Aviva Healthcare Solutions

Trademark Trial and Appeal BoardNov 23, 2015

No. 85897204 (T.T.A.B. Nov. 23, 2015)

This Opinion is not a Precedent of the TTAB Mailed: November 23, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Aviva Healthcare Solutions _____ Serial No. 85897204 _____ Thomas D. Foster of TDFoster Intellectual Property Law, for Aviva Health Care Solutions, LLC. Kathleen M. Vanston, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Kuczma, Gorowitz and Goodman, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Aviva Health Care Solutions, LLC (“Applicant”) seeks registration on the Principal Register of the mark for Legal services, namely, providing legal consultation by hospital administration experts in the area of healthcare negligence to attorneys, in International Class 45.1 1 Application Serial No. 85897204 was filed on April 6, 2013, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as October 31, 2012. Serial No. 85897204 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 6 of the Trademark Act on the ground that a disclaimer is required of the literal portion of the mark, HOSPITAL EXPERTS, because it is merely descriptive of Applicant’s services. Applicant entered a disclaimer of HOSPITAL, but argued against the requirement that it disclaim the term HOSPITAL EXPERTS. However, Applicant contends that in the event that the term HOSPITAL EXPERTS is found to be descriptive, the term has acquired distinctiveness. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. A. The term HOSPITAL EXPERTS is merely descriptive of legal consultation by hospital administration experts. A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the Serial No. 85897204 - 3 - possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term may have other meanings in different contexts is not controlling. In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). “Expert” is defined in Black’s Law Dictionary (9th ed. 2009)2 as: n. (16c) A person who, through education or experience, has developed skill or knowledge in a particular subject, so that he or she may form an opinion that will assist the fact-finder … As set forth below, types of experts, i.e., consulting experts and testifying experts are also defined in Black’s Law Dictionary, Id.: consulting expert. (1897) An expert who, though retained by a party, is not expected to be called as a witness at trial. • A consulting expert's opinions are generally exempt from the scope of discovery … testifying expert. (1952) An expert who is identified by a party as a potential witness at trial. • As a part of initial disclosures in federal court, a party must provide to all other parties a wide range of information about a testifying expert's qualifications and opinion, including all information that the witness considered in forming the opinion. “Hospital Experts” are: expert witnesses [sic] who have expertise in assessing the quality assurance system/process that hospitals are required to implement to ensure that proper health care 2 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85897204 - 4 - is being delivered in a timely manner. These systems included quality assurance/management, utilization review/management, credentialing, informed consent, ethics, nurse liability issues, among others. HGExperts.com, http:/www.hgexperts.com/listing/Medical-Expert- Witness-Hospital.asp, accessed August 26, 2014 (Office Action dated September 3, 2014, unnumbered pg. 65). “There are a variety of organizations that provide lawyers with access to expert witnesses. These expert witnesses are often organized by category. [The term] HOSPITAL EXPERTS is often used to identify a category of expert witnesses with the expertise to testify about hospitals.” Office Action dated September 3, 2014 (unnumbered page 5). Numerous examples were made of record, including: 1. Expert Witness Directory – Management of Database for Hospital Expert Witnesses – heading: “Management of Database for Hospital Experts Node Search”3; 3 http://www.findexperts.com./srch/management%20of 20% database%20for%20hospital?page=1, (accessed August 14, 2014), Office Action dated September 3, 2014, at unnumbered page 21. Serial No. 85897204 - 5 - 2. The Expert Institute4 and 3. HGExperts.com5 4 http://www.the expertinstitute.com/expert-witness-tag/hospital, (accessed August 14, 2014), Id., at unnumbered pages 21 and 35. 5 http://www.hgexperts.com/listing/Medical-Expert- Witness-Hospital.asp, (accessed August 26, 2014), Id., at unnumbered page 65. Serial No. 85897204 - 6 - While Applicant correctly states that the test for determining whether a mark is merely descriptive is not determined by asking whether one can guess from the mark what the goods or services might be, but rather by asking, when the mark is seen in connection with the goods and services, whether it immediately conveys information about their nature,6 Applicant argues that the term HOSPITAL EXPERT is not all that descriptive. When exposed to the term a person will necessary [sic] ask for more information. Does applicant offer witnesses for court cases involving hospitals? Does applicant provide staff for hospitals … Appeal Brief, 10 TTABVUE 7 (emphasis added). A consumer who knows what Applicant’s services are (provision of legal consultation by hospital administration experts in the area of healthcare negligence to attorneys), will immediately know the nature of Applicant’s services from the mark, which is that Applicant provides “hospital experts” to attorneys. Moreover, Applicant’s own promotional material supports this finding. In its Request for Reconsideration, dated March 3, 2015, Applicant attached the Declaration of Dr. Thomas Bojko, one of Applicant’s corporate officers. Dr. Bojko authenticated photographs from various trade shows. Bojko Declaration, ¶13 and unnumbered exhibits thereto. The exhibits include several photographs displaying the booth exhibit depicted in the following photograph, which includes the statement, “WHY USE A HOSPITAL EXPERT?” 6 Appeal Brief 10 TTABVUE 7-8. Serial No. 85897204 - 7 - In this material, Applicant is not using the term “hospital expert” as a service mark, but rather to identify the type of “expert” it provides. In other documents authenticated by Dr. Bojko, i.e., the following advertisement, the term HOPSITAL EXPERTS appears to indicate the services that Applicant is offering: .7 7 Bojko Declaration, ¶8 and unnumbered exhibits thereto. Serial No. 85897204 - 8 - As discussed, the evidence establishes that the mark is highly descriptive. B. Applicant’s mark is not registrable without a disclaimer of HOSPITAL EXPERTS. “The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” Section 6 of the Trademark Act. “A mark or component is unregistrable if, ‘when used on or in connection with the goods [or services] of the applicant,’ it is ‘merely descriptive . . . of them.’” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (quoting Trademark Act Section 2(e)(1)). Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). As discused, supra, the term HOSPITAL EXPERTS is merely descriptive of Applicant’s legal services consisting of the provision of legal consultation by hospital administration experts in the area of healthcare negligence to attorneys, and thus is an unregistrable component of Applicant’s mark. Accordingly, the mark is not registrable in the absence of a disclaimer of the wording HOSPITAL EXPERTS. Serial No. 85897204 - 9 - C. The term HOSPITAL EXPERTS in Applicant’s mark has not acquired distinctiveness. Applicant claims, in the alternative, that the term HOSPITAL EXPERTS has acquired distinctiveness. Applicant's evidence of acquired distinctiveness consists of allegations of use for more than five years and the Declaration of Bojko and the exhibits attached thereto. The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. In re Cordua Rests. LP, 110 USPQ2d 1227,1234 (TTAB 2014); See also Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381, 383 (CCPA 1960); In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB 1985). “Typically, more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be less likely to believe that it indicates source in any one party.” In re Cordua Rests. LP, 110 USPQ2d at 1233-34; See, e.g., In re Bongrain Int'l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1767 (TTAB 2013); In re Seaman & Assocs., Inc., 1 USPQ2d 1657, 1659 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984). In this case, the term HOSPITAL EXPERT is highly descriptive since it is the category of expert witnesses that Applicant provides to its customers. We therefore consider Applicant's burden to show acquired distinctiveness to be especially high. Serial No. 85897204 - 10 - As such, Applicant's claim of use by itself and its predecessor for over five years8 is not sufficient to establish distinctiveness. Further, the facts set forth in Dr. Bojko’s Declaration9 do not convince us that the term has acquired secondary meaning as a mark. With the exception of the documents that he authenticates, all of the averments are made on “information and belief.” The declaration has little persuasive value since Dr. Bojko does not have firsthand knowledge of the facts, including the assertions that Applicant’s predecessor spent approximately 10% of its revenue on marketing. As noted by the Examining Attorney in her brief, Applicant has not provided sales figures; therefore, it is impossible to determine Applicant’s advertising expenditures. Moreover, the evidence fails to show that Applicant’s advertising and marketing was effective in educating relevant consumers that the term is a source indicator for the provision of legal consultation by hospital administration experts in the area of healthcare negligence. See Trademark Manual of Examining Procedure (TMEP) § 1212.06(b) (Oct. 2015) (“The ultimate test in determining whether a designation has acquired distinctiveness is applicant's success, rather than its efforts, in educating the public to associate the proposed mark with a single source.”). Dr. Bojko also authenticated five identical customer statements, in the form of letters, which, while the signers attested to the truth of the facts, were not executed 8 Use is asserted since 2009. 9 Dr. Bojko Declaration, Request for Reconsideration dated March 3, 2015. Serial No. 85897204 - 11 - under oath. This evidence is comparable to the evidence in Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701 (TTAB 2010), wherein the Board stated: The sixteen declarations submitted by Mag Instrument during the prosecution of the application to show that the dual band mark has acquired distinctiveness have little persuasive value. They are nearly identical and do not appear to have been prepared in the signer’s own words. Id. at 1723. In that case, there were sixteen declarations, here there are five letters. While the declarations in Mag Instrument were nearly identical, in this case, the letters are identical and as such do not appear to have been prepared in the signer’s own words. The evidence submitted is insufficient to establish the distinctiveness of the mark. Accordingly, Applicant’s claim of acquired distinctiveness is rejected. Decision: The refusal to register Applicant’s mark is affirmed. However, if Applicant submits the required disclaimer of HOSPITAL EXPERTS to the Board within thirty days, this decision will be set aside as to the affirmance of the disclaimer requirement,10 see Trademark Rule 2.142(g), 37 C.F.R. § 2.142, and the mark will be published. 10 The standardized printing format for the required disclaimer text is as follows: “No claim is made to the exclusive right to use HOSPITAL EXPERTS apart from the mark as shown.” TMEP 1213.08(a)(i).