Council on Professional Standards for Kinesio therapy

Trademark Trial and Appeal Board

Sep 25, 2002

No. 75300422 (T.T.A.B. Sep. 25, 2002)

Hearing: Paper No. 26
June 4, 2002 TJQ
Mailed: September 25, 2002

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Council on Professional Standards for Kinesiotherapy
________

Serial No. 75/300,422
_______

Michael A. Grow, Leo M. Loughlin and Sarira D. Alexander of
Arent Fox Kintner Plotkin & Kahn for applicant.

Caroline E. Wood, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Simms, Quinn and Drost, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Council on Professional Standards for Kinesiotherapy
filed an application to register the certification mark
REGISTERED KINESIOTHERAPIST R.K.T. for “medical services,
namely, the treatment of the effects of disease, injury and
congenital disorders through the use of therapeutic
exercise and education.”1 The application indicates that

1 Application Serial No. 75/300,422, filed May 30, 1997, alleging
first use anywhere on August 17, 1987, and first use in commerce
on May 23, 1998.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/300,422
2
“[t]he Certifier has adopted and is exercising legitimate
control over the use of the certification mark in
commerce.” The application also includes the following
statement: “The certification mark, as used by authorized
persons, certifies that such persons meet the standards and
tests of competency and skill and knowledge in the field of
the treatment of disease, injury and congenital disorders
as established by the certifier.” Applicant claims that
the words “Registered Kinesiotherapist” have acquired
distinctiveness under Section 2(f) of the Trademark Act.
The Trademark Examining Attorney has made final the
requirement to disclaim the words “Registered
Kinesiotherapist” apart from the mark. The Examining
Attorney maintains that the words are generic and, thus,
must be disclaimed pursuant to Section 6 of the Act. The
Examining Attorney further states that even if the term
“REGISTERED KINESIOTHERAPIST” in the proposed mark is found
to be not generic, it is highly descriptive, and the
evidence of acquired distinctiveness is insufficient to
allow registration without a disclaimer.
When the requirement was made final, applicant
appealed. Applicant and the Examining Attorney have filed
briefs, and an oral hearing was held before this panel.
Ser No. 75/300,422
3
The Examining Attorney maintains that the term
“kinesiotherapist” is generic, and that the term
“registered kinesiotherapist” is the name of a category of
medical professionals, namely kinesiotherapists who have
met applicant’s standards and, thus, who are registered in
a roster maintained by applicant. The Examining Attorney
is not persuaded by the existence of third-party
registrations of marks that applicant argues are similar to
its own. According to the Examining Attorney, the term is
generic and must be disclaimed apart from the mark. In
support of the refusal, the Examining Attorney has relied
upon the following evidence: a dictionary definition of
the term “registered”; excerpts retrieved from the Internet
showing uses of the term “kinesiotherapist”; and NEXIS
excerpts showing uses of the term “registered
kinesiotherapist.”
Applicant argues that the term REGISTERED
KINESIOTHERAPIST is not generic, and that the record
establishes that the term has acquired distinctiveness as
used in connection with applicant’s certified medical
services. Applicant contends that the Office has not met
its burden of proving genericness with clear and convincing
evidence, and that any doubt on this matter must be
resolved in applicant’s favor. In support of its
Ser No. 75/300,422
4
contentions, applicant submitted the following:
declarations (and related exhibits) of applicant’s
employees, namely, Jerry W. Purvis, coordinator, Martha
Mincey, a director of continuing competency, Doris A.
Woods, director, registration board, and Bridget Collins, a
director of continuing competency; a blank application to
apply for registration on applicant’s roster; form
declarations of over ninety individuals, most (if not all)
of whom are listed in applicant’s roster and authorized to
use “REGISTERED KINESIOTHERAPIST”; a copy of a final
judgment in a civil action (not involving applicant or its
mark); and copies of third-party registrations.
The Record
We first turn to take a closer look at the evidentiary
record. The website of the American Kinesiotherapy
Association indicates that applicant is “an organization
whose function is to insure that kinesiotherapy
practitioners meet the standards for education,
credentialing, and professional competence, which
[applicant] has established.” The record includes a
dictionary definition of the term “registered” which means,
in pertinent part, “to enter in an official register; to
enroll officially or formally, especially in order to vote
or attend classes; to place or cause placement of one’s
Ser No. 75/300,422
5
name in a register.” The American Heritage Dictionary of
the English Language (3rd ed. 1992). In addition, there are
articles retrieved from the Internet and the NEXIS database
showing generic uses of the term “kinesiotherapist” as the
name of a specific occupation in the health care field.
This evidence shows that a “kinesiotherapist” is a health
care professional who, under the direction of a physician,
treats the effects of disease, injury and congenital
disorders, through the use of therapeutic exercise and
education.2
The record also includes NEXIS articles showing what
the Examining Attorney views as generic uses of the term
“registered kinesiotherapist.” Examples include the
following:
Meyer has 20 years of experience as a
registered kinesiotherapist...
(The Union Leader, August 30, 1999)

Brown, a four-year letterman on the
golf team, is a registered
kinesiotherapist.
(The Advocate, April 28, 1996)

Denver Broncos linebacker Robert
Felton, a registered
kinesiotherapist...
(Los Angeles Times, November 20, 1992)

2 The job and career information found at www.humankinetics.com
indicates that the “kinesiotherapy profession is not recognized
by the American Medical Association,” and that “kinesiotherapists
do not enjoy the same respect or status given to physical
therapists.”
Ser No. 75/300,422
6
In response to the just-cited NEXIS articles,
applicant submitted the declarations of Bridget Collins and
Martha Mincey, applicant’s directors of continuing
competency. The declarants state that each of the
individuals named in the articles is a “Registered
Kinesiotherapist” who has met applicant’s qualifications
and is authorized by applicant to identify himself/herself
as a “Registered Kinesiotherapist.”
Also introduced by applicant is the declaration of
Doris Woods, applicant’s director of its registration
board. Ms. Woods states that the mark has been in
substantially exclusive and continuous use since 1987, and
has been so used in interstate commerce at least as early
as January 1993.3 Ms. Woods goes on to assert that hundreds
of individuals have met standards set by applicant and that
such persons are authorized to use the mark; that applicant
is the only organization in the country that can issue such
certifications; that for about eight years, the mark has
been used on over 10,000 mailings per year to those in the
health care field; that to remain eligible to use the mark,
a “Registered Kinesiotherapist R.K.T.” must receive
continuing education credits each year; and that the mark

3 Applicant earlier submitted the Section 2(f) declaration of its
coordinator, Jerry Purvis.
Ser No. 75/300,422
7
sought to be registered has become highly distinctive and
well known to the trade and the relevant public. The
declaration is accompanied by a patch worn by, and a
certificate that may be displayed by, persons who have been
certified by applicant and who are authorized to use the
mark. The certificate indicates that the recipient “having
submitted satisfactory evidence of completion of the
qualifications as determined by this Board [The American
Board for Registration of Kinesiotherapists] and the
Council of Professional Standards for Kinesiotherapy is
hereby awarded this Certificate in Kinesiotherapy and is
entitled to be listed in the Official Roster of Registered
Kinesiotherapists maintained by the Council and is entitled
to use the certification mark Registered Kinesiotherapist
R.K.T.”
Applicant also submitted a final judgment in a civil
action wherein, inter alia, the court found the third-party
certification marks OCCUPATIONAL THERAPIST REGISTERED OTR
and OCCUPATIONAL THERAPY ASSISTANT to be valid and
enforceable, and not generic.4 Also of record are copies of
twelve third-party registrations of marks which, according

4 National Board for Certification in Occupational Therapy, Inc.
v. American Occupational Therapy Association, in the United
States District Court for the District of Maryland, Southern
Division, Civ. No. AMD 97-767 (dated March 25, 1999).
Ser No. 75/300,422
8
to applicant, are similar to its mark, thereby
demonstrating that applicant’s mark should join them on the
register.
Finally, the record includes form declarations of 93
individuals, all of whom appear to be kinesiotherapists,
and many, if not all, of whom have completed the
qualifications determined by applicant so as to be listed
in applicant’s “Official Roster of Registered
Kinesiotherapists.” Each declarant states that he/she is
engaged in the health care field as a health care
professional, and is employed as such. Each declarant goes
on to state the following:
I am familiar with the certification
mark REGISTERED KINESIOTHERAPIST R.K.T.
and the treatment and therapy services
offered by those individuals who have
met the standards prescribed for the
use of this mark.

I recognize that only persons who have
met the standards and tests of skill
and competency established by
[applicant] are permitted to use the
mark REGISTERED KINESIOTHERAPIST, alone
or in combination with the letters
“RKT.”

The mark REGISTERED KINESIOTHERAPIST
R.K.T. has been used for many years and
has become well known as a distinctive
certification mark among members of the
health care industry and their
prospective patients or customers.

Ser No. 75/300,422
9
I am aware that [applicant] has engaged
in significant advertising and
promotional efforts to publicize the
certification mark REGISTERED
KINESIOTHERAPIST R.K.T.

Through those advertising and
promotional efforts, the mark has
become recognized in the health care
industry as a means of signifying that
individuals providing services under
the mark have met the standards of
skill and competency established by
[applicant].

The Law
Certification marks are subject to the statutory bars
to registration under Section 2 of the Trademark Act.
There is no special exemption from the proscription of
Section 2(e)(1) of the Act and, thus, a certification mark
cannot be registered if it is generic or merely descriptive
of the services it certifies. See: In re National
Association of Legal Secretaries (International), 221 USPQ
50 (TTAB 1983); and In re Professional Photographers of
Ohio, Inc., 149 USPQ 857 (TTAB 1966). See generally: J.
McCarthy, McCarthy on Trademarks and Unfair Competition,
§19:95 (4th ed. 2001).
We turn first to the issues of whether the term
REGISTERED KINESIOTHERAPIST is generic, or whether it is
just merely descriptive, when used in connection with the
medical services rendered under the certification mark
Ser No. 75/300,422
10
sought to be registered. A mark is merely descriptive if,
as used in connection with the goods and/or services, it
describes, i.e., immediately conveys information about, an
ingredient, quality, characteristic, feature, etc. thereof,
or if it directly conveys information regarding the nature,
function, purpose, or use of the goods and/or services.
See: In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215 (CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757
(TTAB 1992); and In re American Screen Process Equipment
Co., 175 USPQ 561 (TTAB 1972). The issue is not determined
in a vacuum, but rather the mere descriptiveness of the
mark is analyzed as the mark is used in connection with the
goods and/or services.
A mark is a generic name if it refers to the class or
category of goods and/or services on or in connection with
which it is used. In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The test for determining whether a mark is generic is its
primary significance to the relevant public. Section 14(3)
of the Act; In re American Fertility Society, 188 F.3d
1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v.
RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991);
Ser No. 75/300,422
11
and H. Marvin Ginn Corp. v. International Association of
Fire Chiefs, Inc., supra. The United States Patent and
Trademark Office has the burden of establishing by clear
evidence that a mark is generic and thus unregistrable. In
re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
relevant public’s understanding of a term may be obtained
from any competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
Genericness
There is no dispute about the genericness of the term
“kinesiotherapist.” The evidence clearly and convincingly
establishes that the term names a specific type of health
care professional and that the term is recognized and
understood as such. And, at the oral hearing, applicant
even offered to disclaim the term “kinesiotherapist” if
that would advance the application toward registration.
With respect to genericness in this case, however, we
must decide whether the term “REGISTERED KINESIOTHERAPIST”
as a whole is generic. See: Estate of P.D. Beckwith, Inc.
v. Comm’r of Patents, 252 U.S. 538, 545-46 (1920). We find
that the term “REGISTERED KINESIOTHERAPISY” as a whole is
Ser No. 75/300,422
12
generic for the certified medical services rendered by
applicant. Simply put, there is no better way than
“REGISTERED KINESIOTHERAPIST” to name applicant’s services
which essentially provide a certification program for
kinesiotherapists. Applicant maintains that there are
other ways of identifying such services, by using the terms
“certified,” “professional,” or “board certified.”
However, when “registered” is combined with the term
“kinesiotherapist,” the combined term “registered
kinesiotherapist” would appear to be as generic as
applicant’s examples. See: In re Sun Oil Co., 426 F.2d
401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring)
[“All of the generic names for a product belong in the
public domain.”](emphasis in original). Our view is that
the term “REGISTERED KINESIOTHERAPIST” will be viewed in
the same way as “registered nurse,” which is a generic name
for a specific medical professional.5
The designation “REGISTERED KINESIOTHERAPIST” as a
whole is no less generic than its constituents, that is to
say, the combination of the generic terms “registered” and

5 We take judicial notice of the dictionary definition of
“registered nurse”: “n. a graduate trained nurse who has been
licensed by a state authority (as a board of nursing examiners)
after successfully passing examinations for registration.”
Webster’s Third New International Dictionary (unabridged ed.
1993).
Ser No. 75/300,422
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“kinesiotherapist” does not mean something distinct from
the combined meanings of the individual terms. See: In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987). Our view is supported by the NEXIS evidence showing
that the authors of the articles perceived the combined
term “registered kinesiotherapist” as a generic term. The
articles show evidence of the public’s understanding of the
combined term inasmuch as the term is used as a generic
noun in small letters to identify a specific job title in
the medical profession. See: In re American Fertility
Society, supra at 1836. Even though the articles may
identify only individuals who are listed on applicant’s
roster, readers of the articles would perceive the uses of
“registered kinesiotherapist” as a generic term. As such,
the term is generic. See: In re Mortgage Bankers
Association of America, 226 USPQ 954 (TTAB 1985) [CERTIFIED
MORTGAGE BANKER is incapable of identifying source of
services which essentially are the providing of a
certification program for mortgage bankers]; American
Speech-Language-Hearing Association v. National Hearing Aid
Society, 224 USPQ 798 (TTAB 1984) [“Certified Audiologist”
is incapable of distinguishing audiologists certified by an
entity from audiologists that may be certified by other
organizations or associations even if the entity is the
Ser No. 75/300,422
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only such organization maintaining an ongoing certification
program]; In re National Association of Legal Secretaries
(International), supra [PROFESSIONAL LEGAL SECRETARY is
incapable of exclusive appropriation, but rather should, in
fairness, remain in the public domain]; and In re
Professional Photographers of Ohio, Inc., supra [“Certified
Professional Photographer” is not registrable as a
certification mark because it is merely a title bestowed on
an individual rather than a mark used in the sale or
advertising of photography services rendered by that
person].
In making our determination, we have considered the
relevant public to be both medical professionals (e.g.,
kinesiotherapists) and the general public. Although
applicant would have us conclude that the relevant public
comprise the medical professionals only, we find that the
relevant public is broader, and would include patients
seeking the care of a kinesiotherapist who has met certain
standards. In view of applicant’s position on this point,
it has not introduced any evidence bearing on how the
general public, who might avail themselves of medical
services offered by a kinesiotherapist listed in
applicant’s roster, perceive the term “registered
kinesiotherapist.”
Ser No. 75/300,422
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We have carefully reviewed the NEXIS articles relied
upon by the Examining Attorney, together with applicant’s
declarations in response thereto. The NEXIS articles show
uses by others of the term “registered kinesiotherapist” in
a generic manner. By referring to the name of a specific
medical professional in small letters, the authors use
“registered kinesiotherapist” as a generic noun. We note
that the authors use the term “registered kinesiotherapist”
per se, with no reference to “R.K.T.” or to the entire
designation “REGISTERED KINESIOTHERAPIST R.K.T.”
We also have considered the declarations from the
health care professionals. The declarations refer to the
distinctiveness of the designation “REGISTERED
KINESIOTHERAPIST R.K.T.” as a whole. It may well be that
the letter portion of the designation, that is, “R.K.T.”,
is the part that lends any distinctiveness to the mark as a
whole. Although the individuals state that only persons
who have met the standards and tests of skill and
competency established by applicant are permitted to use
“Registered Kinesiotherapist,” no statement is made
regarding distinctiveness of this term per se.
Although we have considered the third-party
registrations, they do not compel a different result
herein. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
Ser No. 75/300,422
16
1564, 1566 (Fed. Cir. 2001) [“Even if some prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”]. Our view is the same with respect to the court
judgment regarding the validity of two marks, both of which
are included in the third-party registrations. While
uniform treatment under the Trademark Act is an
administrative goal, our task in this appeal is to
determine, based on the record before us, whether
applicant’s particular mark sought to be registered here is
generic. As is often stated, each case must be decided on
its own merits. See, e.g.: In re Best Software Inc., 58
USPQ2d 1314 (TTAB 2001).
In sum, the designation “registered kinesiotherapist”
is a combination of commonly understood terms that is
generic when considered as a whole. The designation
“registered kinesiotherapist” should not be subject to
exclusive appropriation, but rather should remain free for
others in the kinesiotherapy profession to use in
connection with their health care services. In re Boston
Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
1999). Competition certainly would be hindered at the
point when others in the field would begin to certify
Ser No. 75/300,422
17
kinesiotherapists. In re Tekdyne Inc., 33 USPQ2d 1949,
1953 (TTAB 1994). Accordingly, the term “Registered
Kinesiotherapist” must be disclaimed apart from the mark.
Mere Descriptiveness
This point is not disputed by applicant. Indeed,
applicant’s reliance on Section 2(f) with respect to
“REGISTERED KINESIOTHERAPIST” acts as a concession that the
term is, at the very least, merely descriptive. Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); and In re Cabot
Corp., 15 USPQ2d 1224, 1229 (TTAB 1990).
Even if we had not found REGISTERED KINESIOTHERAPIST
to be generic, and even in the absence of a claim under
Section 2(f), we nevertheless would find it to be merely
descriptive. The term immediately conveys the impression
that applicant’s certification of medical services involves
the registration of kinesiotherapists who meet certain
certification qualifications set by applicant. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It
is clear that the term “Registered Kinesiotherapist” has a
specific and readily recognized meaning when it is used in
connection with applicant’s services.
Ser No. 75/300,422
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Acquired Distinctiveness
In finding that the term REGISTERED KINESIOTHERAPIST
is incapable of being a source identifier for applicant’s
certification services, we have considered, of course, all
of the evidence touching on the relevant public’s
perception of the term, including the evidence of acquired
distinctiveness. As to acquired distinctiveness, applicant
has the burden to establish a prima facie case of acquired
distinctiveness. Yamaha International Corp. v. Hoshino
Gakki Co., Ltd., supra at 1006.
As indicated above, applicant submitted the
declarations of 93 individuals who are health care
professionals, many, if not all, of whom are listed on
applicant’s “Official Roster of Registered
Kinesiotherapists.” Although we have considered the
declarations, they hardly are the most impressive type of
evidence in this situation. Most of the declarants appear
to have met applicant’s qualifications, passed applicant’s
test and received a certificate stating same. At the very
least, these are persons who know the source of the
certification services. See: In re Edward Ski Products
Inc., 49 USPQ2d 2001, 2005 (TTAB 1999). Given the
individuals’ relationship with applicant, their
declarations play only a minor role in determining public
Ser No. 75/300,422
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perception of the mark. More telling is the absence of
declarations or any other direct evidence from applicant
bearing on the perception of the general public, that is,
patients who will be the recipients of the medical services
certified under the mark, or even other medical
professionals who might recommend a kinesiotherapist. What
we do have is the NEXIS evidence introduced by the
Examining Attorney that indicates that the public would
view the term “registered kinesiotherapist” as generic,
just as in the case of “registered nurse.”
The evidence suggests that applicant has enjoyed a
degree of success, with many individuals being certified
under its auspices. Nonetheless, we have no idea about
either the revenues generated under the mark or the
expenditures made in promoting the mark. The issue here is
the achievement of distinctiveness, and the evidence falls
far short of establishing this. In re Bongrain
International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed.
Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d 1275
(TTAB 1997). To be clear on this significant point, other
than the not surprising recognition by individuals who have
passed applicant’s exam, we have no evidence that patients
and others who avail themselves of medical services
rendered by a “registered kinesiotherapist” recognize the
Ser No. 75/300,422
20
term as a distinctive term for applicant’s services offered
under the mark REGISTERED KINESIOTHERAPIST R.K.T.
Accordingly, even if the term REGISTERED
KINESIOTHERAPIST were found to be not generic, but merely
descriptive, given the highly descriptive nature of the
term, we would need to see a great deal more evidence than
what applicant has submitted in order to find that the term
has become distinctive of applicant’s certification
services. That is to say, the greater the degree of
descriptiveness, the greater the evidentiary burden on the
user to establish acquired distinctiveness. Yamaha Int’l.
Corp. v. Hoshino Gakki Co., supra; and In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., supra.
Due to the generic nature of the term “registered
kinesiotherapist,” the mark REGISTERED KINESIOTHERAPIST may
not be registered in the absence of a disclaimer of the
term.
Decision: The refusal to register is affirmed in the
absence of a disclaimer of the generic term “REGISTERED
KINESIOTHERAPIST.” Applicant is allowed thirty days from
the date of this decision to submit a disclaimer of
“REGISTERED KINESIOTHERAPIST” apart from the mark.
Trademark Rule 2.142(g).