Tuesday, May 24, 2005

"LASER TONING" Generic For Skin Rejuvenation Services, Rules TTAB

New York City's Doctor Roy G. Geronemus failed to remove an unsightly PTO genericness refusal of the term LASER TONING for "medical services, namely, skin rejuvenation." In re Geronemus, Serial No. 76238774 (May 12, 2005) [not citable]. The Board found that "'laser toning' is understood by the relevant public as the generic name for a skin procedure whereby a laser is used to promote better tone or glow to the skin."

Dr. Roy G. Geronemus

The Examining Attorney relied on printouts from Applicant's website and from third-party websites, on articles from general circulation publications, and on NEXIS excerpts, to demonstrate generic use of the term "laser toning."

The Doctor noted that all of the PTO's evidence is dated after his first use date in 1999, and he contended that "not enough time has elapsed for the term to be considered generic." He likened this case to In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 4 USPQ2d 1141, 1143 (Fed. Cir. 1987), wherein the coined term CASH MANAGEMENT ACCOUNT was found registrable despite some subsequent generic usage.

The Board, however, distinguished Merrill Lynch, where the CAFC noted that the evidence "showed recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was [Merrill Lynch]." Here, there are no "mixed uses" (i.e., some generic, some source-identifying) of LASER TONING. All uses are generic uses.

The Board observed that the issue of genericness must be determined "on the basis of the factual situation as of the time when registration is sought."

"Even assuming arguendo that the term 'laser toning' was initially used by applicant as a service mark, the term is clearly now used by the dermatology industry as the generic name of the involved service, and the relevant public so understands the term."

TTABlog note: for further discussion of Merrill Lynch, see the recent TEACHERS' INSURANCE PLAN decision, blogged here.

Text ©John L. Welch 2005. All Rights Reserved.


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