Aldona J. SpiegelDownload PDFTrademark Trial and Appeal BoardMay 4, 2011No. 77721718 (T.T.A.B. May. 4, 2011) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: May 4, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Aldona J. Spiegel ________ Serial Nos. 77721658 and 7721718 _______ John S. Egbert of Egbert Law Offices, PLLC for applicant. Lief Martin, Trademark Examining Attorney, Law Office 112 (Angela Bishop Wilson, Managing Attorney). _______ Before Grendel, Holtzman, and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Aldona J. Spiegel has filed two use-based applications to register the standard-character mark THE CENTER FOR BREAST RESTORATION,1 and the mark depicted below2 1 Application Serial No. 77721658, filed April 24, 2009, alleging first use in commerce of 2001. 2 Application Serial No. 77721718, filed April 24, 2009, alleging first use in commerce of 2001. 2 both for “medical services, namely, cosmetic and reconstructive breast surgery services; providing information via a website on a wide range of information concerning cosmetic and reconstructive breast surgery,” in Class 44. The examining attorney refused registration of the word mark THE CENTER FOR BREAST RESTORATION, in standard character form, on the ground that the mark is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and because applicant has failed to show that the mark has acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 2(f). With respect to the word and design mark, the examining attorney issued a final requirement that applicant disclaim the exclusive right to use the term “ Center For Breast Restoration” on the ground that the wording is merely descriptive under Section 2(e)(1) and that applicant's evidence is insufficient to show acquired distinctiveness under Section 2(f). See Section 6(a) of the Trademark Act of 1946, 15 U.S.C. §1056(a). When the refusals were made final, applicant appealed. In the alternative, applicant requested that the mark THE CENTER FOR BREAST RESTORATION be allowed on the Supplemental Register and that the mark CENTER FOR BREAST 3 RESTORATION and Design be allowed on the Principal Register with a disclaimer to the phrase “Center for Breast Restoration.” Consolidated appeal briefs have been filed pursuant to the Board’s order consolidating the cases on September 9, 2010. We affirm the refusals to register. The Mark is Merely Descriptive “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). See also, In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is well-established that the determination of mere descriptiveness must be made not in the abstract, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average prospective purchaser of such goods or services. Bayer, 82 USPQ2d at 1831. See also, In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). 4 The examining attorney has the burden to establish that a mark is merely descriptive. Bayer, 82 USPQ2d at 1831. To meet his burden, the examining attorney made of record the following dictionary definitions for the individual words CENTER, FOR, BREAST and RESTORATION in the proposed mark:3 Center: a source from which something originates ; a facility. For: used as a function word to indicate purpose. Breast: either of the pair of mammary glands extending from the front of the chest in pubescent and adult human females and some other mammals. Restoration: an act of restoring or the condition of being restored: as a: a bringing back to a former position or condition : reinstatement b: restitution c: a restoring to an unimpaired or improved condition d: the replacing of missing teeth or crowns. The examining attorney also submitted printouts from third-party websites showing use of “breast restoration” to identify surgical procedure services similar to those of applicant. A few representative examples are set forth below: Breast restoration is sometimes needed when a man or woman has lost significant weight in the upper portion of his or her body. (www.cosmeticsurgerytravel.com); The purpose of this study was to explore the breast restoration decision–making patterns used by women 3 From www.merriam-webster.com/dictionary/ 7/22/09. 5 who opted to have their breast cancer treated by mastectomy.(www.ncbi.nlm.nih.gov) Of course for victims of breast cancer who have undergone mastectomies, implants can be a very comforting part of the recovery process. But breast restoration is very different from breast enhancement. (www.thecrimson.harvard.edu) Whether you or a loved-one is facing a mastectomy or lumpectomy, there are multiple state-of-the-art options for breast restoration. (http://breastreconstructionhouston.com) For more than ten years microsurgical reconstruction has become the gold standard in breast restoration after cancer. (www.microsurgery.net) As further evidence of the descriptiveness of the mark, the examining attorney has also included copies of third-party registrations for marks containing the phrase “CENTER FOR…” where no claim was made to the mark as a whole, or where the mark was registered on the Supplemental Register. Evidence supplied by applicant corroborates the examining attorney’s evidence. Exhibit N to applicant’s declaration (submitted in response to the second Office Action) is a 2003 brochure advertising applicant’s services. Several descriptive uses of “breast restoration” appear throughout this brochure: We understand the anxiety and uncertainty in choosing the breast restoration option in the face of dealing with the diagnosis of cancer. … There are two main options for breast restoration, either implants or your own tissue. 6 … When your own tissue is used for breast restoration and is transferred from another area of the body, it is called a flap. This type of procedure … is the preferred method for breast restoration. … The advantage of immediate breast restoration is that most of the breast skin can be preserved and used in the reconstruction. Exhibit R is identified as applicant’s current brochure. In it, applicant uses the term “breast restoration” descriptively as follows: The final goal of breast restoration is not only to create a soft, symmetric breast but also to restore sensation. … Ultimately, the selection of the optimal type of breast restoration procedure is very individualized and based on patients’ goals and desires. Exhibit T, an article from Leading Medicine, vol. 4 no.2 (2006) entitled “Breast Reconstruction: Restoring Self-esteem to Breast Cancer Survivors,” highlights the achievements of several surgeons, including applicant, who perform breast restoration: “Weimer and his partner Dr. David Lee, typically perform three types of traditional breast restorations – skin expansion, latissimus dorsi flap and the flap from the abdominal area. … "We are essentially rebuilding the patient’s breast with her own tissue…" said Dr. Aldona Spiegel, who specializes in microsurgical muscle-reserving procedures for breast restoration. Finally, in Exhibits V and W, advertising placed by applicant in Newsweek and in Change Magazine, applicant 7 uses the words “breast restoration” descriptively. In the Newsweek advertisement, the following appears: “Dr. Spiegel offers the most complete form of breast restoration,” and in the Change Magazine advertisement, the following appears: “Her goal is to provide not only the most advanced breast restoration procedures, but also a caring and supportive environment….” In sum, the evidence of record establishes prima facie that the term [THE] CENTER FOR BREAST RESTORATION is highly descriptive of applicant’s cosmetic and reconstructive breast surgery.4 The terms used in the marks, by virtue of the plain meaning of each constituent word, as well as when taken as a whole, merely describe applicant’s center where applicant treats breast conditions by means of cosmetic and reconstructive breast surgery. Applicant’s Evidence of Acquired Distinctiveness is Insufficient Applicant has the burden of establishing that her mark has become distinctive. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). The question of acquired distinctiveness 4 The article “the” in the mark denotes a particular place (The Center for Breast Restoration). It has no trademark significance because it functions only as a term of reference (i.e., it simply emphasizes “Center”). See In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005); In re The Computer Store, Inc., 211 USPQ 72, 73 (TTAB 1981)(the definite article “the” is of no consequence to the mark’s registrability). 8 is one of fact which must be determined on the evidence of record. There is no specific rule as to the exact amount or type of evidence necessary at a minimum to prove acquired distinctiveness, but generally, “the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.” In re Bongrain International Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); see also In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005); and Yamaha, 6 USPQ2d at 1008. As shown above, applicant’s mark is highly descriptive of the recited services. Taken as a whole, the evidence is insufficient to show that the mark has acquired distinctiveness. In her declaration, applicant states that she first started using [THE] CENTER FOR BREAST RESTORATION “at least as early as 2002;”5 that she has treated “approximately 1,100 patients”6 and generated “more than $10 million gross revenue.”7 However, applicant has not provided a context for these figures in terms of market share or comparative income, nor clarified whether total gross revenue reflects total procedures or just those relating to breast 5 Declaration of Dr. Aldona J. Spiegel (“Spiegel Dec.”), para. 6. 6 Id., at 13. 7 Ibid. 9 restoration or reconstruction. Applicant’s 8 years of use of the mark is thus not persuasive, considering its highly descriptive nature. See In re Packaging Specialists, Inc., 221 USPQ at 920 (use of “Packaging Specialists, Inc.” for sixteen years held not sufficient to establish acquired distinctiveness). Applicant’s mark appears on the title slide of several slide presentations given by applicant.8 These bear such titles as “Muscle Sparing Free Tissue Transfer in Breast Reconstruction: the Baylor Experience” and “Post-operative Care of the Breast Reconstruction Patient.” From the titles, it appears that these presentations have been directed to medical personal, such as doctors and nurses. There is no record evidence that these slide presentations were ever viewed by applicant’s intended clients or how these presentations made an impact on the intended clients.9 Likewise, applicant’s internal documents10 do not appear to have been publically available. “None of this material is evidence of public exposure to the marks, or in any event, 8 Spiegel Dec., Exhibits A, E, F, G and L; Response, (unmarked) Exhibit C. 9 Additionally, applicant states that Exhibit F, for example, is the first slide of a presentation that was made at the “American Society for Plastic Surgery Annual Meeting” and the “American Society for Reconstructive Surgery Annual Meeting”; and Exhibit G is the first slide of a presentation made at the “5th Houston Plastic Surgery Seminar.” Spiegel Dec., para. 8. 10 Spiegel Dec., Exhibits D (patient forms), J (office notes), and K (business plan). 10 of the extent of public exposure to such marks.” Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1194 (TTAB 2007)(internal documents and documents directed to merchandisers rather than ultimate consumer not evidence of public exposure to alleged family of marks). Thus, applicant’s use of her mark on these materials does not aid in showing that the mark is recognized by clients as an indication of source. Applicant’s advertising consists of a flyer,11 an information sheet12 (listing doctors at The Center for Breast Restoration), a press release,13 an advertisement14 and articles15 published in the Methodist Leading Medicine magazine, applicant’s own brochures,16 and advertisements in the Houston Woman magazine,17 Change Magazine,18 and Newsweek.19 These advertisements and articles fail to establish acquired distinctiveness inasmuch as they reference THE CENTER FOR BREAST RESTORATION as a trade name rather than as a service mark: that is, the advertisements refer to applicant as the director and/or founder of The 11 Spiegel Dec., Exhibit H. 12 Spiegel Dec., Exhibit C. 13 Spiegel Dec., Exhibit B. 14 Spiegel Dec., Exhibit I. 15 Spiegel Dec., Exhibit T and X. 16 Spiegel Dec., Exhibits M, N and R; Response, Exhibit B. 17 Spiegel Dec., Exhibit S. 18 Spiegel Dec., Exhibits U and W. 19 Spiegel Dec., Exhibit V. 11 Center for Breast Restoration, but do not otherwise show the mark being used to identify applicant’s services. There is no information as to the extent of any public exposure thereof, such as circulation or subscriber figures, whether the advertising was distributed nationally or regionally only, or the length of time during which any advertisement was publically available. While applicant’s brochures do display applicant’s design mark, and appear intended for distribution to potential consumers, there is no information as to the number of brochures distributed to patients, or prospective patients, the length of time during which brochures were made available, or the impact of the brochures on consumer’s awareness and recognition of the mark as identifying the source of applicant’s services. Moreover, the brochures themselves contain descriptive usages of “breast restoration,” lessening the overall effect of any exposure to result in acquired distinctiveness. Without information as to the effect, if any, such advertising has on consumer recognition, and given the minimal use of the marks on the advertising, we are not persuaded that consumers have come to recognize applicant as the source of “cosmetic and reconstructive breast surgery services” under the mark. 12 Applicant’s unsolicited media coverage, a transcript from a TV broadcast20 and articles featuring applicant’s medical practice,21 lacks persuasive value for similar reasons. Again, THE CENTER FOR BREAST RESTORATION has been used as a trade name and not as a mark, with applicant being referred to as the director of the Center for Breast Restoration; the record is silent as to the extent to which, or to whom, any of the magazines have been disseminated; and there is no information in the record as to the nature or scope of circulation of the magazines, or the subscription rate of any particular issue. As to the customer recognition statements,22 none of them refer to applicant’s mark, but rather to Dr. Spiegel as an individual. The stained glass window23 made in appreciation to Dr. Spiegel with the “ribbon” from applicant’s word and design mark adjacent to a card bearing the mark may show that the designer is aware of applicant’s 20 Applicant’s Response to Office Action (“Response”), Exhibit A. 21 Spiegel Dec., Exhibits O-Q, T, U, X and Y; Response, Exhibits A and D. 22 Spiegel Dec., Exhibit Z. 23 Exhibit Z consists of two hand written envelopes from consumers addressed to “The Center for Breast Restoration,” several hand written notes to Dr. Spiegel that do not include the mark, and a picture of a stained glass window containing the “ribbon” design from applicant’s design mark adjacent to a poster-sized card marked with applicant’s design mark and containing hand written notes of appreciation. 13 business, but it does not show that applicant’s mark has acquired distinctiveness for applicant’s services. Finally, with respect to applicant’s argument that she is the first to use the wording “breast restoration,”24 it is well established that the fact that no other competitor is using the mark does not justify registration when the only significance projected by the term is merely descriptive. See In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“a word need not be in common use in an industry to be descriptive, and the mere fact that an applicant is the first to use a descriptive term in connection with its goods, does not imbue the term with source-identifying significance”); In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002). In view of the above, we find that applicant has not met her burden of showing that the mark has acquired distinctiveness; that is, that her advertising and promotional efforts have resulted in the recognition of [THE] CENTER FOR BREAST RESTORATION as a service mark, rather than as a trade name and/or descriptor of the type of services offered at the facility known as the Center for Breast Restoration. See In re Audio Book Club, Inc., 52 24 In paragraph 3, applicant states “I was not familiar with anyone using breast restoration when I created the Center’s name. …I wanted something to make my Center’s name different and used the term restoration instead [of reconstruction].” 14 USPQ2d 1042 (TTAB 1999) (inadequate evidence to establish that advertising and promotional efforts resulted in recognition of AUDIO BOOK CLUB as indicator of source of services, rather than as name of new category of “book club” services). Decision: The refusal to register the mark THE CENTER FOR BREAST RESTORATION, trademark application Serial No. 77721658, is affirmed. In view of applicant’s amendment of this application to the Supplemental Register, contingent upon our decision that the mark is merely descriptive, applicant’s amendment to the Supplemental Register is approved and the mark will register on the Supplemental Register in due course. The requirement under Section 6 of the Act for a disclaimer of the words “CENTER FOR BREAST RESTORATION” apart from the mark as a whole, in trademark application Serial No. 7721718, and the refusal to register the mark in the absence of this disclaimer, is affirmed. However, the refusal will be set aside and the mark published for opposition if applicant, no later than 30 days from the date of mailing of this decision, submits an appropriate disclaimer. See Trademark Rule 2.142(g). Copy with citationCopy as parenthetical citation