Linda Morse

Trademark Trial and Appeal Board

Jun 29, 2017

No. 87028911 (T.T.A.B. Jun. 29, 2017)

This Opinion is Not a
Precedent of the TTAB
Mailed: June 29, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Morse
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Serial No. 87028911
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Eugene Beliy of Breanlaw LLC for Linda Morse.

Kathleen Schwarz, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
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Before Zervas, Ritchie and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Linda Morse (“Applicant”) seeks registration of GAIA ACUPUNCTURE, in
standard characters (with ACUPUNCTURE disclaimed), for “acupuncture services,
not including energy healing, sound healing, shamanic, hypnotherapy, or
psychotherapy services.”1 The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that Applicant’s mark so resembles the
registered mark GAIA SKY, in standard characters, for, inter alia, “providing in
person energy healing services, namely, Shamanic, hypnotherapy, psychotherapy,

1 Application Serial No. 87028911, filed May 8, 2016 under Section 1(a) of the Trademark
Act.
Serial No. 87028911
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and sound healing”2 that use of Applicant’s mark in connection with Applicant’s
services is likely to cause confusion or mistake or to deceive. After the refusal became
final, Applicant appealed and filed a request for reconsideration which was denied.
Applicant and the Examining Attorney filed briefs.
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the likelihood of confusion factors set forth in 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, 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
marks.”).
Although Applicant amended her identification of services to specifically exclude
Registrant’s services therefrom, the record reveals that Applicant’s and Registrant’s
services are nevertheless all related subcategories of “alternative medicine.” Request
for Reconsideration of January 4, 2017 Ex. E (“Wikipedia.org” entry on energy
medicine); Office Action of November 29, 2016 (“webmd.com” entry on
Complementary and Alternative Medicine). Furthermore, the National Center for

2 Registration No. 4579483, issued August 5, 2014. The registration includes additional goods
and services which are not bases for the refusal.
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Complementary and Integrative Health identifies both acupuncture and
hypnotherapy as “mind and body practices.” Denial of Request for Reconsideration of
January 31, 2017 (printout from “nccih.nih.gov”).
More importantly, Applicant’s and Registrant’s services as currently identified are
offered by third-party alternative medicine providers under the same names and
marks:
Stony Brook Medicine offers acupuncture as well as
hypnotherapy.

Sonoma Valley Hospital offers acupuncture as well as
integrative psychotherapy and Brennan energy healing.

Gainesville Holistic Health Center offers acupuncture as
well as energy healing and integrative psychotherapy.

Omni Wellness NYC offers acupuncture as well as
psychotherapy and hypnotherapy.

Whole Health Center offers acupuncture as well as
psychotherapy, hypnotherapy and energy healing.

Healing Arts of Capitol Hill offers acupuncture and
psychotherapy.

The Healing Tree offers acupuncture as well as
psychotherapy.

The Healing Arts Center offers acupuncture and
psychotherapy.

The Healing Sanctuary O.C. offers acupuncture and
psychotherapy.

Integrative Trauma Treatment Center offers acupuncture
as well as psychotherapy.

Serial No. 87028911
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Seattle Healing Arts Center offers acupuncture as well as
energy healing, hypnotherapy, psychotherapy and sound
healing.

Denial of Request for Reconsideration of January 31, 2017 (printouts from
“stonybrookmedicine.edu,” “svhfoundation.com” and “ghhcenter.com”); Office Action
of November 29, 2016 (printouts from “omniwellnessnyc.com,”
“wholehealthcenters.com,” “healingartscapitolhill.com,” “healingtr.com,”
“healingphilly.com,” “thehealingsanctuaryoc.com” and “traumacenternw.com”);
Office Action of August 29, 2016 (printout from “seattlehealingarts.com”). In addition,
the Examining Attorney introduced more than 10 third-party use-based registrations
suggesting that the same sources offer acupuncture services on the one hand and
energy healing services (including those specifically listed in Registrant’s
identification of services) on the other, under the same marks.3 Id. “Third-party
registrations which cover a number of differing goods and/or services, and which are
based on use in commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate from a single source.”
See, In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also
In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).

3 These include Registration Nos. 3202496 (acupuncture and psychotherapy); 3489516
(acupuncture and psychotherapy); 2838693 (acupuncture and energy healing); 3984523
(acupuncture and psychotherapy, hypnotherapy and energy work); 4355775 (acupuncture
and energy healing); 4545498 (acupuncture and psychotherapy); 4965563 (acupuncture and
energy healing); 5016811 (acupuncture and sound healing therapy).
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This evidence establishes that Applicant’s acupuncture services are related to
Registrant’s energy healing services, specifically Registrant’s hypnotherapy,
psychotherapy and sound healing services. The evidence of third-party use of
identical marks for Applicant’s services on the one hand and one or more of
Registrant’s services on the other also establishes that these services travel in the
same channels of trade (primarily alternative medicine health care providers). It does
not matter that Applicant specifically excludes “energy healing, sound healing,
shamanic, hypnotherapy, or psychotherapy services” from her identification of
services, because the evidence establishes that Applicant’s identified “acupuncture
services” are related to and travel in the same channels of trade as these services.
Consumers would expect that these services could be provided by the same source.
These factors weigh in favor of finding a likelihood of confusion.
Turning to the marks, they are similar “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports 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). Indeed, both marks begin with the same
term, GAIA, which is the dominant portion of both marks in part because it comes
first. 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, Palm Bay Imports Inc., 73 USPQ2d
at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
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It is also the dominant element of Applicant’s mark because the term that follows
it, ACUPUNCTURE, is generic for her services and is disclaimed. Descriptive,
generic and disclaimed terms are entitled to less weight in our analysis. Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”)
(quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534
(TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE, is dominant element of
BINION’S ROADHOUSE); 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 familiar with Registrant’s mark who encounter
Applicant’s mark would be likely to focus on the initial and more distinctive term
GAIA, and could be confused thereby, especially because acupuncture is related to
Registrant’s services.
While GAIA ACUPUNCTURE and GAIA SKY are distinguishable when
considered side-by-side, that is not the test. Rather, the test is whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as
to the source of the services offered under the marks is likely to result. San Fernando
Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB
1991).
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Here, considered in their entireties, Applicant’s and Registrant’s marks look and
sound similar because they both begin with the term GAIA. They also convey similar
meanings in the context of the services. “Gaia” is defined as “the hypothesis that the
living and nonliving components of earth function as a single system in such a way
that the living component regulates and maintains conditions (as the temperature of
the ocean or composition of the atmosphere) so as to be suitable for life; also: this
system regarded as a single organism.”4 Office Action response of November 1, 2016
Exs. A and B. While the significance of Gaia in the context of alternative medicine
services is not readily apparent, whatever meaning it has would be the same for both
Applicant’s and Registrant’s related alternative medicine services. Because the
marks are more similar than dissimilar when considered in their entireties, this
factor also weighs in favor of finding a likelihood of confusion.5
In short, because the marks are similar, the services related and the channels of
trade overlap, confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

4 www.merriam-webster.com/dictionary/Gaia.
5 Applicant’s reliance on third-party registrations to establish that the cited mark is weak is
misplaced. The cited third-party registrations are not probative on this point, especially
because none of them are for services related to those in the involved application or cited
registration. See National Cable Television Ass’n Inc. v. American Cinema Editors Inc., 937
F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) and SBS Products Inc. v. Sterling &
Rubber Products, Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988). Indeed, Applicant’s argument
is exactly the type of “abstract proposition” asserted in National Cable Television Ass’n, and
here, as there, it is “essentially meaningless.” Applicant’s mark is for services that are much
closer to Registrant’s services than any of the cited marks.