Thursday, April 05, 2007

Precedential No. 26: TTAB Finds Certification Mark Specimens Adequate, but "CRNA" Lacking in Acquired Distinctiveness

This applicant dodged two PTO bullets -- inadequate specimens and genericness -- but failed to convince the Board that the proposed certification mark CRNA has acquired distinctiveness under Section 2(f). [I can't explain exactly why, but I kept dozing off while reading this opinion]. In re The Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) [precedential].

click on photo for larger picture

The Examining Attorney contended that the use of CRNA on the specimens "conveys only the commercial impression of a title or degree and, thus, does not function as a certification mark." The Board reviewed a passel of prior TTAB decisions concerning certification mark specimens, and concluded that this Applicant passed the test.

Applicant's baseball cap, apron, badge, pin, shoelaces, and other material merely evidenced promotion or use of CRNA "without any indication of what the term is identifying." However, the sample certificate (shown above) and Applicant's brochure and literature do indicate that CRNA serves as a certification mark. In particular, the certificate "indicates that the holder thereof, a CRNA, has satisfied the requirements for certification by applicant," and the designation CRNA "is displayed in [such] a manner that it would be viewed by the ultimate recipients of the services."

Accordingly, the Board reversed the refusal on the ground that CRNA fails to function as a certification mark.

As to genericness, the Board found that the term "certified registered nurse anesthetist" is generic. However, as to the initials CRNA, the PTO failed to show by "clear evidence" that CRNA "has become so generally understood as an initialism for 'certified registered nurse anesthetist' as to be substantially synonymous therewith." Moreover, in two of the definitions cited by the PTO, CRNA "may well be understood as a mark," and there was no third-party use of CRNA. Although the Board had some doubt on the issue, it resolved the doubt (as it must) in Applicant's favor.

Finally, as to Applicant's 2(f) evidence, Applicant claimed that it has used CRNA for nearly fifty years, and has certified some 40,000 nurse anesthetists. The Board, however, noted the lack of "direct evidence regarding how surgical patients, doctors and hospital administrators have come to view the designation CRNA." Noting that CRNA is "highly descriptive," and therefore that the evidentiary burden to show acquired distinctiveness is greater, the Board concluded that Applicant's 2(f) showing was insufficient, and it therefore affirmed the PTO's refusal on the ground of mere descriptiveness.

Text Copyright John L. Welch 2007.


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