Monday, July 22, 2019

Precedential No.19: TTAB Finds Certification Mark Merely Descriptive, Lacking Acquired Distinctiveness

TTAB decisions concerning certification marks are as rare as a traffic cop in Boston.. Here, the Board affirmed a refusal to register the proposed certification mark VETERINARY TECHNICIAN SPECIALIST for “veterinary medicine services” in Class B, finding the term merely descriptive of the services and lacking acquired distinctiveness. In re National Association of Veterinary Technicians in America, Inc., 2019 USPQ2d 269108 (TTAB 2019) [precedential] (Opinion by Judge Cynthia C. Lynch).

Certification marks are subject to the same statutory bars to registration as other marks, including mere descriptiveness under Section 2(e)(1) of the Trademark Act. See, e.g., In re Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d 1403 (T.T.A.B. 2007) (affirming refusal to register merely descriptive certification mark on the ground that it had not acquired distinctiveness); In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 U.S.P.Q. 50, 52 (T.T.A.B. 1983) (certification marks subject to “the Section 2 qualifications and bans, including those of Section 2(e)”).

The evidence established that VETERINARY TECHNICIAN is the recognized name for an individual who provides veterinary medicine services. Applicant's promotional material repeatedly refers to “veterinary technicians” in a descriptive or generic manner, as do third parties in the same field.

The term "specialist" is defined as "“one who specializes in a particular occupation, practice, or branch of learning.” The evidence submitted by Examining Attorney Michael L. Engel included applicant’s own certification statement and its promotional materials, which use the terms “specialty” and “specialization” in a descriptive or generic manner in connection with its services. Third-party registrations include disclaimers of SPECIALIST in the context of medical services, including several certification mark registrations. Most of these registrations are found on the Supplemental Register, and so the disclaimers reflect the treatment of SPECIALIST as a generic term. See TMEP § 1213.03(a) (“If a mark is comprised in part of matter that, as applied to the goods or services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register.”).

Applicant pointed to 25 registrations that do not include disclaimers of SPECIALIST, some for medical services, but the Board noted that 21 of them were issued based upon acquired distinctiveness under Section 2(f).

Thus, the record shows that in this context, the term SPECIALIST describes or refers to a person who specializes in a particular type of veterinary medicine. Like the component VERTERINARY [sic] TECHNICIAN, the component SPECIALIST on its own is not inherently distinctive for veterinary medicine services.

The question, then, was whether the combination of these two descriptive terms engenders a "new and different commercial impression."

If the components VETERINARY TECHNICIAN and SPECIALIST are each individually merely descriptive of the services, we assess whether their combination in “Applicant’s mark ‘conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.’” In re Fat Boys Water Sports LLC, 118 U.S.P.Q.2d 1511, 1515-16 (T.T.A.B. 2016) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 U.S.P.Q.2d 1370, 1372 (Fed. Cir. 2003)). If each component “retains its merely descriptive significance in relation to the [services], the combination results in a composite that is itself merely descriptive.” Fat Boys, 118 U.S.P..Q.2d at 1516 (citing In re Tower Tech., Inc., 64 U.S.P.Q.2d 1314, 1317-18 (T.T.A.B. 2002))

The evidence established that the combination of terms produces no new meaning. "The terms retain their ordinary meanings, and when combined, the entire proposed mark VETERINARY TECHNICIAN SPECIALIST refers to a veterinary technician who has become a specialist in a particular field of veterinary medicine." Therefore, the proposed mark is merely descriptive of the services under Section 2(e)(1). In re Petroglyph Games Inc., 91 U.S.P.Q.2d 1332, 1337 (T.T.A.B. 2009) (BATTLECAM merely descriptive for computer game software); see also In re Phoseon Tech., Inc., 103 U.S.P.Q.2d 1822, 1823 (T.T.A.B. 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes for industrial and commercial applications).

The Board further found, based on the "nature and volume of evidence," that the proposed mark is "not only merely descriptive of the identified services but highly descriptive as well." See Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 U.S.P.Q.2d 1041, 1045 (Fed. Cir. 2018) (instructing Board to first determine whether a proposed mark is highly descriptive rather than merely descriptive before assessing acquired distinctiveness).

Turning to the issue of acquired distinctiveness under Section 2(f), the Board pointed out that, for certification marks, "the focus of the evidentiary showing differs from that for trademarks because certification marks indicate that goods or services provided by persons other than the  mark owner adhere to specified standards set by the mark owner, whereas trademarks indicate the source of the goods or services." See Section 45 of the Trademark Act, 15 U.S.C. 1127 (defining “trademark” and “certification mark”); see also TMEP §1306.01(b) (“[T]he purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person. A certification mark does not indicate origin in a single commercial or proprietary source the way a trademark or service mark does”). “[W]hen an applicant seeks registration of a certification mark, it is the use by persons other than the owner of the mark, subject to the owner’s control, which is the primary consideration in determining how members of the relevant public will perceive the mark.” Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d at 1406.

Because the proposed mark is highly descriptive, applicant bears a high evidentiary burden to establish acquired distinctiveness. See, e.g., Royal Crown, 127 U.S.P.Q.2d at 1045 (citing In re, 415 F.3d 1293, 75 U.S.P.Q. 1420, 1424 (Fed. Cir. 2005) (“[T]he applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning.”)); Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d at 1415 (initialism CNRA for “Certified Registered Nurse Anesthetist” found to be highly descriptive, increasing “the evidentiary burden on the user to establish acquired distinctiveness”).

The types of evidence to be assessed and weighed in determining acquired distinctiveness of a certification mark are for the most part the same as those for trademarks and include: (1) actual purchasers’ association of the mark with indicating certification; (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. See Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 U.S.P.Q.2d 1538, 1546 (Fed. Cir. 2018).

The Board found that applicant's evidence "does not show that users of veterinary medicine services have come to recognize the applied-for mark as indicating that the person performing the services has met certain standards set by Applicant (i.e., that the person “has completed the required curriculum of a defined body of veterinary technology knowledge pertinent to that particular specialty”) in connection with the services." Applicant's use of the term since 1995, the existence of 16 certified users, and webpages and promotional materials that refer to the proposed mark did not suffice. See, e.g., Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d at 1414-15 (although there was no evidence of third-party use of the same or similar highly descriptive designation, nearly 50 years of use deemed insufficient to establish acquired distinctiveness where the applicant failed to establish its recognition by consumers as a certification mark).

The Board therefore affirmed the refusal to register under Section 2(e)(1).

Read comments and post your comment here.

TTABlog comment: I included a photo of a cat (from Applicant's specimen of use) not because I like cats, but because I thought it might boost my readership.

Text Copyright John L. Welch 2019.


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