Diapulse Corporation of America

Trademark Trial and Appeal BoardJun 23, 2010

No. 76699368 (T.T.A.B. Jun. 23, 2010)

Mailed: June 23, 2010 PTH UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Diapulse Corporation of America ________ Serial No. 76699368 _______ Myron Amer of Myron Amer, P.C. for Diapulse Corporation of America. David S. Miller, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Hairston, Grendel and Mermelstein, Administrative Trademark Judges. Opinion by Hairston, Administrative Trademark Judge: Diapulse Corporation of America has appealed from the Trademark Examining Attorney’s final refusal to register the mark WIRELESS MEDICAL TECHNOLOGY for services ultimately identified as “medical services, namely, providing electromagnetic energy treatment of a patient for the purpose of treating edema and pain in superficial soft THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 76699368 2 tissues” in International Class 44.1 The examining attorney refused registration under Sections 1 and 45 of the Trademark Act on the ground that the specimens of record are not acceptable because they do not show use of the mark in connection with the services recited in the application. Applicant has appealed and both applicant and the examining attorney have filed briefs. We note that neither the examining attorney nor applicant, in their respective briefs, has discussed the initial specimen submitted with the application. Apart from the fact that this specimen does not even mention the mark WIRELESS MEDICAL TECHNOLOGY, the specimen appears to be the first page of a press release. A press release is not an acceptable specimen. See Trademark Manual of Examining Procedure (TMEP) §1301.04(b)(6th ed. rev. 2010). In view thereof, there is no dispute that this specimen is unacceptable. Insofar as the substitute specimen (two pages of promotional material) is concerned, the examining attorney maintains that this specimen is unacceptable because it makes reference to a medical device rather than the 1 Application Serial No. 76699368, filed September 8, 2009, on the Principal Register. Applicant subsequently amended the application to seek registration on the Supplemental Register. Ser No. 76699368 3 services recited in the application. In addition, the examining attorney argues that in view of a prior appeal adjudicating the acceptability of the substitute specimen, applicant is now precluded by res judicata from arguing that the specimen is sufficient. Applicant, on the other hand, maintains that because it identifies the applied-for mark as a “service mark” in the application, and the filing receipt for the application identifies the class as International Class 44, a “services” class, this supports applicant’s position that the substitute specimen shows use of the mark for the services recited in the application. We note that applicant does not take issue with the examining attorney’s contention that the issue of the acceptability of the substitute specimen is now precluded from review by the doctrine res judicata. We agree with the examining attorney that the issue of the acceptability of the substitute specimen is now res judicata. A second suit is barred by res judicata if “(1) there is identity of parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is barred on the same set of transactional facts as the first.” TMEP §1217. See Ser No. 76699368 4 also In re Bose Corp., 476 F.3d 1331, 81 USPQ2d 1748, 1752 (Fed. Cir. 2007). In the present case, the parties are the same and there has been a final judgment on the merits. Specifically, in Application Serial No. 76592393, applicant sought to register the same mark, WIRELESS MEDICAL TECHNOLOGY, for “electromagnetic energy treatment of a patient.” In addition, applicant submitted the same brochure specimen as submitted as the substitute specimen herein. In a decision issued December 6, 2006, the Board affirmed the examining attorney’s refusal on the ground that the specimen did not show use of the mark in connection with the services. Applicant does not dispute that res judicata is applicable, and the circumstances have not changed (except that the recitation of services in the present application is more specific). Thus, the doctrine of res judicata prohibits relitigation of the issue of the acceptability of the substitute specimen. Under the circumstances, we need not consider applicant’s arguments. In any event, the substitute specimen in the present application is clearly unacceptable because it does not make reference to the services recited in the application. The facts that applicant identifies the applied-for mark as a “service mark” in the Ser No. 76699368 5 application, and the filing receipt for the application identifies the class as International Class 44, a “services” class, do not somehow make the specimen acceptable for the services recited in the application. In view of the foregoing, we find that applicant’s initial and substitute specimens do not show use of the mark in connection with the services recited in the application. Decision: The refusal to register is affirmed.