Wednesday, October 25, 2006


In a 37-page decision that had this reader longing for recreation and/or therapy, the Board reversed a genericness refusal of the certification mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST for "recreational therapy and recreational therapy counseling." The Board also found that the mark had acquired distinctiveness under Section 2(f). In re National Council for Therapeutic Recreation Certification, Inc., Serial No. 75701344 (September 15, 2006) [not citable].

As usual, the Board found the genus of services to be adequately described by the recitation set forth in the application. It rejected the Examining Attorney's attempt to define the genus narrowly, and Applicant NCTRC's attempt to define it broadly. As to the relevant public, the Board found it to comprise "persons in the recreational therapy field," including therapists who are candidates for Applicant's certification, therapists certified by Applicant, and persons needing/receiving therapy.

With regard to the appropriate test for genericness, the Board understandably agreed with Applicant that CERTIFIED THERAPEUTIC RECREATION SPECIALIST is a phrase, not a compound word, and that the CAFC's American Fertility test applies. Thus, "evidence that 'certified' and 'therapeutic recreation specialist,' considered individually, are generic is not sufficient to prove that the phrase CERTIFIED THERAPEUTIC RECREATION SPECIALIST is generic."

Although the Examining Attorney provided "significant evidence" to support the genericness refusal -- much of it consisting of "NEXIS article excerpts showing uses of 'certified therapeutic recreation specialist' in all lower case letters in the manner of a generic term" -- the Board found that, based on the entire record, the PTO had failed to establish by the requisite "clear evidence" that the applied-for mark is generic for the recited services.

In other words, Applicant successfully countered the PTO's evidence. It established that "the vast majority of the persons named in these articles in fact have been certified by applicant and thus are entitled to use the designation CERTIFIED THERAPEUTIC RECREATION SPECIALIST in rendering their services." Applicant also submitted Internet search results revealing "over 600 uses of 'certified therapeutic recreation specialist' in all or initial upper case letters in the manner of a mark." And "several state codes and regulations recognize CERTIFIED THERAPEUTIC RECREATION SPECIALIST as applicant's certification."

Thus, the PTO's evidence of genericness was "offset" by Applicant's evidence and, because of this "mixed" record, the PTO fell short of the "clear evidence" standard.

The Board next reviewed NCTRC's evidence of acquired distinctiveness. It noted that Applicant claimed continuous use of the subject mark for over 20 years, and that NCTRC "is the national certifying organization in the recreational therapy field." There was no evidence of use of the phrase by other certifying organizations. NCTRC engaged in "significant marketing activities" and its revenues of more than $7 million were "impressive" considering its specialized field. Moreover, Applicant submitted numerous declarations from persons in the field and persons receiving therapy. Although many were "similar in content," the Board ruled that they nonetheless have probative value.

Viewing this evidence in its entirety, the Board concluded that the mark had acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2006.


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