Emosis LLC

Trademark Trial and Appeal BoardJul 20, 2011

No. 77759690 (T.T.A.B. Jul. 20, 2011)

Mailed: 7/20/11 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Emosis LLC ________ Serial No. 77759690 _______ Suzanne K. Ketler of Roetzel & Andress for Emosis LLC. Howard B. Levine, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Quinn, Cataldo and Lykos, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Emosis LLC filed, on June 15, 2009, an intent-to-use application to register the mark BRUISE RX (in standard characters) for “adhesive bandage for the vital bleaching of an area of the skin having discoloration as a result of bruising, and the lysing of extravascular red blood cells” (in Class 5). The trademark examining attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s mark, when THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77759690 2 applied to applicant’s goods, is merely descriptive thereof. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. Before considering the merits of the appeal, we need to address a procedural matter. In the final paragraph of its appeal brief, applicant alternatively requests, in the event the refusal is affirmed, that the application be remanded to the examining attorney so that applicant may file a statement of use and an amendment to the Supplemental Register. (Brief, p. 14). The examining attorney, in his brief, states that “[i]f the Board affirms and then grants the applicant’s request, the examining attorney will withdraw the Section 2(e)(1) refusal upon submission and review of an acceptable amendment to allege use and amendment to the Supplemental Register.” (Brief, unnumbered p. 2, n.1). Both applicant and the examining attorney should note Trademark Rule 2.142(g), which provides that once an application has been considered and decided by the Board on appeal, an application may not be “reopened,” that is, an applicant may not amend its application, or submit additional evidence, at this stage, except in two very limited situations, namely 1) the application may be Ser No. 77759690 3 reopened by the Board for entry of a disclaimer under Section 6 of the Trademark Act, 15 U.S.C. §1056; and 2) the application may be reopened upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of sufficient cause for consideration of any matter not already adjudicated. See In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 n.2 (TTAB 2002) (request in applicant’s brief that if the refusals are maintained the application be amended to the Supplemental Register denied because application which has been decided on appeal will not be reopened); and In re Taverniti, SARL, 225 USPQ 1263, 1264 n.3 (TTAB 1985). See generally TBMP §1218 (3d ed. 2011). Accordingly, applicant’s alternative request is denied. We now turn to the appeal. Applicant contends that the examining attorney has not taken into account the fact that “RX” typically refers to medical treatments that require a doctor’s prescription. Applicant has stated that its goods will be sold over the counter, that is, a prescription will not be needed to obtain the goods. Thus, although applicant states that the word “BRUISE” is “possibly” descriptive, applicant argues the mark BRUISE RX in its entirety is only suggestive. Applicant points to an earlier application that it filed to Ser No. 77759690 4 register the same mark for the same goods. The mark was published for opposition with a disclaimer of “BRUISE,” but later abandoned. Applicant has introduced the relevant prosecution history of its earlier-filed application, indicating that the Board should take into account equitable considerations, namely that applicant relied upon the Office’s allowance of the previous application when it filed its present application. Lastly, in view of the Office’s handling of its prior application, applicant urges that any doubt regarding the mere descriptiveness of its applied-for mark must be resolved in its favor. The examining attorney maintains that RX is an abbreviation for the term “treatment,” and that the mark, when considered as a whole, would be perceived as “bruise treatment.” As such, the mark, which immediately indicates the function and/or purpose of the goods, is merely descriptive when used in connection with bandages. In support of the refusal the examining attorney introduced an entry for “RX” in an online acronym dictionary, as well as several third-party registrations for non-prescription pharmaceutical goods in which the letters “RX” are disclaimed. A mark is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it Ser No. 77759690 5 forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark 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 possible significance that the mark would have to the average purchaser of the goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are Ser No. 77759690 6 will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. See, e.g., In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM is merely descriptive of computer game software); In re Tower Tech Inc., 64 USPQ2d at 1317 (SMARTTOWER is merely descriptive of commercial and industrial cooling towers); and In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS is merely descriptive of computer programs for use in development and deployment of application programs). The word “bruise” means “an injury to underlying tissues or bone in which the skin is unbroken, often characterized by ruptured blood vessels and discolorations; a contusion.” The American Heritage Stedman’s Medical Ser No. 77759690 7 Dictionary (2002).1 The letters “RX” are an abbreviation for, in pertinent part, both “prescription” and “treatment.” (www.acronymfinder.com). Based on the meanings of the individual components comprising applicant’s mark, “BRUISE” and “RX,” we find that the combination BRUISE RX is merely descriptive of the function or purpose of applicant’s bandages, namely as a bruise treatment. No imagination is required by a purchaser or user to discern that the mark, when applied to the goods, describes a bandage used to treat the effects of bruising on the skin. See TMEP §1209.03(p) (7th ed. 2010). Applicant’s argument that the “RX” component of the mark is not descriptive because the goods are sold over the counter, and not by a doctor’s prescription, is not persuasive in the least. We recognize that “RX” means “prescription” but, as shown by the same evidence, it also stands for “treatment.” Indeed, applicant has referred to its goods as “an over the counter treatment.” (Brief, p. 10). Further, in its previous application, applicant’s goods were identified as “treatment bandages.” We have considered the third-party registration 1 Dictionary definitions are proper subject matter for judicial notice. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 77759690 8 evidence submitted by the examining attorney. These registrations, covering over-the-counter products such as vitamins, and dietary and nutritional supplements, all include a disclaimer of “RX.” (See, e.g., SYNERGY RX, DISCOMFORT RX, and GOOD NIGHT RX). However, these registrations are not conclusive on the question of the mere descriptiveness of “RX” inasmuch as each case must stand on its own merits. In re International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000) (“With respect to third- party registrations which include disclaimers...we do not have before us any information from the registration files as to why an Examining Attorney required and/or why the applicant/registrant offered such disclaimers.”). See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 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.”); and In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). See TMEP §1209.03(a) (7th ed. 2010). Reading applicant’s brief leaves little question that applicant’s main bone of contention with the examining attorney’s refusal relates to the lack of probative value accorded to the prosecution history of its earlier Ser No. 77759690 9 application. Applicant filed application Serial No. 77183390 to register the mark BRUISE RX (“BRUISE” disclaimed) for “treatment bandages for skin bruise eradication.” In examining the application, the prior examining attorney asked applicant to state whether the goods would require a prescription, and that if they did, registration might be refused under Section 2(e)(1) on the ground of mere descriptiveness. Applicant responded by stating that a prescription would not be needed to obtain the bandages. The examining attorney then approved the application for publication, and when no opposition was filed against it, the Office issued a notice of allowance. The application subsequently was abandoned due to applicant’s failure to file either a statement of use or an extension request. The prosecution history of applicant’s earlier application does not persuade us to reach a different result with respect to the present application. The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time is registration is sought. We appreciate applicant’s frustration over the inconsistent examination given to its two essentially identical applications. Although consistency in examination and the register are commendable Ser No. 77759690 10 goals, we are not bound by the prior actions of examining attorneys. Thus, we are not bound by the previous examining attorney who apparently did not view the designation BRUISE RX as a whole as merely descriptive of applicant’s bandages. See In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009)(“applicant is not automatically entitled to a return to the status quo...the Board is not bound by the decision of the prior trademark examining attorney”); In re Ginc UK Ltd., 90 USPQ2d 1472, 1480 (TTAB 2007); and In re Outdoor Recreation Group, 81 USPQ2d 1392, 1399 (TTAB 2006). See also In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006)(although the Board is “somewhat troubled” by applicant’s prior Supplemental Register registrations of the same or similar marks, genericness still found based on the clear evidence of record). Further, we do not see the Office’s earlier view of applicant’s mark as raising a doubt about mere descriptiveness. Considering the totality of the evidence, we find that the record supports a finding that BRUISE RX, when applied to adhesive bandages, is merely descriptive of a function or purpose of the goods, namely that the bandages act as a bruise treatment. Decision: The refusal to register is affirmed.