquiry: First, what is the genus of
Opposition No. 91165143
11
goods or services at issue? Second, is the term sought to
be registered ... understood by the relevant public
primarily to refer to that genus of goods or services?”
Ginn, 228 USPQ at 530. Evidence of the public’s
understanding of a term may be obtained from any competent
source, including testimony, surveys, dictionaries, trade
journals, newspapers and other publications. See Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1553
(Fed. Cir. 1991); In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
We begin by finding that the genus of the goods at
issue in this case is adequately defined by applicant’s
description of goods, namely, “electric massage apparatus
for therapeutic use.” Magic Wand Inc. v. RDB Inc.,
19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses
on the description of [goods or] services set forth in the
[application or] certificate of registration”).
We now turn to the second inquiry: the public’s
understanding of the term. Based on the limited record
described above, the evidence is not sufficient to support
a finding that the relevant public, when it considers the
word “Chi,” readily understands it as identifying a
category of therapeutic massagers. For example, there is
Opposition No. 91165143
12
nothing in the record that shows a consumer, or anyone else
selling a competitive massager, referring to a massager as
a “Chi” machine.
In view of te foregoing, we find that opposer has
failed to prove that the word “Chi” in applicant’s mark is
generic when used in connection with therapeutic massagers.
Whether CHI Is Merely Descriptive?
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the goods for which registration
is sought and the context in which the term is used, not in
the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the question is not whether someone presented
only with the mark could guess the products listed in the
description of goods. Rather, the question is whether
someone who knows what the products are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
Opposition No. 91165143
13
In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp., 226
USPQ 365, 366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc.,
199 USPQ 496, 497 (TTAB 1978); see also, In re Shutts,
217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water
Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
After reviewing the evidence, especially the excerpts
from applicant’s newsletters, we find that the word “Chi”
directly informs consumers and potential consumers of
applicant’s products that its massagers are a chi-based
therapy. As noted above, the test of whether a mark is
merely descriptive is not whether someone can look at the
mark and guess what the goods are; rather, the test is
whether the mark informs the relevant consumer about a
quality, characteristic, feature, purpose or function of
the product.
The word “Chi” means energy or life force. Applicant
claims that its product accelerates recovery by
decreasing painful edema, reducing pain in joints, muscles
Opposition No. 91165143
14
and bones, relaxing muscle, armoring and spasm, improving
microcirculation, and relieving pain without drugs. The
commercial impression engendered by applicant’s mark in
that advertisement is the word “Chi” and, therefore,
consumers will interpret applicant’s advertisement as “Chi”
accelerates recovery. Applicant also advertises
“vitality enhancement products” for improving chi.
In the “Pain Relief Breakthrough” article, applicant
explains that the effect of massage therapy is, in part, to
improve the circulation of Qi or chi. Finally, in the “Why
Energy Medicine Works” article, applicant explains that
traditional Chinese medicine teaches that the key to good
health is the abundance and unobstructed flow of qi.
Applicant also claims that its “Infratonic QGM [QiGong
Machine] works because it is a Qi-based therapy that
encourages the body’s natural ability to heal itself.”
(Emphasis in the original).
Applicant uses the word “Chi” descriptively to
identify the purpose or function of its therapeutic
massager (i.e., to improve chi). It is patently
inconsistent for applicant to tout the purpose of its
product as improving chi and, at the same time, claiming
the exclusive right to use chi as its mark. In view of the
foregoing, we find that the word “Chi” is merely
Opposition No. 91165143
15
descriptive when used in connection with therapeutic
massagers.
In view of our finding that the word “Chi” is merely
descriptive when used in connection with electric massagers
for therapeutic use, applicant must disclaim the exclusive
right to use the word “Chi.”
Decision: The opposition is sustained and
registration to applicant is refused.
However, in the event that applicant submits a
disclaimer of the exclusive right to use the word “Chi”
within thirty days from the mailing date of this decision,
the decision sustaining the opposition and refusing
registration will be set aside and the application will
proceed to registration.10 See Trademark Rule 2.142(g).

10 A proper disclaimer reads as follows: "No claim is made to the
exclusive right to use Chi apart from the mark as shown."