The Contentment FoundationDownload PDFTrademark Trial and Appeal BoardJun 18, 201987958951 (T.T.A.B. Jun. 18, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: June 18, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re The Contentment Foundation _____ Serial No. 87958951 _____ 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 Serial No. 87958951 - 2 - 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. Serial No. 87958951 - 3 - 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). Serial No. 87958951 - 4 - 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). Serial No. 87958951 - 5 - 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. Serial No. 87958951 - 6 - 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. Serial No. 87958951 - 7 - 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 Serial No. 87958951 - 8 - 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). Serial No. 87958951 - 9 - 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). Serial No. 87958951 - 10 - 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 - 11 - 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 - 12 - 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 Serial No. 87958951 - 13 - 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 Serial No. 87958951 - 14 - 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. Serial No. 87958951 - 15 - 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 - 16 - 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. Serial No. 87958951 - 17 - 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. Copy with citationCopy as parenthetical citation