Pokotilow for American Diabetes Association, Inc. application to register the designation DIABETES RISK TEST uses of “diabetes risk test” introduced …
THIS DECISION IS NOT CITABLE AS PRECEDENT OF THE TTAB Date: 1/6/2006
UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re American Diabetes Association, Inc ________ Serial No 76149772 _______ Manny D Pokotilow of Caesar, Rivise, Bernstein, Cohen Pokotilow for American Diabetes Association, Inc Robert L Lorenzo, Trademark Examining Attorney, Law Office 111 Craig D Taylor, Managing Attorney _______ Before Quinn, Grendel and Rogers, Administrative Trademark Judges Opinion by Quinn, Administrative Trademark Judge: American Diabetes Association, Inc filed an application to register the designation DIABETES RISK TEST for educational services, namely, providing the public with a questionnaire developed to assess an individuals risk factors for developing diabetes1 Applicant claims
that its designation has acquired distinctiveness under Section 2f of the Trademark Act
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Application Serial No 76149772, filed October 19, 2000, alleging first use anywhere and first use in commerce on March 15, 1988
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The trademark examining attorney refused registration under Section 2e1 of the Act on the ground that applicants proposed mark,
when used in connection with applicants services, is generic and, thus, incapable of functioning as a source-identifying mark When the refusal to register was made final, applicant appealed2 briefs3 Applicant and the examining attorney submitted Applicant requested an oral hearing, but the
request subsequently was withdrawn In urging that the refusal to register be reversed, applicant claims that the examining attorney has not made a substantial showing of genericness to affirm the refusal
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Applicant, in its brief, requests that, in the event the Board determines the showing of acquired distinctiveness to be insufficient, the Board remand the application to the examining attorney to allow applicant an opportunity to respond to any objections that the examining attorney may have with applicants supplemental showing Applicant asserts that, because the examining attorney has taken the position that any evidence of acquired distinctiveness is irrelevant for a generic term, the examining attorney has not addressed applicants supplemental showing of acquired distinctiveness on its merits Brief, pp 10-11 We see no reason to remand, and the request is denied Although the examining
attorneys final refusal is primarily based on genericness, the examining attorney further indicated that registration also was refused on mere descriptiveness and because applicants Section 2f showing was insufficient Final Refusal, unnumbered p 3 In stating this, the examining attorney specifically mentioned the facts set forth in Mr Grahams second declaration 3 The examining attorney, in his brief, asks the Board to take judicial notice of a dictionary definition retrieved from an online dictionary Inasmuch as this Internet evidence was not made of record during the prosecution of the application, it will not be considered In re Total Quality Group Inc, 51 USPQ 1474, 1476 TTAB 1999
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According to applicant, the examining attorney has not shown by clear evidence that the general public views the designation DIABETES RISK TEST as being generic for applicants educational services Despite nearly two
decades of use of the designation by applicant, there is, applicant contends, substantially no usage of DIABETES RISK TEST by others Brief, p 8 Applicant argues
that the media uses of diabetes risk test introduced by the examining attorney are so indeterminate as to
be insufficient proof of generic use In support of
registration, applicant submitted two declarations of John Graham, applicants chief executive officer The first one
attested to applicants substantially exclusive and continuous use since 1988 of the designation DIABETES RISK TEST as a mark for applicants educational services second declaration furnished additional facts that indicate, according to applicant, relevant purchasers perceive the designation as a source indicator of applicants services The examining attorney maintains that the record includes clear evidence of the genericness of the designation sought to be registered The designation, The
according to the examining attorney, is generic for educational services rendered by way of a series of
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questions to assess an individuals risk for developing diabetes The examining attorney argues that other
organizations and entities, such as hospitals, need to use the designation in providing services to educate the public, through the use of risk-assessment questionnaires, about the dangers and risks of diabetes In support of the
refusal, the examining attorney introduced dictionary definitions of
diabetes, risk and test; and excerpts of articles retrieved from the NEXIS database showing uses of risk tests in the context of health and disease assessments, and uses of diabetes risk tests The issues on appeal are whether the term DIABETES RISK TEST is generic for applicants educational services, namely, providing the public with a questionnaire developed to assess an individuals risk factors for developing diabetes, and, alternatively, if such term is not generic but rather just merely descriptive, whether it has acquired distinctiveness Applicant has conceded the mere
descriptiveness of the designation sought to be registered by seeking registration pursuant to Section 2f In
essence, applicants Section 2f claim of acquired distinctiveness is a concession that the mark is not inherently distinctive and that it therefore is not registrable on the Principal Register absent a sufficient
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showing of acquired distinctiveness
See Yamaha
International Corp v Hoshino Gakki Co Ltd, 840 F2d 1572, 6 USPQ2d 1001, 1005 Fed Cir 1988 [Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2f, the statute accepts a lack of
inherent distinctiveness as an established fact] emphasis in original; and In re Leatherman Tool Group, Inc, 32 USPQ2d 1443 TTAB 1994 Thus, the issue of mere
descriptiveness is not an issue in this appeal Genericness We first turn to the issue of whether the designation DIABETES RISK TEST is generic when used in connection with educational services of providing the public with a questionnaire developed to assess an individuals risk factors for developing diabetes A mark is a generic name
if it refers to the class or category of goods and/or services on or in connection with which it is used In re
Dial-A-Mattress Operating Corp, 240 F3d 1341, 57 USPQ2d 1807 Fed Cir 2001, citing H Marvin Ginn Corp v International Association of Fire Chiefs, Inc, 782 F2d 987, 228 USPQ 528 Fed Cir 1986 The test for
determining whether a mark is generic is its primary significance to the relevant public Section 143 of the
Trademark Act; In re American Fertility Society, 188 F3d
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1341, 51 USPQ2d 1832 Fed Cir 1999; Magic Wand Inc v RDB Inc, 940 F2d 638, 19 USPQ2d 1551 Fed Cir 1991; and H Marvin Ginn Corp v International Association of Fire Chiefs, Inc, supra The United States
Patent and
Trademark Office has the burden of establishing by clear evidence that a mark is generic and thus unregistrable In
re Merrill Lynch, Pierce, Fenner and Smith, Inc, 828 F2d 1567, 4 USPQ2d 1141 Fed Cir 1987 Evidence of the
relevant publics understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications In re Northland Aluminum Products, Inc, 777
F2d 1556, 227 USPQ 961 Fed Cir 1985 Our first task under Marvin Ginn is to determine, based on the evidence of record, the genus of applicants services In its application, applicant identified the
services as educational services, namely, providing the public with a questionnaire developed to assess an individuals risk factors for developing diabetes The
record establishes that applicant educates individuals about diabetes by distributing its own risk test that allows these individuals, by answering seven questions, to learn of their risk of developing diabetes Thus, the
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genus of services is accurately reflected by the recitation of services in the involved application We next must determine whether the
designation DIABETES RISK TEST is understood by the relevant public primarily to refer to that genus of services The examining attorney furnished dictionary definitions of the words comprising the designation sought to be registered Diabetes is defined as any of various
abnormal conditions characterized by the secretion and excretion of excessive amounts of urine The term risk
means possibility of loss or injury; something that creates or suggests a hazard The term test is defined
as a critical evaluation; something as a series of questions or exercises for measuring the skill, knowledge, intelligence, capacities, or aptitudes of an individual or group Merriam-Websters Collegiate Dictionary
The specimens comprise web pages from applicants web site on the Internet One of the links on the web site
allows a visitor to Take the Risk Test, and another link lets a visitor access Frequently Asked Questions regarding the Risk Test The specimen contains the seven-question
questionnaire comprising applicants Diabetes Risk Test, together with the following introductory remarks:
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Could you have diabetes and not know it? Sixteen million Americans have diabetes–one in
three does not know it Take this test to see if you are at risk for having diabetes Diabetes is more common in African Americans, Hispanics/Latinos, American Indians, Asian-Americans and Pacific Islanders If you are a member of one of these ethnic groups, you need to pay special attention to this test To find out if you are at risk answer the following questions and click on CALCULATE to see what information is returned Also of record are a number of excerpts of articles retrieved from the NEXIS database showing the term risk test used in connection with a variety of health and disease assessments following uses: A representative sample shows the
the program also includes a risk test for
the disease; Healthy Living: Diabetes Living, includes disease risk tests for customers; Shields heart attack risk test; Heart group offers free risk tests; heart disease risk test; some health risk tests deliberately err on the side of caution; several stations giving consumers free health-risk tests and other feedbackoriented activities; cancer risk test results; cancer risk test is proving elusive; if you would like to take the American Heart Associations cardiovascular disease risk test;
osteoporosis risk test; genetic-risk test
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can complicate decisions; and hospital offering health risk tests Mr Graham himself, in his second declaration, uses risk test in a generic manner see infra, just like the uses in the NEXIS articles introduced by the examining attorney The examining attorney also introduced a number of NEXIS articles showing generic uses of diabetes risk tests with no capitalization, with no reference to applicant A representative sample follows: oral health demonstrations, a visit by the Glow Germ that teaches children proper hand washing techniques, a diabetes risk test, chair massage The Providence Journal, February 25, 2005 Diabetes Center Open House, diabetes risk tests, podiatry screenings and eye health information available, to recognize National Diabetes Awareness Month, sponsored by Montgomery General The Washington Post, November 6, 2003 Customers will be able to complete a self-assessment diabetes risk test and will be provided with an exclusive diabetes resource book and magazine to learn about early detection The Stevens Point Journal, September 5, 2003 For diabetes risk tests, stroke-risk assessments, body fat analysis
and screenings for cholesterol, blood pressure, glucose, osteoporosis The News Journal, September 20, 2002
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The Barnes-Jewish St Peters Hospital Health Wise Center will offer diabetes risk tests during regular business hours on Monday and March 29 St Louis Post-Dispatch, March 22, 2002 Lions members will be in the lobby offering visitors a diabetes risk test Chicago Daily Herald, March 12, 2002 Free medical tests also will be provided at the fair, including a diabetes risk test, anonymous HIV testing, depression screening Belleville News-Democrat, May 6, 2001 The screenings will include body fat analyses, diabetes risk tests, breast cancer and depression tests The News Journal, October 6, 2000 Last month Wal-Mart launched a yearlong Diabetes Living campaign that included diabetes risk tests for customers and literature and programs about preventing and controlling the disease The Washington Post, October 3, 2000 The board also learned the Tremont Lions Club will distribute sugar-free candy and diabetes risk tests March 31 The Pantagraph, March 21, 2000 Cleveland Regional Medical Center in Shelby is offering free diabetes risk tests in its lobby Charlotte
Observer, March 22, 1999 Each dinner guest received a pamphlet containing a diabetes risk test that detailed symptoms of the disease and risk factors Tulsa World, May 5, 1998
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Several of the other NEXIS excerpts either are duplicates or were generated by wire services4 In
addition, applicant is correct in pointing out that many of the references to diabetes risk test in the other articles are, in fact, references to applicants test would point out, however, that even some of these references show diabetes risk test used in a generic fashion, with all lower case letters and no capitalization Use in this manner would be perceived as generic by individuals reading the articles examples of such use: On Tuesday, the American Diabetes Association is urging people to take a diabetes risk test by calling 8883422383 or visiting the Web site at wwwdiabetesorg Times-Picayune, March 26, 2000 People also can obtain a free diabetes risk test today by calling the American Diabetes Association at 800342-2383 Daily Oklahoman, March 24, 1998 Determining if you are at risk for the disease is as easy as answering seven simple questions on the American Diabetes Associations
diabetes risk test St Petersburg Times, March 26, 1996 The following are We
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NEXIS excerpts from wire services are generally accorded limited probative value because it cannot be assumed that they have been seen in a newspaper or periodical In re Patent and Trademark Services Inc, 49 USPQ2d 1537, 1538 n 2 TTAB 1998
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Based on this evidence, we find that diabetes risk test is used in a generic manner in the medical field to name a specific type of test, that is, a test to determine if one is at risk for developing diabetes The relevant public are ordinary consumers Given the
evidence of widespread use of the designation diabetes risk tests in a generic manner to name a type of test or series of questions, ie, a questionnaire, it is clear that ordinary consumers would understand the designation primarily to refer to a specific type of risk test See In re American Institute of Certified Public
Accountants, 65 USPQ2d 1972 TTAB 2003 [CPA EXAMINATION is generic and must be disclaimed apart from UNIFORM CPA EXAMINATION for printed matter, namely, practice accounting examinations, accounting exams, accounting information booklets; and prior accounting examination
questions and answers] Inasmuch as applicant is seeking to register a service mark rather than a trademark, an additional consideration applicable to our genericness determination in this case is the legal principle that a term which is generic for a particular class of goods is also deemed to be generic for the services of selling those goods Although applicants
test apparently is distributed free of charge, the same
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legal principle would apply
See, eg, In re Candy
Bouquet International, Inc, 73 USPQ2d 1883 TTAB 2004 [CANDY BOUQUET generic for retail, mail and computer order services in the field of gift packages of candy]; In re CyberFinancialNet, Inc, 65 USPQ2d 1789 TTAB 2002 [BONDSCOM generic for providing information regarding financial products and services on the Internet and providing electronic commerce services on the Internet]; In re A La Vielle Russie Inc, 60 USPQ2d 1895 TTAB 2001 [RUSSIANART generic for a particular field or type of art and also for dealership services directed to that field]; In re Log Cabin Homes Ltd, 52 USPQ2d 1206 TTAB 1999 [LOG CABIN HOMES generic for architectural design of buildings, especially houses, for others, and
retail outlets featuring kits for constructing buildings, especially houses]; In re Bonni Keller Collections Ltd, 6 USPQ2d 1224 TTAB 1987 [LA LINGERIE generic for retail store services in the field of clothing]; and In re Half Price Books, Records, Magazines, Incorporated, 225 USPQ 219 TTAB 1984 [HALF PRICE BOOKS RECORDS MAGAZINES generic for retail book and record store services] See also In re
Northland Aluminum Products, supra [BUNDT generic of a ring cake mix despite fact that evidence showed generic
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use of term only for a type of cake, and not for a cake mix] Applying this principle to the facts of this case, we find that DIABETES RISK TEST is generic as used in connection with applicants educational services The
designation sought to be registered should not be subject to exclusive appropriation even if applicant is the leading organization in educating the American public about diabetes; other organizations and entities should have an equal right to use diabetes risk test in connection with educational services provided via their own questionnaires for risk assessment In re Boston Beer Co LP, 198 F3d
1370, 53 USPQ2d 1056 Fed Cir 1999 Acquired
Distinctiveness If applicants proposed mark is generic, as we have concluded it is, then no amount of evidence of acquired distinctiveness can establish that the mark is registrable In re Northland Aluminum Products, Inc, supra at 964 Even long and successful use of a term does not automatically convert a generic term into a non-generic term In re Helena Rubinstein, Inc, 410 F2d 438, 161 However, for the sake of
USPQ 606, 609 CCPA 1969
completeness, we now address applicants claim that its mark has acquired distinctiveness On this issue,
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applicant has the burden of proof
In re Hollywood Brands,
Inc, 214 F2d 139, 102 USPQ 294, 295 CCPA 1954[T]here is no doubt that Congress intended that the burden of proof [under Section 2f] should rest upon the applicant [L]ogically that standard becomes more difficult as the marks descriptiveness increases Corp, supra at 1008 Yamaha International
In this case that standard is
extremely difficult to meet since, if DIABETES RISK TEST is not generic for applicants services, it must be considered highly descriptive of them John Graham, applicants chief executive officer, asserts in his second declaration that the mark
DIABETES RISK TEST has acquired distinctiveness for applicants educational services Mr Graham goes on to state, in
pertinent part, as follows regarding, in his own words, applicants risk test: Applicant has been using the mark DIABETES RISK TEST since 1988 The mark DIABETES RISK TEST has become distinctive through applicants exclusive and continuous use The mark DIABETES RISK TEST has become well known to the public by virtue of the fact that millions of the tests have been distributed In 1998, 43 million risk tests were distributed; in the year 1999 and 2000 8 million risk tests were distributed in each year;
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and in the year 2001 65 million risk tests were distributed In addition to hard copies of the risk test distributed, the DIABETES RISK TEST website was visited 57,079 times from June to December 2001 The American Diabetes Association receives 30 to 50 requests each year from other organizations to reprint the risk test The use of the designation since 1988, and the almost 27 million tests distributed during the period of 19982001, indicate that the risk test has been popular among health-conscious Americans Likewise, the number of
visitors to
applicants web site and the number of requests to reprint applicants risk test bear on the popularity of the test It is difficult, however, to accurately gauge
the level of this popularity in the vast medical educational services field in the absence of context, that is, additional information such as how widespread is the distribution of risk tests in the medical field and whether the extent of distribution of applicants test is above or below the norm, or additional information as to how the numbers of visitors to applicants web site compare to other medical field web sites offering risk tests Standing alone, the test distribution number and the visitors number appear to be less than impressive in the
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enormous medical field
In any event, this evidence does
not show that the relevant consumers of applicants educational services namely, ordinary consumers have come to view the designation DIABETES RISK TEST as applicants source-identifying mark In re Bongrain International
Corp, 894 F2d 1316, 13 USPQ2d 1727 Fed Cir 1990; and In re Recorded Books Inc, 42 USPQ2d 1275 TTAB 1997 The
issue here is the achievement of distinctiveness, and the evidence falls
short of establishing this In the event DIABETES RISK TEST is found not generic, we conclude that the evidence is insufficient to support registration of applicants highly descriptive mark on the Principal Register pursuant to the provisions of Section 2f Given the highly descriptive nature of DIABETES RISK
TEST for applicants educational services rendered by way of a test to assess risk for developing diabetes, much more evidence especially in the form of direct evidence from the relevant public than what applicant has submitted would be necessary to show that the mark has become distinctive of applicants services That is to say, the
greater the degree of descriptiveness, the greater the evidentiary burden on the applicant to establish acquired distinctiveness Yamaha International Corp v Hoshino
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Gakki Co, supra; and In re Merrill Lynch, Pierce, Fenner Smith, Inc, supra Decision: The refusal to register on the ground of If the designation DIABETES RISK
genericness is affirmed
TEST is ultimately found not generic, applicant nonetheless has not met its burden of proving that the designation has acquired distinctiveness
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