Thursday, July 12, 2018

TTAB Test: Is "SECOND OPINION" Generic for Cancer Testing Services?

The USPTO refused registration, on the Supplemental Register, of the term SECOND OPINION, finding it to be generic for "medical testing for diagnostic or treatment purposes in the field of cancer." On appeal, the Board rendered a split decision. How do you think this came out? In re Chronix Biomedical, Inc., Serial No. 86612457 (July 10, 2018) [not precedential] (Opinion by Judge Michael B. Adlin; dissenting opinion by Judge Linda A. Kuczma).

Section 23(c) requires that a mark, to be eligible for registration on the Supplemental Register, must be "capable of distinguishing the applicant's goods or services." Generic terms are incapable of doing so. The ultimate test for genericness is the primary significance of the term to the relevant public. The USPTO bears the burden of making a "strong" showing, with "clear evidence" that the applied-for term is generic.

The panel agreed that the genus in question is "medical testing services for diagnostic or treatment purposes," and that the relevant purchasing public includes both patients who seek medical testing, and doctors and other health care providers who order or purchase the tests. The panel did not agree on the relevant public's understanding of the term SECOND OPINION.

The panel majority had no doubt as to the genericness of SECOND OPINION, "especially because 'the determination of whether a proposed mark is capable of achieving significance as a source identifier must be made in relation to the goods and services for which registration is sought, not in the abstract.'" Dictionary definitions are consistent with applicant's own use of the term: applicant promotes the fact that its SECOND OPINION test is intended to "help doctors" or "clinicians" decide what to do in response to prior tests or examinations.

In other words, these materials reveal that Applicant’s “second opinion” test is conducted by or at the direction of a physician/clinician in order to provide an opinion, examination or evaluation to verify or challenge another physician’s diagnosis or recommendation, or to better understand the results of a first medical test.

The panel majority concluded that the genus "medical testing services for diagnostic or treatment purposes" encompasses medical testing services that are part of providing a "second opinion." Just as the term ATTIC was found to be "more in the nature of a type of sprinkler than of a source identifier," a "second opinion is a type or purpose of medical testing: 'second opinion medical testing.'" Therefore SECOND OPINION is generic and incapable of functioning as a mark.

In dissent, Judge Kuczma contended that SECOND OPINION may be merely descriptive of the end purpose of applicant's testing, i.e., to render second opinions, but "it does not refer to any class or type of medical tests and is not generic for 'medical testing services for diagnostic or treatment purposes.'"

Judge Kuczma acknowledged that, under the case law, "a term that names the central focus or subject matter of a service or the goods to be sold in connection with a service are regarded [is] regarded as 'generic'" for the services themselves. "However, that is not what we have here."

According to the definition of “second opinion” cited in the majority opinion, SECOND OPINION is “an opinion from a second qualified person . . . on a health . . . problem.” Under this definition, Applicant’s applied-for mark does not identify, nor is it generic for, medical testing services. At most, Applicant’s applied-for mark SECOND OPINION is merely descriptive of the medical testing services for diagnostic or treatment purposes which may be considered by doctors when providing a “second opinion.”

Judge Kuczma concluded that the USPTO failed to make the requisite substantial showing that SECOND OPINION is generic.

Read comments and post your comment here.

TTABlog comment: What do you think? I side with the dissent. Blood tests are a type of procedure. A second opinion is just a way of describing a blood test done to confirm the results of the first test. Maybe it's time to re-think the ATTIC decision.

Text Copyright John L. Welch 2018.


At 6:25 AM, Anonymous Carl Oppedahl said...

I agree with you and I side with the dissent. If I were to have a medical test and then had a second test to see whether the result of the first test is correct, I would call it a "second opinion".

I bet if you google this you will find approximately a zillion instances of such usage.

I bet if you did a poll and asked a hundred passers-by in a shopping mall "what do you call it if you get a second medical test to see whether the first result is correct?" the response would very often be "getting a second opinion".

At 9:54 AM, Anonymous Anonymous said...

I usually find the PTO overreaches to find things generic or merely descriptive. Not in this case, though.

The dissent and John's comments on whether the test itself constitutes a "second opinion" splits the hairs too finely for my taste.

At 10:11 AM, Anonymous Anonymous said...

I also find the dissent the more legally sound decision. That the majority opinion does not use judicial notice to put a more credible medical dictionary definition is disturbing to me. A quick look online results in the definition from NIH/National Cancer Institute: second opinion - "In medicine, the opinion of a doctor other than the patient’s current doctor. The second doctor reviews the patient’s medical records and gives an opinion about the patient’s health problem and how it should be treated. A second opinion may confirm or question the first doctor’s diagnosis and treatment plan, give more information about the patient’s disease or condition, and offer other treatment options." That definition is not generic for medical testing for diagnostic/treatment purposes.

At 9:16 AM, Anonymous Anonymous said...

But the blood tests aren't providing the actual second opinion, are they? Wouldn't the "opinion" come from the individual reading those results?


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