TTAB Deems "DIRECT DIVINE LIGHT HEALING" Generic for and Merely Descriptive of Educational Services in the Field of Spiritual Healing

The Board granted a petition for cancellation of a registration for the mark DIRECT DIVINE LIGHT HEALING for educational services in the fields of metaphysics, spiritual healing, the aura and spiritual growth [DIRECT and HEALING disclaimed], finding it to be generic for and merely descriptive of the services. The Board ruled that the each of the constituent words is generic for respondent's services, and further that the meaning of each term is unchanged in the compound mark. Implicit in the genericness holding was a finding that the registered mark is highly descriptive of those services. Divine Light Healing Ministries, Inc. v. Spiritual Arts Institute, Cancellation No. 92074236 (April 19, 2022) [not precedential] (Opinion by Judge Mark Lebow).

The Board observed that "any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect of a sub-group of the genus, is generic." As usual, it found the relevant genus to be "commensurate with the identification of services in the Registration." The relevant consumers are doctors and the like, as well as consumers (ordinary and professional) who seek training in the identified fields.

Dictionary and website evidence shed some direct light on the meaning of the component terms. Additional Internet evidence included references to "Divine Light," "Divine Light Healing," and "Direct Divine Light Healing" used by the relevant public to identify "said healing technique or modality." Moreover, petitioner provided several examples of Respondent's use of its mark generically.

The Board found that "healing" is "clearly a key aspect" of respondent's services and therefore "generic of them." When combined into "divine light healing," the terms retain their generic significance. The word "direct" also identifies a key aspect of the services because "it implies that the healing is provided directly by or through the healer via the healer's connection with the Divine," and when "direct" is combined with "divine light healing," the terms retain their generic significance.

Excerpts from Respondent’s course materials . . . are most persuasive on this point. For example, Respondent clearly explains therein that "Direct healing is where the healing is done through the hands and the palm chakras in the hands. This is the simplest and safest way to be the channel of healing and can be used in all facets of consciousness: spiritual, physical, mental and emotional . . . ."

In sum, "consumers will perceive the [mark] in its ordinary dictionary sense as educational training in the direct application of Divine Light for healing."

Respondent argued that its use of the "TM" symbol, and use of that symbol by its students, shows the the term is a trademark. The Board was unmoved: "use of the 'TM" symbol . . . cannot by itself convert a term that does not function as a trademark into one that does." Nor does use of initial caps compel a different result. And even if respondent were the first to use the term, the Board is "not limited to determining the status of a term as of the date it was first adopted."

As Judge Rich explained in In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219, (CCPA 1978) (Rich, J., concurring), a term that immediately and unequivocally describes the purpose and function of Respondent’s services is a name for those services, for “[t]hat is what names do. They tell you what the thing is.” Respondent uses the terms DIRECT DIVINE LIGHT and DIRECT DIVINE LIGHT HEALING as the names of things, not as source-identifiers.

Turning to the mere descriptiveness issue, the Board pointed out that "[i]mplicit in [the] holding that DIRECT DIVINE LIGHT HEALING is generic . . . is [a] finding that it is also not only merely descriptive of Respondent's identified services, but highly descriptive of them under Section 2(e)(1).

And so, the Board granted the petition for cancellation on two grounds.

I reproduce Professor McCarthy's comment here:  

The Board says the rule to determine if a designation is a generic name is: “[A] term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole…. Thus, any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect of a sub-group of the genus, is generic.” Am I the only one that is annoyed by the CAFC and the T.T.A.B. constantly using the “refer to” test? What does “refer to” mean? I think “refers to” is a misleading and incorrect way of asking the crucial question because it smears the critical line between a generic name and a descriptive word. “Refers to” is such a vague phrase that it could easily include both product names and product descriptions. The Lanham Act in three places requires that the primary significance of the word be as a “generic name for the goods or services.”

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TTABlogger comment: How did this get past the examining attorney in the first place, at least on the mere descriptiveness issue?

Text Copyright John L. Welch 2022.