Introduction

On December 4, 2019, the United States Patent and Trademark Office Trial and Appeal Board (“the Board”) made a decision in In re James Haden, M.D., P.A. Appellee James Haden, M.D., P.A. (“the Applicant”) sought registration on the Supplemental Register of the logo mark , for “Medical and health care services, namely, medical treatment of allergies, asthma, immune disorders, and shortness of breath.” Moreover, the mark is described as “a red, horizontal oval with a white and blue border. Inside the oval in stacked formation are the words, ‘ALLERGY CARE’ in stylized capital letters in white with blue outline,” with the colors being claimed as features. The Examining Attorney first refused the mark’s registration on the Principal Register on the basis of mere descriptiveness. The Applicant later sought registration on the Supplemental Register after final refusal, to which the Examining Attorney still upheld his position. The Applicant then appealed and TTAB has jurisdiction.

Decision

Determining genericness “‘involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered…understood by the relevant public primarily to refer to that genus of goods or services?’” In this case, the Applicant’s services are clearly defined. Regarding the public’s understanding, the Examining Attorney submitted forty excerpts wherein third-party professionals also use ALLERGY CARE to refer to their own offered services, showing that the phrase is commonly used in the industry. Thus, the Board found ALLERGY CARE to be generic for the Applicant’s services.

However, it is realized that the Applicant’s desired mark did not consist of standard characters, and as such, the design mark needs to be considered as a whole, including its features. With ALLERGY CARE disclaimed, the Board deemed the mark eligible for registration on the Supplemental Register. While the Examining Attorney argued that the mark’s design features were insufficient in being considered distinct, the Board holds that the Examining Attorney’s arguments are only relevant to registrability on the Principal Register. Moreover, the Board holds that “because such stylized non-distinctive wording, common geometric shapes, and background designs may be registered on the Principal Register with a showing of acquired distinctiveness, they are capable of serving as indicators of source and also may be registered on the Supplemental Register.” The Board concluded that the Applicant’s design mark could serve as a source identifier.

For the above reasons, the Board decided that while the genericness refusal is affirmed, the Applicant could submit a disclaimer of ALLERGY CARE in order to obtain registration on the Supplemental Register.

Conclusion

Although descriptive marks should be avoided, it should be noted that descriptive wording may be included in a design mark, since design marks include supporting design features. A combination of design features may be distinct enough to function as a source identifier, and thus, a trademark.   

Full In re James Haden, M.D., P.A. decision can be read here: https://e-foia.uspto.gov/Foia/RetrievePdf?system=TTABIS&flNm=87169404-12-04-2019

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