TTABlog Test: Is BRAINCARE Merely Descriptive of Goods and Services Related to Analysis of Brain Waves?

The USPTO refused to register the proposed mark BRAINCARE for various goods and services related to the analysis of brainwave activity, deeming the mark to be merely descriptive under Section 2(e)(1). Applicant argued on appeal that the terms “brain” and “care” include so many different definitions that the mark could relate to just about anything, that the mark is merely suggestive because it does not "identify" a type of software or service, and that third parties have registered marks that include those terms. How do you think this came out? In re Wave Neuroscience, Inc., Serial No. 90630144 (September 11, 2024) [not precedential] (Opinion by Judge Albert J. Zervas).

Examining Attorney Roger McDorman relied on dictionary definitions and on website references using the terms "brain care" or "braincare" in arguing that the proposed mark is merely descriptive of "things or activities that are used or provided for the purpose of caring for, i.e., analyzing, studying, treating, training, and otherwise determining the condition and/or furthering the well-being of, the brain."

As to applicant's argument that braincare could refer to "just about anything," the Board observed once again that the subject mark must be considered in the contest of the identified goods and services. “That a term may have other meanings in different contexts is not controlling.”

The webpages with “brain” juxtaposed with “care” consistently use the two-word term to identify a particular type of care, i.e., care for preserving or enhancing mental acuity.

Applicant's assertion that BRAINCARE does not identify a type of software or services was misplaced. "BRAINCARE does not need to be the common descriptive name for a type of software, a medical device, medical, scientific or clinical research, or medical services, to be refused registration as merely descriptive."

Finally, the third-party registrations relied on by applicant had no probative value. Some were for unrelated goods and services, others covered marks that contained matter additional to BRAINCARE, thereby distinguishing the marks. Moreover, they were too few in number to persuade the Board that the USPTO "considers BRAIN CARE or BRAINCARE as a suggestive term for Applicant’s Identified Goods and Services."

Upon consideration of all of the evidence of record and Applicant’s arguments, we conclude that Applicant’s proposed mark merely describes a purpose for Applicant’s Identified Goods and Services, without thought or conjecture. When considered separately, the two terms in the mark, BRAIN and CARE, each describe a purpose for Applicant’s Identified Goods and Services, namely, that they are used for, or involve, the care of the brain. When combined, the terms retain their meaning and do not convey “any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.”

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a no-brainer? i.e., a WYHA? Do you care?

Text Copyright John L. Welch 2024.