Monday, April 30, 2007

Precedential No. 33: "DORSAL NIGHT SPLINT" Generic For Orthopedic Splints Worn at Night, Says TTAB

Applicant Active Ankle was tripped up in its attempt to register DORSAL NIGHT SPLINT on the Supplemental Register. The Board found the phrase to be generic for "orthopedic splints for the foot and ankle." In re Active Ankle Systems, Inc., 83 USPQ2d 1532 (TTAB 2007) [precedential].

In a preliminary skirmish, Examining Attorney Lana H. Pham contended that DORSAL NIGHT SPLINT is a compound word [If you buy that one, I have a bridge in Brooklyn I'd like to sell you - ed.], and therefore that the CAFC's In re Gould analysis should apply. (In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987)). Applicant correctly contended that the subject phrase is a phrase and therefore that In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), applies. The Board agreed with Applicant that American Fertility controls, but it declined to grant Applicant's request that an augmented panel consider overruling the TTAB's decision in In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994); the Examining Attorney's inappropriate reliance on that decision (superseded by the CAFC's American Fertility ruling) does not require the Board to expressly overrule it.

The PTO relied on two NEXIS database excerpts, a handful of Internet pages, and excerpts from Applicant's own website, showing use of the phrase "dorsal night splint." Other Internet evidence established that dorsal splints are used in connection with the foot and that the term "dorsal" is used in connection with the foot and ankle. And Applicant submitted four registrations with "night splint "but not "dorsal night splint" in their identifications of goods.

Everyone agreed that the genus of goods at issue was "orthopedic splints for the foot and ankle to be worn while sleeping." The Board next found that the relevant public includes the general public, not just physicians and podiatrists, since Applicant's splints are available for purchase by the public via the Internet.

Applicant admitted during prosecution that "NIGHT SPLINT" is generic in relation to its goods. The Board also found that the words DORSAL, NIGHT, and SPLINT are each generic as to the goods. It ruled that the two NEXIS excerpts and the eight Internet excerpts were sufficient to show that DORSAL NIGHT SPLINT is generic.

Applicant unsuccessfully argued that some of the excerpts referred to its product, but the Board pointed out that in those excerpts the phrase was still used generically. Moreover, three of Applicant's competitors use the phrase generically.

Pointing to what may have been Applicant's Achilles heel(s), the Board asserted that the phrase is used generically on the specimens of record (see below): "Tips for getting the greatest benefits from your new Dorsal Night Splint." According to the Board, the letters DNS would be seen as indicating the source of Applicant's products. "This is so despite applicant's use of the barely noticeable 'TM' symbol in connection with the second use of DORSAL NIGHT SPLINT." Moreover, the term "A-Force" is prominently displayed on the splints, diminishing any possible source-identifying significance of DORSAL NIGHT SPLINT.

Finally, the Board observed that DORSAL NIGHT SPLINT is generic despite the fact that other terms ["Night Splint," "Plantar Fasciitis Night Splint," "Night Passive Splint," and "Night Foot Splint"] may be used to name the goods. All of the generic names for a product are in the public domain.

TTABlog comment: I don't disagree with the Board's ruling, but I think it went a bit too far in relying on Applicant's specimen of use and its other trademark as further support for its genericness ruling. Applicant did use the phrase "Dorsal Night Splint" in initial caps on its specimen of use. And the fact that the trademark "A-Force" also appears on the product doesn't mean that Applicant can't have two trademarks on the product.

Nonetheless, DORSAL NIGHT SPLINT seems to be generic under what I call the "reverse-Carnac" test (adopted from the legendary Johnny Carson's tv routine, "Carnac the Magnificent"). Imagine Johnny holding an envelope to his head after reading off the following question "What do you call a splint worn at night to provide support to the dorsal region of the foot?" After Ed McMahon repeats the question and Johnny does a double-take, he tears open the envelope to read: DORSAL NIGHT SPLINT.

Text Copyright John L. Welch 2007.


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