Precedential No. 1: TTAB Affirms Mere Descriptiveness Refusal of "DXPORTAL" for an Internet Portal Providing Drug Prescription Information
In a less that scintillating case, the Board affirmed a Section 2(e)(1) refusal to register the proposed mark DXPORTAL, finding the mark to be merely descriptive of "providing an Internet website portal in the healthcare field to provide a patient and caregivers with the patient's drug prescription information." Dictionary definitions of DX (a common abbreviation for "diagnostic") and of "portal," information on applicant's and third-party websites, and its acknowledged intention to offer diagnostic services in connection with the mark, led the Board to conclude that consumers would immediately understand that the mark "identifies a portal that will also link them with diagnostic information, specifically the diagnosis relied upon by the healthcare provider who wrote the drug prescription." In re NextGen Management, LLC, 203 USPQ2d 14 (TTAB 2023) [precedential] (Opinion by Judge Frances S. Wolfson).
Applicant argued that, although it "does intend (in the future) to include limited diagnostic information on the portal, the storing of diagnostic information ... is not the focus of the portal, nor is it recited in the description of services of the mark." The Board confirmed that it was proper for the Examining Attorney to look at applicant's website for possible evidence of descriptive use. The website demonstrated that providing diagnostic information is an "integral part of Applicant's website relating to drug prescriptions, even if such diagnostic information is not the paramount aspect." In short, [d]iagnostic information necessarily is tied to prescriptions, which treat the conditions that are diagnosed."
Moreover, third-party webpages "illustrate how diagnostic information and therapeutic solutions, such as prescription drugs, are integral to each other." These webpages showed "an inherent relationship between diagnostic services and treatment, which could include prescribing drugs to address a condition." Furthermore, the term "drug prescription information" is broad enough to encompass diagnostic information on which a prescription is based.
The Board concluded that the mark DXPORTAL "as a whole conveys no more than the sum of its individually descriptive parts." And so, the Board affirmed the refusal.
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TTABlogger comment: I invite suggestions as to why this opinion is precedential. I can't think of a reason.
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 1/06/2023
4 comments
4 Comments:
Likely because of the evidentiary issue. Applicant argued that because they were 1(b) intent to use, and because the website was not actively performing the services (i.e., the functions of a portal), that the website evidence should not be considered by the Board. The Board disagreed and said that the website was public facing, contained no indication that it was a beta website, and that there was no evidence provided to prove the website was a "mockup," only speculation and argument by the attorney.
Why is that worth the "precedential" tag? It's not exactly news that attorney argument is not evidence, and that the Board can look to external evidence in determining mere descriptiveness.
But the Board looked at Applicant's website for a mark that technically was not in use. Therefore, I think you need to be careful and provide a warning to what the client posts on their website prior to providing a Statement of Use.
You mean the applicant wasn't yet offering the services? That seems to be true. Does it show, however, the way applicant intends to use the mark? [Applicant claimed that it was just a mock-up, but the Board rejected that assertion.] Is that the precedential point? I do think the opinion is a bit muddled, and the Board could have been clearer as to what the take-away from this case is supposed to be.
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