The Contentment Foundation

Trademark Trial and Appeal Board

Jun 18, 2019

87958951 (T.T.A.B. Jun. 18, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Contentment Foundation
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Serial No. 87958951
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Eric S. Goldman of Eric S Goldman LLC,
For The Contentment Foundation.
Tasneem Hussain, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____

Before Cataldo, Ritchie, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
The Contentment Foundation (“Applicant”) seeks registration on the Principal
Register of the mark FOUR PILLARS OF WELLBEING (in standard characters) for
Educational services, namely, conducting seminars,
lectures, teleseminars, teleclasses and workshops in the
field of contentment, education, positive psychology and
human wellbeing and distribution of course and
educational materials in connection therewith;
Educational services, namely, developing curriculum for
educators; Educational services, namely, developing
curriculum for others in the field of contentment,
education, positive psychology and human wellbeing;
Educational services, namely, developing curriculum for
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teachers; Educational examination services; Educational
testing services; Providing educational assessment
services in International Class 41.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the services identified in the application, so resembles the mark FOUR PILLARS
(in standard characters) for
Education services, namely, providing an artistic and
cultural project in the nature of providing exhibits,
seminars, classes, non-downloadable films, non-
downloadable videos, motivational speaking services, non-
downloadable podcasts, photography services, online non-
downloadable articles, festivals, panel discussions, non-
downloadable books, and conceptual art experiences in the
nature of art exhibits, art exhibitions and workshops, that
will all provide entertainment, education and training in
the fields of art, meditation, wellness, spirituality, personal
development, and self help; in International Class 41,2
on the Principal Register as to be likely to cause confusion, to cause mistake, or to
deceive. The Examining Attorney also issued a final requirement under Section 6(a)
of the Act, 15 U.S.C. § 1056(a), for Applicant to disclaim the exclusive right to use the
term WELLBEING apart from the mark as shown. After the Examining Attorney
made the refusal and requirement final, Applicant appealed to this Board. We affirm
the refusal to register and the requirement to disclaim the exclusive right to use the
word WELLBEING.

1 Application Serial No. 87958951 filed on June 12, 2018, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in
commerce since at least as early as August 2, 2017.

2 Registration No. 5436003, issued April 3, 2018.
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I. Procedural Issue
Although Applicant traversed the disclaimer requirement, it did not address the
Section 2(d) refusal in its appeal brief, reply brief, or even the November 28, 2018
Response to Office Action. While we do not have the benefit of Applicant’s arguments
on the Section 2(d) refusal, we exercise our discretion to nonetheless assume that
Applicant disputes the refusal, and we will determine whether the Examining
Attorney carried her burden of showing a likelihood of confusion under Section 2(d),
after we determine the fully briefed disclaimer requirement. See In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1084 (Fed. Cir. 2014) (“The PTO bears the
burden of showing that a mark should not be registered.”). Cf. In re Brack, 114
USPQ2d 1338, 1340-42 (TTAB 2015) (Board determined Examining Attorney’s
requirement for verification even though Applicant never acknowledged requirement
during prosecution or appeal).
II. Disclaimer Requirement
Under Section 6(a), “[t]he Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.” Merely descriptive terms
are unregistrable under Section 2(e)(1) of the Trademark Act, and therefore are
subject to a disclaimer requirement if the mark is otherwise registrable. See In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). Failure to
comply with a disclaimer requirement is a basis for refusing registration of the entire
mark. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264
(Fed. Cir. 2015); In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012).
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A term is “merely descriptive” within the meaning of Section 2(e)(1) “if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d
1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). 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 the goods [or services].” In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)).3
Whether a term is merely descriptive is “evaluated ‘in relation to the particular
goods [or services] for which registration is sought, the context in which the mark is
used, and the possible significance the term would have to the average consumer
because of the manner of its use or intended use,”’ Chamber of Commerce, 102
USPQ2d at 1219 (quoting Bayer, 82 USPQ2d at 1831), and “not in the abstract or on
the basis of guesswork.” Fat Boys Water Sports, 118 USPQ2d at 1513 (citing In re
Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). “In other words,
we evaluate whether someone who knows what the goods [or services] are will
understand the mark to convey information about them.” Id. at 1515 (citing

3 A “mark need not be merely descriptive of all recited goods or services in an application. A
descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services
for which registration is sought.”’ In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting Stereotaxis, 77 USPQ2d at 1088).
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DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012)).4 Evidence that a term is merely descriptive to the
relevant purchasing public “may be obtained from any competent source, such as
dictionaries,” Bayer, 82 USPQ2d at 1831, “advertising material directed to the
[services],” Abcor Dev., 200 USPQ at 218, websites, publications, and an applicant’s
own specimen of use and any explanatory text included therein. N.C. Lottery, 123
USPQ2d at 1710; In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1565 (Fed.
Cir. 2001).
With the initial Office Action requiring a disclaimer of the term WELLBEING,
the Examining Attorney attached a dictionary definition showing that “wellbeing”
means “the satisfactory state that someone or something should be in, that involves
such things as being happy, healthy, and safe, and having enough money;”5 an
excerpt from Applicant’s own website showing that Applicant describes itself to the
relevant public as:
[A]sking questions about human health, wellbeing, and
self-awareness. We thrive on new scientific innovations,
uncovering philosophies that give us new insights, and
synthesizing ancient modern wisdom to find the best
practices for cultivating unconditional wellbeing in life.
***

4 A term is suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods or services are to reach a
conclusion about their nature from the term. See, e.g., Fat Boys Water Sports, 118 USPQ2d
at 1515.
5 MacMillanDictionary.com, September 5, 2018 Office Action at TSDR 10. Citations to the
examination record refer to the USPTO’s online Trademark Status and Document Retrieval
System (TSDR), by page number in the downloadable .pdf format.
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As we continue to develop new wellbeing interventions for
schools around the word and refine our Four Pillars of
Wellbeing curriculum, we’re partnering with one of the top
child study labs on the planet – the Yale Center for
Emotional Intelligence. We want to make sure that all of
our wellbeing lessons continue to be world-class and
maximally effective across diverse classrooms;6
and three third-party registrations for marks comprised of FOUR PILLARS OF, or
its equivalent, followed by descriptive subject matter wording that has been
disclaimed for educational services.7
The Examining Attorney also points out that WELLBEING appears in Applicant’s
identification of services, and that Applicant’s specimen of record uses WELLBEING
in non-source identifying, descriptive text explaining Applicant’s “Four Pillars of
Wellbeing” as follows:
After deeply researching the philosophical, spiritual, and
scientific literature, four key areas have surfaced that are
directly related to sustainable wellness. We have unified
these approaches into a single set of lessons that offer the
skills required to generate wellbeing internally. *** We
work with schools as we continue to develop our curriculum
and create a network of forward thinking classrooms that
value sustainable wellbeing.8
Applicant’s existential argument that it is impossible for WELLBEING to describe
a feature of the services because educational services are inanimate and “cannot

6 Contentment.org/wellbeing, September 5, 2018 Office Action at TSDR 19.
7 Registration No. 5020607 for 4 PILLARS OF SLEEP HYGIENE (SLEEP HYGIENE
disclaimed), Registration No. 5448945 for the 4 PILLARS OF ALZHEIMER’S PREVENTION
(ALZHEIMER’S PREVENTION disclaimed), Registration No. 5549057 for FOUR PILLARS
OF RESPONSIBLE INVESTING (RESPONSIBLE INVESTING disclaimed). See September
5, 2018 Office Action at TSDR 13-18.
8 See Examining Attorney’s Brief, unnumbered p. 5 (7 TTABVUE 5). See also Specimen.
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contain a state of existence,” see Brief, unnumbered p. 10 (5 TTABVUE 11), is not
well-taken. Human wellbeing is one of the specifically identified fields in which
Applicant conducts seminars and develops curriculum for others.
Based on the record as a whole, we find that WELLBEING clearly and
immediately conveys information concerning a feature and characteristic of the
educational services for which registration is sought. Someone who knows what the
services are will understand WELLBEING to convey information about them. Indeed,
Applicant uses “wellbeing” to describe, explain, and advertise its services.
Accordingly, we find that the Examining Attorney established prima facie that the
word WELLBEING is merely descriptive of Applicant’s educational services.
Applicant submitted no evidence, and its arguments in response to this showing do
not rebut the prima facie descriptiveness of the term.
III. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the likelihood of confusion. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973);
see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
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marks.”). See also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800
(Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1259 (Fed. Cir. 2010) (“Not all of the [du ]Pont factors are relevant to every case, and
only factors of significance to the particular mark need be considered.”)); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”). Varying weights may be assigned to each du
Pont factor depending on the evidence and circumstances presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the
various evidentiary factors may play more or less weighty roles in any particular
determination”).
A. Similarity of the services, channels of trade, and classes of
customers
Under the second and third du Pont factors, we consider the similarity of the
services, channels of trade, and classes of customers. We must make our
determinations under these factors based on the services as they are identified in the
application and cited registration. See 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, 1004 (Fed. Cir.
2002); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997);
Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).
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Applicant’s services include “conducting seminars, lectures, teleseminars,
teleclasses and workshops in the field of contentment, education, positive psychology
and human wellbeing.” Registrant’s services include “seminars, classes . . . panel
discussions . . . and workshops, that will all provide entertainment, education and
training in the fields of art, meditation, wellness, spirituality, personal development,
and self help.” The services appear closely related and even overlapping on their face,
inasmuch as wellness and wellbeing are closely related subjects. As the Examining
Attorney, notes, “[t]o the extent that both of the parties provide educational services
in the fields of wellness and similar subjects, the services are closely related.”9
Excerpts from Applicant’s own website attached to the September 25, 2018 Office
Action confirm that these services are closely related inasmuch as Applicant offers
the same services identified by Registrant: education in the fields of wellness and
related subjects. Thus, the evidence of record confirms that the services are closely
related, if not identical. Indeed, Applicant’s broadly worded educational services “in
the field of contentment, education, positive psychology and human wellbeing” may
encompass Registrant’s “education and training in the fields of art, meditation,
wellness, spirituality, personal development, and self help.”10 See In re Hughes

9 Examining Attorney’s Brief, unnumbered p. 4 (7 TTABVUE 4).
10 Given the relatedness of these services, we need not discuss the similarity of Applicant’s
other services with Registrant’s services because it is sufficient for a finding of likelihood of
confusion if relatedness is established for any service encompassed by the identification of
services within a particular class in the application and cited registration. In re Aquamar,
Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Comput. v. TVNET.Net, Inc.,
90 USPQ2d 1393, 1398 (TTAB 2007).
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Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.”’).
Applicant did not dispute the evidence of record or the Examining Attorney’s
assessment that Applicant’s services may encompass Registrant’s services. Given the
legal identity of the services in part, and the lack of restrictions or limitations in the
application and the cited registration as to channels of trade or classes of consumers,
we must presume that the channels of trade and classes of purchasers are also the
same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(finding Board entitled to rely on this legal presumption in determining likelihood of
confusion).
Based on the facially related, and in-part legally identical, services set forth in the
application and the cited registration, and the presumptive overlapping trade
channels and classes of purchasers, the du Pont factors of the similarity of the
services, channels of trade, and classes of customers weigh heavily in favor of
likelihood of confusion.
B. Similarity of the marks
Under the first du Pont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation, and commercial impression. du Pont, 177 USPQ at
567; Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1160; Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
Serial No. 87958951
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USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014). “The marks ‘must be considered ... in light of the fallibility of memory’
and ‘not on the basis of side-by-side comparison.”’ In re St. Helena Hosp., 113 USPQ2d
at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). The proper focus is on the recollection of the
average consumer, who retains a general rather than specific impression of the
marks. In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018). Under actual
marketing conditions, consumers do not necessarily have the luxury of making side-
by-side comparisons between marks, and must rely upon their imperfect
recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB
1980).
Applicant’s mark is FOUR PILLARS OF WELLBEING, with a disclaimer of the
descriptive word WELLBEING required. See discussion supra. Registrant’s mark is
FOUR PILLARS.
The Examining Attorney argues that Applicant has added the descriptive wording
OF WELLBEING to Registrant’s mark. Examining Attorney’s Brief, unnumbered p.
3 (7 TTABVUE 3). Our analysis cannot be predicated on dissection of the involved
marks. See Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1161. Rather,
we are obliged to consider the marks in their entireties. Id. 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
Serial No. 87958951
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must be considered as a whole in determining likelihood of confusion.”). Nonetheless,
“‘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.’” In re Detroit Athletic Co.,
903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)); accord TiVo Brands LLC
v. Tivoli, LLC, 129 USPQ2d 1097, 1116 (TTAB 2018).
Because FOUR PILLARS is the first portion of Applicant’s mark, and the
secondary prepositional phrase OF WELLBEING is descriptive, we find the term
FOUR PILLARS to be the dominant portion of Applicant’s mark. See Detroit Athletic,
128 USPQ2d at 1049 (“Indeed, in view of the marks’ structural similarity, the lead
words [DETROIT ATHLETIC] are their dominant portion and are likely to make the
greatest impression on consumers.”); Palm Bay Imps. 73 USPQ2d at 1692 (“Veuve”
is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark and the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers will first notice the identical lead
word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting that
the dominance of BARR in the mark BARR GROUP is reinforced by its location as
the first word in the mark); 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.”). See also In re Dixie
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Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed
matter that is descriptive of or generic for a party’s goods or services is typically less
significant or less dominant when comparing marks); In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter often “less significant in
creating the mark’s commercial impression.”).
Registrant’s FOUR PILLARS mark is encompassed by Applicant’s mark. While
there is no rule that likelihood of confusion automatically applies where one mark
encompasses another, likelihood of confusion has often been found where the entirety
of one mark is incorporated within another. See In re Denisi, 225 USPQ 624, 626
(TTAB 1985) (PERRY’S PIZZA for pizza restaurants and PERRY’S for restaurant and
bar services); see also Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL
LANCER for club soda, quinine water and ginger ale likely to cause confusion with
BENGAL for gin); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016)
(BARR GROUP wholly encompasses the registered mark BARR); Johnson Publ’g Co.
v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM for hairdressing
and conditioner likely to cause confusion with EBONY for cosmetics); In re U.S. Shoe
Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE marks similar to
registered mark CREST CAREER IMAGES). The marks are similar in appearance
and sound to the extent that Applicant’s mark fully encompasses Registrant’s mark.
Although Applicant provided an unnecessary disclaimer of FOUR PILLARS, see
November 28, 2018 Response to Office Action at TSDR 2 and 9, such voluntary
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disclaimer by Applicant has no legal effect on the issue of likelihood of confusion. See
Nat’l Data, 224 USPQ at 751 (“[T]actical strategy” of a voluntary disclaimer “cannot
affect the scope of protection to which another’s mark is entitled.”). The FOUR
PILLARS portion of Applicant’s mark creates the same commercial impression as
Registrant’s FOUR PILLARS mark; that is, four supporting tenets or principles
forming part of a philosophy or field of endeavor.
Far from distinguishing Applicant’s mark, the addition of WELLBEING to FOUR
PILLARS tends to suggest an emotional or psychological wellness-focused education
service emanating from the same source. See In re Collegian Sportswear, Inc., 224
USPQ 174, 176 (TTAB 1984) (“...customers familiar with registrant’s
‘COLLEGIENNE’ clothing might believe that ‘COLLEGIAN OF CALIFORNIA’
clothing was a new line of clothing from registrant featuring a ‘California’ or west
coast style.”). See also In re Mighty Leaf Tea, 94 USPQ2d at 1260 (“the Board found
... that ML is likely to be perceived as a shortened version of ML MARK LEES when
used on the same or closely related skin care products. ... Avoidance of this kind of
confusion about the provenance of goods is the very problem to which the Lanham
Act was directed.”); Big M. Inc. v. U.S. Shoe Corp., 228 USPQ 614, 616 (TTAB 1985)
(“[W]e cannot ignore the propensity of consumers to often shorten trademarks....”).
Inasmuch as the marks have similar sounds, appearances, and commercial
impressions, the first du Pont factor also weighs in favor of likelihood of confusion.
C. Number and nature of similar marks
The Federal Circuit has held that evidence of extensive registration and use of a
term by others for similar services can be “powerful” evidence of the term’s weakness.
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Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). If the evidence
establishes that the consuming public is exposed to widespread third-party use of
similar marks for similar services, it “is relevant to show that a mark is relatively
weak and entitled to only a narrow scope of protection.” Palm Bay Imps. 73 USPQ2d
at 1693.
In this case, there is no evidence of third-party usage. However, as noted above in
the discussion of the disclaimer requirement, the Examining Attorney submitted a
handful of third-party registrations for marks comprised of FOUR PILLARS OF, or
its equivalent, followed by descriptive subject matter wording. While all but one of
the registrations are for some type of educational service (the other is for financial
planning for retirement) they are all for diverse, discrete, and specific areas of
instruction (e.g., sleep hygiene, Alzheimer’s prevention, responsible investing).
Applicant’s area of instruction is much closer to, and overlaps with, Registrant’s
subject matter; that is, the services identified in the application are much closer to
those identified in the cited registration than they are to the services of any third-
party registration. Moreover, Applicant has not submitted evidence to show that the
services in the third-party registrations may be considered “similar” to the services
in the cited registration. See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co.,
908 F.3d 1315, 128 USPQ2d 1686, 1693-94 (Fed. Cir. 2018) (quoting Century 21 Real
Estate Corp. v. Century Life of Am., 23 USPQ2d at 1701 and Weiss Assocs., Inc. v.
Serial No. 87958951
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HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990) (“[T]he
‘relevant du Pont inquiry is “[t]he number and nature of similar marks in use on
similar goods.”’”).
The “existence of [third-party] registrations is not evidence of what happens in the
market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). While there is no
minimum number of third-party marks required to show weakness, the few
registrations submitted by the Examining Attorney, coupled with no evidence of use
of any FOUR PILLARS marks, are a relatively small number compared to the
number of such marks in cases that have found weakness based on those marks. See,
e.g., In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (four third-party
registrations and no third-party uses were “a far cry from the large quantum of
evidence of third-party use and third-party registrations that was held to be
significant” in Jack Wolfskin and Juice Generation).11 Cf. TPI Holdings, Inc. v.
TrailerTrader.com, LLC, 126 USPQ2d 1409, 1427-28 n.92 (TTAB 2018) (67 third-
party registrations and numerous uses of TRADER-formative marks showed that the
formative was weak and could not form the basis of petitioner’s claimed family of
marks); i.am.symbolic, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (where the
conflicting marks were identical, evidence of the coexistence of the cited registered

11 In Jack Wolfskin, there were at least 14 third-party registrations and uses of paw print
marks that showed the weakness of that design element in the opposer’s mark, 116 USPQ2d
at 1136 n.2, while in Juice Generation, there were approximately 26 third-party registrations
and uses of marks containing the words “Peace” and “Love” that showed the weakness of
those words in the opposer’s marks. 115 USPQ2d at 1673 n.1.
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mark with two third-party registrations of the same mark for the same or similar
goods “falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark components
present in” Jack Wolfskin and Juice Generation). The Federal Circuit has held that
“extensive evidence of third-party use and registration ‘is powerful on its face,’ even
where the specific extent and impact of the usage has not been established,” Jack
Wolfskin, 116 USPQ2d at 1136 (quoting Juice Generation, 115 USPQ2d at 1674-75),
but because there is no such “extensive” evidence here – even stretching for
Applicant’s benefit what we might consider similar services – we must scrutinize the
third-party marks carefully to determine whether they show that the term FOUR
PILLARS for the services in the cited registration is weak. We find that they do not.
The du Pont factor assessing the number and nature of similar marks in use on
similar services is neutral.
D. Balancing the factors
We have carefully considered all of the evidence and arguments of record relevant
to the pertinent du Pont likelihood of confusion factors. Given the similarity of the
marks, the overlapping nature of the services and their channels of trade and classes
of purchasers, we find that the Office has met its burden in showing that Applicant’s
mark FOUR PILLARS OF WELLBEING so resembles Registrant’s mark FOUR
PILLARS as to be likely, when used in connection with Applicant’s identified
educational services, to cause confusion.
Serial No. 87958951
- 18 -
IV. Decision
The refusal under Section 6(a) to register Applicant’s mark FOUR PILLARS OF
WELLBEING in the absence of a disclaimer of WELLBEING is affirmed.12 The
refusal under Section 2(d) to register Applicant’s mark is also affirmed.

12 Normally we would allow time for an applicant to submit a required disclaimer under
Trademark Rule 2.142(g), 37 CFR § 2.142(g), and set aside the decision on the disclaimer;
however, because here we have also affirmed the refusal on the likelihood of confusion
ground, allowing a disclaimer at this point would serve no purpose. In the event that
Applicant appeals the decision with respect to the likelihood of confusion refusal and is
successful on appeal, Applicant is allowed thirty days from the date of the successful ruling
to submit the required disclaimer of WELLBEING.