Precedential No. 36: TTAB Deems ALLERGY CARE Generic for ... Guess What?

Applicant Haden sought a registration  on the Supplemental Register for the mark shown below, for "Medical and health care services, namely, medical treatment of allergies, asthma, immune disorders, and shortness of breath." The Board agreed with Examining Attorney Andrew Rhim that the term ALLERGY CARE is generic for the recited services, but it concluded that the mark is registrable on the Supplemental Register with a disclaimer of ALLERGY CARE. In re James Haden, M.D., P.A., 2019 USPQ2d 467424 (TTAB 2019) [precedential] (Opinion by Judge Thomas Shaw).

Because Applicant Haden sought registration on the Supplemental Register, he conceded that the proposed mark, as a whole, is "at best merely descriptive" of his services. Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972) The question was whether it is generic.

The generic name by which a [service] is known is not a mark which can be registered on the Supplemental Register under section 23 because such a name is incapable of distinguishing applicant’s [services] from [services] of the same name . . . by others.” Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960).

As usual, the Board found that applicant’s recitation of services adequately defined the genus at issue. The relevant consuming public consists of "consumers seeking medical and health care services regarding allergies, asthma, immune disorders, and shortness of breath"

Dictionary definitions and Internet webpages convinced the Board that "ALLERGY CARE is a phrase commonly used by medical professionals in their advertising to refer to their practices that care for patients with allergies." The Board had no doubt that consumers "would readily understand the term ALLERGY CARE to refer to the genus of services defined by Applicant’s recitation of services."

The next question for the Board was whether applicant's mark, as a whole, is registrable on the Supplemental Register: i.e., "whether, given the background design, color, and stylization, the entire mark is capable of distinguishing Applicant’s services . . . ." If, so, a disclaimer of the generic term ALLERGY CARE would be required. See In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977) (Section 6 of the Trademark Act is equally applicable to the Supplemental Register.)

The examining attorney argued that "[s]tylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself," and that background designs comprised of common shapes are registrable only upon a showing that the design itself is distinctive.

The Board pointed out that the examining attorney's argument concerned only applications to register a mark on the Principal Register, where distinctiveness is required. For the Supplemental Register, an applicant need only show that the mark is capable of indicating source, the question being "whether the stylization of the wording and the background design are capable of ever functioning as a mark."

Applicant's mark contains a combination of colors, borders, and stylized generic wording making it more than an ordinary geometric shape or stylization alone with no ability to indicate source. Indeed, common geometric shapes with simple embellishments have registered with adequate showings of acquired distinctiveness. See, e.g., In re Raytheon Co., 202 USPQ 317, 319-20 (TTAB 1979) (evidence of record sufficient to establish acquired distinctiveness of a light-colored oval within a black rectangular carrier).

The Board found that applicant's combination of colors, borders, and stylization is capable of distinguishing the source of his services.

And so the Board affirmed the finding of genericness, but reversed the refusal to register on the Supplemental Register provided that applicant's disclaims the term with a disclaimer of ALLERGY CARE

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TTABlog comment: Obviously, it was not the straightforward discussion of genericness that made this opinion precedential, but rather the Trademark 101 discussion of eligibility of the mark's eligibility for the Supplemental Register.

PS: here is the Raytheon background design mark discussed above:

Text Copyright John L. Welch 2019.