Clear Vista Healing, LLC

Trademark Trial and Appeal Board

Feb 15, 2019

87419074 (T.T.A.B. Feb. 15, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Clear Vista Healing, LLC
_____

Serial No. 87419074
_____

Kit M. Stetina of Stetina Brunda Garred & Brucker, for Clear Vista Healing, LLC.

Lourdes Ayala, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Cataldo, Lykos and Larkin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Clear Vista Healing, LLC, seeks registration on the Principal Register
of the mark AVANI HEALING SANCTUARY (in standard characters, “HEALING”
disclaimed), identifying “Holistic health and spiritual services, namely, yoga
instruction; Pilates; meditation; cryotherapy; providing medical services namely,
Serial No. 87419074
- 2 -

medical infusions and thermography; physician medical consultations” in
International Class 44.1
The Trademark Examining Attorney has refused registration of Applicant’s mark:
(1) on the ground of likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), in view of Registration No. 3659019, issued on the Principal
Register for the mark AVANI (in standard characters), identifying “Health spa
services for health and wellness of the body and spirit offered at a health resort” in
International Class 44;2 and (2) under Trademark Act Section 6(a), 15 U.S.C. §
1056(a), on the ground that Applicant must submit a disclaimer of the wording
“HEALING SANCTUARY” apart from the mark as shown.
The refusals to register have been fully briefed by Applicant and the Examining
Attorney.
Based upon the record and the arguments made, we affirm the likelihood of
confusion refusal and the disclaimer requirement.
I. Disclaimer of HEALING SANCTUARY
The Director of the U.S. Patent and Trademark Office “may require the applicant
to disclaim an unregistrable component of a mark otherwise registrable.” Trademark
Act Section 6(a), 15 U.S.C. §1056(a). A mark or component is unregistrable if, “when
used on or in connection with the goods [or services] of the applicant,” it is “merely

1 Application Serial No. 87419074 was filed on April 20, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s claim of a bona fide intent to use
the mark in commerce.
2 Registration No. 3659019 issued on July 21, 2009. First Renewal.
Serial No. 87419074
- 3 -

descriptive … of them.” Trademark Act § 2(e)(1), 15 U.S.C. §1052(e)(1). The Patent
and Trademark Office may require a disclaimer as a condition of registration if the
term at issue is merely descriptive of any of the identified goods or services. In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A term is
merely descriptive of goods or services within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re TriVita,
Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) and In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark or a component of a mark is merely descriptive is determined in
relation to the goods or services 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
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and
every specific feature of the goods or services in order to be considered merely
descriptive; it is enough if it describes one significant attribute, function or property
of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982). Moreover, the term need not describe all of the identified goods or
services. Rather, a finding of mere descriptiveness is proper with respect to all of the
identified goods or services in an International Class if the mark is merely descriptive
of any of the goods or services in that class. In re Chamber of Commerce, 102 USPQ2d
Serial No. 87419074
- 4 -

at 1219; In re Stereotaxis Inc., 77 USPQ2d at 108. It is the Examining Attorney’s
burden to prove that a term is merely descriptive of an applicant’s goods or services.
In re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). The determination that
a term is merely descriptive is a finding of fact and must be based upon substantial
evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007).
Notwithstanding Applicant’s voluntary disclaimer of HEALING, the issue before
us is whether the term HEALING SANCTUARY, as a whole, is merely descriptive.
The Examining Attorney contends that the term HEALING SANCTUARY is merely
descriptive of the identified services (emphasis in original):
HEALING SANCTUARY as a whole must be disclaimed because the
wording when used with the associated services refers to a feature and
characteristic of the services, namely, the type of spa where clients go
for a variety of holistic healing services.

The previously attached evidence from BING referred to various spas
which use the wording HEALING SANCTUARY as common industry
wording to refer to the type of spa or a spa where clients go for a variety
of holistic healing services. Most of the listed spas use the wording in
their name or title to refer to the type of spa in question.3

We turn then to the evidence of record. With her July 18, 2017 first Office Action,
the Examining Attorney introduced into the record the following screenshots from

3 6 TTABVUE 16.
Citations to the briefs refer to the Board’s TTABVUE docket system. Citations to the
application record refer to the downloadable .pdf version of the USPTO’s Trademark Status
& Document Retrieval (TSDR) system.
Serial No. 87419074
- 5 -

third-party web pages utilizing the term “healing sanctuary” or “sanctuary” to refer
to their spa, wellness and spiritual services:4
Starseed Sanctuary
Starseed is an interfaith healing sanctuary, holistic retreat center, and
developing intentional community dedicated to personal and planetary
transformation.
Starseed offers programs, workshops and retreats designed to facilitate holistic
transformational processes, self-healing and renewal. The intention of our
holistic approach is to bring the physical, mental, emotional and spiritual
bodies into alignment, thereby facilitating healing at all levels.
(starseedsanctuary.com);

Harry Edwards Healing Sanctuary
Wherever you are, we’re here for you.
Spiritual Healing is a simple, safe and supportive energy therapy that aims to
bring balance to mind, body and soul, as well as to stimulate the body’s own
natural healing ability.
(harryedwardshealingsanctuary.org.uk);5

Thai Healing Sanctuary
Thai Bodywork
Thai Healing Sanctuary was created to offer the experience and benefits of
traditional Thai bodywork in a space dedicated solely to this work. The healing
practice of Thai bodywork combines targeted and broad acupressure,
manipulation of energy lines and assisted yoga postures.
(thehealingsanctuary.com);

Temple of Peace
Healing Sanctuary
Cleansing Spa & Spiritual Retreat
Temple of Peace Healing Sanctuary is a paradise hidden on the edge of the
rainforest on the beautiful Nth. Shore of Maui. Our Sanctuary can be almost
anything you need it to be. If you are sick or are extremely well. Temple of

4 At .pdf 92-121.
5 This website is located in the United Kingdom. Nonetheless, it appears to be accessible in
the United States. The Federal Circuit has explained that “[i]nformation originating on
foreign websites or in foreign news publications that are accessible to the United States
public may be relevant to discern United States consumer impression of a proposed mark.”
In re Bayer AG, 82 USPQ2d at 1835. Thus, we have considered the article for such probative
value as it may possess.
Serial No. 87419074
- 6 -

Peace Healing Sanctuary can be a spiritual hospital, spa, or retreat center.
(templeofpeacehealingsanctuary.com);

Naturally Healing Sanctuary
Offering Massage, Yoga, Detox Consults, Day Retreats, Weekend Retreats &
Personal Produce Shopping Consultations.
(naturallyhealingsanctuary.com);

Primrose Healing Sanctuary
Angelic Healing, Spiritual Healing, Magnetic Therapy, Cleansing
(primrosesanctuary.com); and

Bhakti Fest Healing Sanctuary
Bhakti Fest Healing Sanctuary offers a wonderful place to relax and treat
yourself to a wide range of wellness and healing services, including massage,
bodywork and energy work. Modalities include Thai, Chiropractic, Shamanic
Healing, Swedish, Deep Tissue, Reiki, Shiatsu, Sports, and more.
(Midwest.bhaktifest.com).

The Examining Attorney provided additional evidence of use of “healing sanctuary”
by third parties to describe their physical and spiritual health and wellness services
with her February 7, 2018 final Office Action.6
With its January 11, 2018 response to the Examining Attorney’s first Office
Action, Applicant introduced into the record the following dictionary definition of
“sanctuary:” “a place of refuge and protection;” “a place where someone or something
is protected or given shelter;” and “the protection that is provided by a safe place.”7
Based on the record before us, we find that relevant purchasers will perceive the
wording HEALING SANCTUARY in Applicant’s mark as merely describing
Applicant’s “Holistic health and spiritual services, namely, yoga instruction; Pilates;
meditation; cryotherapy; providing medical services namely, medical infusions and

6 At .pdf 6-41.
7 At .pdf 10-19. Definition retrieved from merriam-webster.com/dictionary.
Serial No. 87419074
- 7 -

thermography; physician medical consultations.” The dictionary evidence of record
clearly indicates that “healing sanctuary” describes, inter alia, a safe place of refuge
or protection where one may obtain healing. Applicant’s health, spiritual and medical
services provide healing in a safe place of refuge. Furthermore, the website evidence
excerpted above demonstrates that third parties providing a variety of health,
wellness, spa and spiritual services refer to their services as a “healing sanctuary.”
The entirety of the evidence relied upon by the Examining Attorney, including any
evidence not specifically discussed herein, thus supports her position that HEALING
SANCTUARY describes a function, feature or characteristic of the recited services.
In summary, the record before us supports the Examining Attorney’s requirement
of a disclaimer of the term HEALING SANCTUARY on the ground that this term is
merely descriptive of a characteristic or feature of Applicant’s physical and spiritual
health and wellness services. Accordingly, we affirm the Examining Attorney’s
refusal of registration under Trademark Act Section 6(a).
II. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
Serial No. 87419074
- 8 -

(CCPA 1976). See also In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
A. Relatedness of the Services and Channels of Trade
With regard to the services, channels of trade and classes of consumers, we must
make our determinations under these factors based on the services as they are
identified in the application and cited registration. Dixie Rests., 41 USPQ2d at 1534.
See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor
considers whether ‘the consuming public may perceive [the respective goods or
services of the parties] as related enough to cause confusion about the source or origin
of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1086 (Fed. Cir. 2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004).
Therefore, to support a finding of likelihood of confusion, it is not necessary that
the services be identical or even competitive. It is sufficient that the services are
related in some manner, or that the circumstances surrounding their marketing are
such that they would be encountered by the same persons in situations that would
give rise, because of the marks, to a mistaken belief that they originate from the same
source or that there is an association or connection between the sources of the
services. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Serial No. 87419074
- 9 -

Again, Applicant’s services are “Holistic health and spiritual services, namely,
yoga instruction; Pilates; meditation; cryotherapy; providing medical services
namely, medical infusions and thermography; physician medical consultations,” and
the services in the cited registration are “Health spa services for health and wellness
of the body and spirit offered at a health resort.” In support of the refusal of
registration, the Examining Attorney introduced with her July 18, 2017 first Office
Action8 and February 7, 2018 final Office Action9 printouts from websites of the
following third parties offering, under the same mark, services identified in the
subject application and cited registration:
Lotus Healing Sanctuary provides spa services, yoga and pain
management;

Santa Barbara Healing Sanctuary provides spa services at a health
resort, meditation and yoga;

Namaste Healing provides spa services, yoga, meditation and spiritual
healing services;

Holistic Health & Wellness Services provides a wide variety of holistic
health services and day spa services; and

Ayurveda Integrative Wellness Institute provides spa services and
holistic health care.

This evidence demonstrates that at least five third parties offer both Applicant’s
services and the services in the cited registration under the same mark.

8 At .pdf 55-120.
9 At .pdf 11-41.
Serial No. 87419074
- 10 -

The Examining Attorney also introduced into the record with her July 18, 2017
first Office Action10 copies of twelve use-based, third-party registrations for marks
identifying, inter alia, services of the type identified in the involved application and
cited registration. The following examples are illustrative:
Registration No. 4802499 for the mark GROTON WELLNESS;

Registration No. 4915798 for the mark CRYO CENTERS OF AMERICA; and

Registration No. 5131343 for the mark BLUE SKY WELLNESS STUDIO;

(all three marks in standard characters) identifying, among other health-
related services, “holistic health services, health spa services for health and
wellness of the body and spirit.”

As a general proposition, although use-based, third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have some probative value to the extent they may serve
to suggest that the services are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard, 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). In this case, the totality of the website and
third-party registration evidence demonstrates that consumers would readily expect
that these services could emanate from the same sources.
Evidence of record discussed above demonstrates that both Applicant’s services
and Registrant’s services may be encountered by the same classes of consumers under
the same marks in at least one common trade channel, i.e., the physical locations and

10 At .pdf 10-54.
Serial No. 87419074
- 11 -

corresponding websites of holistic health care and spa service providers. In addition,
the identification of services in the cited registration and involved application do not
recite any limitations as to the channels of trade in which the services are or will be
offered. In the absence of trade channel limitations on the services offered under the
registered and applied-for marks, we must presume that these services are offered in
all customary trade channels. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80
USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
As noted above, the Examining Attorney has introduced evidence that both
Applicant’s services and Registrant’s services are offered in the physical, “brick and
mortar” facilities of holistic health care centers and health spas along with their
webpages. This evidence supports a finding that these services are offered in the same
channels of trade.
We find that the du Pont factors of the relatedness of the services, channels of
trade and consumers weigh in favor of likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
We compare Applicant’s mark AVANI HEALING SANCTUARY and the
registered mark AVANI (both in standard characters) “in their entireties as to
appearance, sound, connotation and commercial impression.” Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1160; Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-
Serial No. 87419074
- 12 -

by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(internal quotation marks omitted). See also Mini Melts, Inc. v. Reckitt Benckiser
LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1089 (TTAB 2016). Consumers may not necessarily encounter the marks in close
proximity and must rely upon their recollections thereof over time. Mucky Duck
Mustard, 6 USPQ2d at 1468.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
Applicant’s mark AVANI HEALING SANCTUARY consists of the entirety of the
registered mark AVANI, with additional descriptive wording. While there is no rule
Serial No. 87419074
- 13 -

that likelihood of confusion automatically exists where one mark encompasses
another, in this case, as in many others, the fact that the entire cited mark is
incorporated in Applicant’s mark increases the similarity between the two. See, e.g.,
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re U.S.
Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE
marks similar to registered mark CREST CAREER IMAGES). Thus, the marks are
similar in appearance and sound to the extent that Applicant’s mark fully
encompasses the registered mark.
Upon evaluating the mark AVANI HEALING SANCTUARY as a whole, we find
that its dominant feature is the term AVANI, which comprises the entirety of the
registered mark. Because this term appears first in Applicant’s mark, it is most likely
to be impressed upon purchasers’ memories. Presto Prods., Inc. v. Nice-Pak Prods.
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered”). There
is no evidence of record regarding the possible significance of AVANI with regard to
either Applicant’s services or the services in the cited registration. Similarly, there is
no evidence that AVANI would have a different meaning or connotation in Applicant’s
mark from that engendered by the registered mark.
Moreover, for source-identification purposes, consumers are more likely to focus on
the term AVANI in the applied-for mark than the merely descriptive term HEALING
SANCTUARY. As discussed above, Applicant has already disclaimed HEALING and
Serial No. 87419074
- 14 -

we have found that the Examining Attorney has demonstrated that HEALING
SANCTUARY is descriptive of the recited services and thus must be disclaimed. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (quoting In re Nat’l Data, 224 USPQ at 752) (“Regarding descriptive terms, this
court has noted that the descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion”); Dixie Rests., 41 USPQ2d at
1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”). Consumers further are known to use shortened forms of names, and it
is possible that Applicant and its services would be referred to as “AVANI.” Cf. Abcor
Dev. Corp., 200 USPQ at 219 (Rich, J., concurring) (“the users of language have a
universal habit of shortening full names – from haste or laziness or just economy of
words”).
In sum, while we recognize the obvious differences between them, we find the
marks AVANI and AVANI HEALING SANCTUARY in their entireties to be more
similar than dissimilar in appearance, sound and meaning and, overall, to convey
similar commercial impressions. The fact that Applicant’s mark is dominated by the
term AVANI, which comprises the entirety of the registered mark, simply outweighs
the points of dissimilarity. Nat’l Data, 224 USPQ at 751. Thus, this du Pont factor
weighs in favor of finding a likelihood of confusion.
C. Conditions of Sale and Consumer Sophistication
Applicant argues that consumers of the identified services are sophisticated:
Serial No. 87419074
- 15 -

[T]he health, fitness, and medical services associated with the Proposed
Mark, as well as the “[h]ealth spa services” sold in connection with the
Cited Mark, are purchased by sophisticated consumers. With regard to
Appellant’s services, people care a great deal about their physical
wellbeing. With regard to the services of the Cited Mark, people care a
great deal about how they look and feel. In both cases, accidentally
receiving unintended services of lesser quality could be catastrophic to
one’s health or appearance, far more than just a waste of money.
Consequently, consumers will likely educate themselves about health,
fitness, and medical services, as well as about “[h]ealth spa services,”
before purchasing them.11

Both Applicant’s services and the services in the cited registration appear to be
available to members of the general public who seek them and can afford them. While
we accept that the respective services, as identified, may be relatively expensive,
there is no indication as to the ability of their consumers to distinguish between their
sources, particularly given that Applicant’s services are identified by a mark that
fully encompasses Registrant’s mark for related services. Further, as stated by the
Federal Circuit, “[t]hat the relevant class of buyers may exercise care does not
necessarily impose on that class the responsibility of distinguishing between similar
trademarks for [related goods or services]. ‘Human memories even of discriminating
purchasers ... are not infallible.’” In re Research and Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). As is frequently
stated, even if consumers are knowledgeable in a particular field, it does not
necessarily mean that they are immune from source confusion. In re Decombe, 9
USPQ2d 1812, 1814-15 (TTAB 1988).

11 4 TTABVUE 23.
Serial No. 87419074
- 16 -

As a result, this du Pont factor appears to be neutral, or to slightly favor a finding
of no likelihood of confusion.
D. Likelihood of Confusion Summary
Considering all the evidence of record, including any evidence not specifically
discussed herein, we find that the marks in their entireties are more similar than
dissimilar and that the identified services are related and will be encountered in at
least one common channel of trade by the same classes of consumers. Potential
consumer sophistication is not sufficient to overcome the similarities in the marks,
services and trade channels. We find therefore that Applicant’s mark is likely to cause
confusion with the mark in the cited registration when used in association with the
identified services.
III. Decision
The refusal to register based on likelihood of confusion under Section 2(d) of the
Trademark Act is affirmed.
The refusal to register under Trademark Act Section 6(a) in the absence of a
disclaimer of “HEALING SANCTUARY” is affirmed.