Thursday, January 12, 2006

TTAB Finds "DIABETES RISK TEST" Generic for ... Guess What?

There was no sugar coating on the Board's affirmance of a genericness refusal of the phrase DIABETES RISK TEST for "educational services, namely, providing the public with a questionnaire developed to assess an individual's risk factors for developing diabetes." The Board went on to hold, in the alternative, that the phrase (if not generic) lacked secondary meaning under Section 2(f). In re American Diabetes Association, Inc., Serial No. 76149772 (January 6, 2006) [not citable].

Examining Attorney Robert L. Lorenzo relied on dictionary definitions of the component words, and on NEXIS articles show pertinent use of the terms "risk test(s)" and (most importantly) "diabetes risk test(s)."

Applicant contended that the "media uses" of "diabetes risk tests" were "so indeterminate as to be insufficient proof of generic use." It claimed use of the phrase for nearly two decades, with "substantially no use of DIABETES RISK TEST by others."

Applying the two-part test of H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986), the Board first ruled (with little discussion) that the genus of the services "is accurately reflected by the recitation of services in the involved application." The next question was whether the relevant public understands the term primarily to refer to that genus.

Applicant's specimens of use included a webpage setting forth the "seven-question questionnaire" comprising the "Diabetes Risk Test." Although many of the NEXIS references referred to Applicant's test, the evidence led the Board to conclude 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." Furthermore, "it is clear that ordinary consumers would understand the designation primarily to refer to a specific type of risk test."

The Board noted that Applicant sought to register a service mark, not a trademark, but it pointed to the legal principle that "a term which is generic for a particular class of goods is also deemed generic for the services of selling those goods." [See, e.g., In re Candy Bouquet Int'l, Inc., 73 USPQ2d 1883 (TTAB 2004)]. The same principle applies even though Applicant distributes the test free of charge, rather than selling it.

The Board therefore concluded that DIABETES RISK TEST is generic for the identified services.

For purposes of completeness, the Board also considered Applicant's Section 2(f) claim of acquired distinctiveness (assuming the phrase is not generic). The applicable standard "is extremely difficult to meet since, if DIABETES RISK TEST is not generic for applicant's services, it must be highly descriptive of them."

Applicant's CEO declared that the phrase has been in use since 1988, that some 27 million tests have been distributed, and that its DIABETES RISK TEST website was visited 57,000 times in the last half of 2001. The Board noted that this evidence indicates that the test "has been popular among health-conscious Americans," but it pointed out that these numbers were not put in context in relation to other risk tests distributed in the medical field and other websites offering risk tests. "Standing alone," these numbers "appear to be less than impressive in the enormous medical field." Most significantly, "this evidence does not show that the relevant consumers of applicant's educational services (namely, ordinary consumers) have come to view the designation DIABETES RISK TEST as applicant's source-identifying mark."

In short, "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 applicant's services."

TTABlog genericness test: I am a series of questions designed to assess your risk of developing diabetes. What would you call me?
Uhhhh, a diabetes risk test?

TTABlog note: In no way do I mean to make light of the seriousness of this terrible disease. I recommend the series of article on diabetes, published by the New York Times this week. Link here (you may need to be a subscriber).

Text Copyright John L. Welch 2006


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