TTAB Test: Is TOPDOC Merely Descriptive of Physician Referral Services?

The USPTO refused registration of the mark TopDoc Connect, in standard character and design form, absent a disclaimer of the term TOPDOC. The Examining Attorney deemed that term merely descriptive of applicant's physician referral and related medical services because it describes a feature of the services, namely, in assisting consumers in selecting "top" doctors. Applicant pointed to hundreds of registered marks having the "TOP" formative coupled with a generic or descriptive term, and without a disclaimer of a Section 2(f) claim. How do you think this came out? In re Armadahealth, LLC, Serial Nos. 86713902; 86802355 (June 28, 2017) [not precedential] (Opinion by Judge Quinn).

The Examining Attorney relied on an excerpt from applicant’s website, on two third-party websites, dictionary definitions, a thesaurus entry, and on five third-party registrations in which TOP DOCS or TOP DOCTORS was treated as descriptive.

Applicant contended that the hundreds of third-party registrations it submitted established that "the word 'top' when combined with a noun that is descriptive/generic as to the goods/services identified in the registration/application consistently has been treated as a suggestive term, which would render a requirement for disclaimer of a unitary term containing 'top' inappropriate ...." The registered marks included, for example, TOPDOCTORS LABS and design (Reg. No. 4080838); AMERICA’S NEXT TOP MODEL (Reg. No. 3154101); AMERICA’S TOP TRIAL LAWYERS (Reg. No. 4723017); TOP CHEF (Reg. No. 3759407); TOP COP (Reg. No. 4858865); TOP DRIVER (Reg. No. 1959267); NEXT TOP ATHLETE (Reg. No. 4837993).

The Board observed once again that there is "a thin line of demarcation between a suggestive mark and a merely descriptive one, with the determination of which category a mark falls into frequently being a difficult matter involving a good measure of subjective judgment." Any doubt is to be resolved in favor of the applicant.

Generally, “dueling” third-party registrations are entitled to limited probative value; many times, the duel is fairly even, with similar numbers in support of the respective positions of the applicant and the examining attorney, which shows a general inconsistency. In the present case, however, the Office has been quite consistent in dealing with the registrability of TOP-formative marks. In all but the five registrations highlighted by the Examining Attorney, it appears that the Office considers TOP-marks to be suggestive, as evidenced by the numerous registrations submitted by Applicant.

The Board found that applicant's mark falls on the suggestive side of the line.

The wording TOPDOC does not immediately describe any specific characteristic or feature of Applicant’s services with any degree of particularity. At worst, TOPDOC is highly suggestive of Applicant’s services, which provide information about and referrals to leading or highly rated physicians, but falls short of being merely descriptive as articulated by the Examining Attorney.

The Board observed that the the terms "descriptive" and "suggestive" are not mutually exclusive. "There is some description in any suggestion or the suggestive process does not occur. The term TOPDOC in Applicant’s mark, in suggesting that Applicant’s services assist prospective patients in selecting the best physicians, fits this mold."

Therefore, the Board reversed the refusal.


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Text Copyright John L. Welch 2017.