Tuesday, August 22, 2017

Precedential No. 23: MEDICAL EXTRUSION TECHNOLOGIES Lacks Aquired Distinctiveness, Says TTAB

In an enervating, yet precedential decision, the Board sustained an opposition to registration of the mark MEDICAL EXTRUSION TECHNOLOGIES, in standard character form, for polyurethanes for use in the manufacture of medical devices, finding applicant's evidence inadequate to support its Section 2(f) claim of acquired distinctiveness for this highly descriptive term. Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844 (TTAB 2017) [precedential] (Opinion by Judge Jeffrey T. Quinn).

By seeking registration under Section 2(f) of the Trademark Act, applicant conceded that its mark was not inherently distinctive. An applicant who resorts to Section 2(f) bears the ultimate burden to prove by a preponderance of the evidence that the applied-for mark has acquired distinctiveness. Moreover, "the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning." In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).

Degree of Descriptiveness: Dictionary definitions of the constituent words, numerous examples of third-party use of wording such as "medical extrusion," "extrusion technolog(y/ies)," "medical extrusion industry" and "medical extrusion technolog(y/ies)"in connection with similar goods, applicant's own use of the phrase, and applicant's testimony regarding the descriptiveness of the phrase, convinced the Board that the applied-for mark is highly descriptive of applicant's goods. "Clearly, no thought or imagination is required to immediately understand that medical extrusion products sold under the designation MEDICAL EXTRUSION TECHNOLOGIES are just that, namely, medical extrusion goods produced by using medical extrusion technologies (or methods or processes)."

Acquired Distinctiveness: The Examining Attorney accepted applicant’s claim of acquired distinctiveness based solely on a declaration of continuous use of the purported mark in commerce since 1990. Of course "the Board is not bound by the Examining Attorney’s decision to allow publication of the mark."

The Board found that the "nature and number of third-party descriptive uses in the record" demonstrate that applicant use has not been "substantially exclusive" as is required for a Section 2(f) showing. "Non-exclusive use presents a serious problem for Applicant in obtaining trademark rights in a designation that is not inherently distinctive, because it interferes with the relevant public’s perception of the designation as an indicator of a single source."

Applicant claimed that it is unaware of anyone else in the industry using the specific wording MEDICAL EXTRUSION TECHNOLOGIES as a trademark. The Board pointed out, however, that even if applicant were the first and only user of MEDICAL EXTRUSION TECHNOLOGIES as a purported mark in the industry, that would not overcome the highly descriptive nature of the wording nor suffice to establish acquired distinctiveness in this case.

The fact that this wording has been used repeatedly by unrelated entities in the industry is inconsistent with the requirement of acquired distinctiveness that the word indicate a single source. Given the number of third-party uses, consumers are likely to perceive the word “medical extrusion technologies” when used for medical extrusion goods, not as a trademark for one company, but rather as common terminology used by different entities in the industry to describe those goods.

The Board concluded that Applicant’s use of MEDICAL EXTRUSION TECHNOLOGIES has not been substantially exclusive as required under Section 2(f).

The Board noted that the record was devoid of any sales figures whatsoever, and that applicant's promotional expenditures are "hardly impressive, falling far below levels deemed persuasive in other cases involving the acquired distinctiveness of marks that may be highly descriptive." There was no evidence regarding the number of visitors to applicant’s trade show booths or to its website, nor regarding the circulation of the trade magazines in which applicant advertised. "In sum, the record falls far short of establishing that Applicant’s promotional efforts have borne fruit with respect to acquired distinctiveness."

Given that the proposed mark is highly descriptive, much more evidence, especially in the quantity of direct evidence from the relevant purchasing public, than what Applicant has submitted would be necessary to show that the designation MEDICAL EXTRUSION TECHNOLOGIES has become distinctive for Applicant’s medical extrusion goods.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Why is this precedential? BTW, I always try to use the term "acquired distinctiveness" rather than  "secondary meaning" because the latter applies only to word marks. How can a design mark or a sound mark have "meaning," let alone "secondary" meaning?

Postscript: In April 2021, pursuant to a settlement agreement between the parties, the U.S. District Court for the Southern District of California issued an order reversing the TTAB decision. (Civil Action No. 3:17-cv-02150-AJB (MSB)

Text Copyright John L. Welch 2017.


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