Fetal Fotos, Inc.

Trademark Trial and Appeal Board

Apr 9, 2004

No. 75825852 (T.T.A.B. Apr. 9, 2004)

Hearing: Mailed:
January 15, 2004 April 9, 2004
Papers Nos. 23 & 24
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Fetal Fotos, Inc.
________
Serial Nos. 75825851 and 75825852
_______
Peter M. de Jonge and Nathan S. Winesett of Thorpe North &
Western, LLP for Fetal Fotos, Inc.
Paula B. Mays, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Chapman, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Fetal Fotos, Inc. seeks registration on the Supplemental
Register of the mark FETAL FOTOS for goods identified, as
amended, as “pre-recorded videocassettes featuring
photographic images of a fetus” in International Class 9 and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial Nos. 75825851 and 75825852
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“photographic prints of images of a fetus”1 in International
Class 16, as well as services recited as “providing visual
images of a fetus through ultrasound,”2 in International Class
42.
Inasmuch as both of these applications involve common
questions of law and fact, and each has been treated in
substantially the same manner by the applicant and by the
Trademark Examining Attorney, we have consolidated these two
appeals by issuing a single decision.
The Trademark Examining Attorney issued final refusals to
register in both applications, under Section 23 of the
Trademark Act, 15 U.S.C. §1091, on the ground that applicant’s
mark is incapable of identifying and distinguishing its goods
and services, i.e., that FETAL FOTOS is a generic name for the
identified goods and recited services.
1 Application Serial No. 75825851, a combined class application
for these two classes of goods, was filed on October 18, 1999 for
registration on the Principal Register, based upon applicant’s
allegation of use anywhere at least as early as February 21, 1994
and use in commerce at least as early as March 29, 1994. On April
19, 2001, applicant amended its application to seek registration on
the Supplemental Register.
2 Application Serial No. 75825852 was filed on October 18, 1999
for registration on the Principal Register, based upon applicant’s
allegation of use anywhere at least as early as February 21, 1994
and use in commerce at least as early as March 29, 1994. On April
19, 2001, applicant amended its application to seek registration on
the Supplemental Register.
Serial Nos. 75825851 and 75825852
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Applicant has appealed in both applications. Both
applicant and the Examining Attorney have filed briefs and
both appeared at an oral hearing held before the Board.
We affirm the refusals to register.
As a preliminary matter, we note that applicant has
amended both applications to seek registrations on the
Supplemental Register. Accordingly, while the briefs of
applicant and of the Trademark Examining Attorney continue to
argue the issue of mere descriptiveness and the factual
question of acquired distinctiveness, we find that the sole
issue before us is whether this term is generic, and hence
incapable of registration on the Supplemental Register.
With respect to the question of genericness, applicant is
correct in pointing out that the Office has the burden of
proving genericness by “clear evidence” thereof. In re
Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987). The critical issue in
genericness cases is whether members of the relevant public
primarily use or understand the term sought to be registered
to refer to the category or class of goods or services in
question. In re Women’s Publishing Co. Inc., 23 USPQ2d 1876,
1877 (TTAB 1992). Our primary reviewing court has set forth a
two-step inquiry to determine whether a mark is generic:
First, what is the category or class of goods at issue?
Serial Nos. 75825851 and 75825852
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Second, is the term sought to be registered understood by the
relevant public primarily to refer to that category or class
of goods or services? H. Marvin Ginn Corporation v.
International Association of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528, 530 (Fed. Cir. 1986).
Addressing the first part of the Ginn genericness
inquiry, we find that the genus of goods or services at issue
in this case is the picture or photo of a fetus created by
ultrasound imaging (or sonography). Clearly, there may be
more than one “name” for a product or service. Accordingly,
the instant record shows, and applicant does not dispute, that
there are many permutations of these words, all of which may
serve as generic designations for these keepsake products and
the service that provides them (e.g., ultrasound image,
ultrasound picture, sonogram picture, fetal image, fetus
photo, fetal picture, etc.).
We turn next to the second part of the Ginn genericness
inquiry: whether the matter applicant seeks to register,
FETAL FOTOS, is understood by the relevant public primarily to
refer to the genus of goods and services at issue, i.e.,
videocassettes and photographic prints of images of a fetus and
the service of providing these visual images through
ultrasound.
Serial Nos. 75825851 and 75825852
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The Trademark Examining Attorney contends that “[i]n the
present case, the class of services herein are [sic] exactly
what the proposed mark indicates, photographs of fetus [sic].”
The Trademark Examining Attorney argues, further, that “fotos”
is phonetically identical to “photos” and, thus, applicant’s
mark is essentially identical to “fetal photos”; and that
“fetal photos” is the generic name for a category or genus of
goods and services which includes applicant’s photographic
prints and videocassettes featuring photographic images of a
fetus as well as providing visual images of a fetus through
ultrasound.
By contrast, applicant argues that the Trademark
Examining Attorney has not sustained her burden of proof.
Applicant contends that the evidence does not show any generic
use of its specific mark, FETAL FOTOS; that the dictionary
definitions do not show a common understanding of applicant’s
goods and services as recited; and that contrary to the
contentions of the Trademark Examining Attorney, this record
proves that its claimed mark would be perceived as a source
identifier.
In support of her position, the Trademark Examining
Attorney submitted dictionary definitions, excerpts from
Internet websites, as well as excerpts from articles found in
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the LEXIS/NEXIS database.3 These hits included use of the term
“fetal photo” and “fetus photo,” such as the following:
HEADLINE: “Baby Pictures: A Fetal Photo, or a
Little Home Movie of Baby Within the Womb?”
The State (Columbia, SC), March 4, 2001.
.oOo.
HEADLINE: “Technology gives ‘baby pictures’ a 3-
D image”
Atlanta Perinatal purchased its first
machine in 1999, and began advertising its
fetal photo service late last year. For
about $200 the practice offers any
pregnant woman – whether a patient of the
practice or …
The Atlanta Journal and Constitution, May 30,
2001.
.oOo.
HEADLINE: “‘9 Months,’ The birth of a
publication for moms-to-be”
… nine-months-pregnant beauty revels in
one sequence of photos and Lennart
Nilsson’s justly famous 1965 developing
fetus photos are reprinted. While the
text seems alive to the mysteries of birth
and renewal, the tone is refreshingly
subdued…
USA Today, December 14, 1989.
.oOo.
HEADLINE: “Artist’s style catches eyes at arts
council show”
… Lezlie Culberson invites viewers to
journey back to the womb in her three-
3 It is true that many of the LEXIS/NEXIS excerpts refer to the
use of unsettling pictures of aborted fetuses used by anti-abortion
protestors – not the products of the fetal keepsake photography and
video industry. However, the fact that the technology and purpose
behind these reported incidents are far removed from applicant’s
goods and services does not defeat the value of the remaining usages
that are clearly germane to applicant’s commercial enterprise.
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dimensional panels veneered with textural
fetus photographs….
The Virginian-Pilot (Norfolk, VA), May 4, 1997.
.oOo.
HEADLINE: “Mountain Bikes, Microbrews and Baby
Clues”
One truly bright spot is the use of the
famous fetus photos from Lennart Nilsson’s
book, “A Child is Born,” wherein an
obstetrician appears in utero to point out
fascinating fetal …
The San Francisco Chronicle, July 9, 1995.
Yet, throughout the prosecution of these applications,
applicant has repeatedly argued that “fetal photos” has not
been shown to be a term used to describe its goods and
services. However, in addition to the LEXIS/NEXIS excerpts
reproduced above, according to an article that appeared as a
source document in several different webpages placed into the
record by the Trademark Examining Attorney, it appears that in
the world of photography, the term “fetal photography” is now
a term of art. See e.g., “Shooting the Mother: Fetal
Photography and the Politics of Disappearance,” Camera Obscura
28, Winter 1993, Duke University Press.4
Applicant argues that a photograph is not the equivalent
of ultrasound imaging. However, the application listing goods
4 This is a U.S. publication cited in several different webpages,
including that of
http://www.arts.ualberta.ca/%7Ejwilliam/wom&photo.htm.
Serial Nos. 75825851 and 75825852
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herein uses the terms “photographic images” and “photographic
prints” in the identifications of goods. Moreover, applicant
uses the terminology in the specimens of record in these
applications. In its brochure (reduced in size as reproduced
below), applicant describes the “30 minute ultrasound session”
as an experience that provides the expectant mother the
opportunity to take home four still photographs of her unborn
child – her “Baby’s First Photos”:
However, applicant argues that the website and specimens
of record do not support the conclusions drawn by the
Serial Nos. 75825851 and 75825852
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Trademark Examining Attorney, and that “Your Baby’s First
Photos” is itself used as a trademark:
The Examining Attorney also attempts to use
phrases produced from Applicant’s website to
show generic usage. The phrase, “Fetal Fotos
offers expectant parents a chance to record an
ultrasound picture of their unborn child,” uses
the phrase “ultrasound picture.” This term has
no bearing on the issue of genericness for
Applicant’s mark. An ultrasound picture is
indeed a generic term. A picture is not
necessarily a photograph, since it is not
limited to images created by photography. The
phrase, “Your baby’s first photos,” is indeed
used as a trademark. No one actually thinks
Applicant is providing a photograph of a living
fetus. Rather, the phrase is suggestive of
Applicant’s goods and services because it
requires the imagination, thought, and
perception for consumers to reach a conclusion
as to the nature of Applicant’s services [cite
omitted].
(Applicant’s reply brief, p. 6)
The Trademark Examining Attorney has placed a variety of
articles in the record that discuss the underlying technology.
These excerpts show that ultrasound imaging is a common
medical diagnostic procedure that uses high-frequency sound
waves to produce dynamic images (sonograms). In medical
settings, prenatal ultrasound examinations are performed by
trained professionals, such as sonographers, radiologists or
obstetricians. For example, obstetricians use ultrasound at a
very low power level to check the size, location, number, and
age of fetuses, the presence of some types of birth defects,
Serial Nos. 75825851 and 75825852
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fetal movement, breathing, and heartbeat. The procedure
involves using a transducer, which sends a stream of high-
frequency sound waves5 into the body and detects their echoes
as they bounce off internal structures. The sound waves are
then converted to electric impulses, which are processed to
form an image displayed on a computer or video monitor. In
applicant’s brochure, it refers to a “large 19 inch television
screen.” It is from these images that computer printouts,
videos and portraits are made.
While applicant’s underlying 3-D sonography is quite
similar to that performed by a radiologist or obstetrician,
applicant’s goods and services represent the extension of
fetal imaging technology from the field of diagnostic medicine
to the keepsake industry:
An ultrasound is generally used as a diagnostic
tool in the practice of medicine to determine
the health of a fetus. However, applicant
provides the services of using this diagnostic
tool to present the consumer with a memorable
ultrasound image of the unborn baby, which the
consumer can preserve as a keepsake. In order
for a consumer to determine the nature of
Applicant's goods and services, the consumer
must perceive the common use of photographs to
preserve as a keepsake a memorable picture of a
person to view on future occasions. Then, the
5 In answering the question of “What is ultrasound?,” applicant’s
brochure says these are “low frequency sound waves.” The rest of
the record suggests that applicant would be more accurate in its
attempts to reassure potential customers by touting these goods and
services as involving low-levels of high-frequency sound waves.
Serial Nos. 75825851 and 75825852
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consumer must imagine preserving an ultrasound
image for the same purpose, even though
ultrasound images are typically diagnostic
tools. The consumer must also imagine the
ultrasound image being framed for display in a
similar fashion as photographs. In other
words, Applicant's mark suggests to consumers
another purpose of an ultrasound image besides
use as a diagnostic tool. It suggests that
Applicant provides goods and services related
to providing decorative keepsakes for
preserving an image of an unborn child.
(Applicant’s reply brief, p. 9)
Applicant argues that given the definitions of a “photo”
placed into the record, its images cannot be seen as photos:
… [T]he definition provided by the Examining
Attorney clearly defines a photo and a
photograph as an “image that has been produced
on photosensitive film or paper by the process
of photography.” Ultrasound images, however,
are produced by ultrasonic sound waves and are
not produced on photosensitive film or paper by
the process of photography. Accordingly,
ultrasound images are not “photos.”
(Applicant’s reply brief, p. 3)
We find this particular argument disingenuous. While the
sound waves are converted to electric impulses, which are in
turn processed to form an image on an ultrasound monitor, a
picture quality printout of this image will be perceived by
consumers as a “photo” as surely as would other graphic images
printed out from any such peripheral device.6 See LEXIS/NEXIS
6 In its appeal brief, applicant has offered to amend the
identifications of goods in application Serial No. 75825851 to
(this note is continued on the next page)
Serial Nos. 75825851 and 75825852
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stories submitted by the Trademark Examining Attorney, for
example, “A Mother’s Day Sampler – Expectant mothers’ new show
and tell: ultrasound snapshot,” St. Petersburg Times, May 10,
1987.
Applicant concedes that the word “photos” is suggestive
or, at worst, merely descriptive, of applicant’s goods and
services but contends that it is not their generic
designation. However, as we have seen, applicant’s brochure
uses the word “photo” repeatedly, as does applicant’s own
webpage (e.g., “… the best still 3-D photo results come when
baby is asleep or still.” www.fetalfotosusa.com/faq.html
(emphasis supplied).
We find that applicant is in the business of obtaining
and providing fetal portraits or videos. Applicant’s brochure
and webpages are consistent with the evidence the Trademark
Examining Attorney has placed into the record that a
photograph is often the result of an ultrasound examination of
replace the word “photographic” with the term “ultrasonographic.”
Consistent with our understanding of the underlying technology and
the most precise terminology for the identifications of goods
herein, it may well be accurate to do this in the International
Class 9 identification (so that it would be “pre-recorded
videocassettes featuring ultrasonographic images of a fetus”) but
not with the International Class 16 identification where the word
“photographic” correctly modifies the resulting paper product – not
the source image. In any case, this proposed amendment was not
timely proffered, and even if it had been timely offered and
accepted by the Trademark Examining Attorney, it would not change
the result herein.
Serial Nos. 75825851 and 75825852
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an unborn child in utero – and especially when this technology
is used for entertainment.7
Alternatively, applicant argued in its brief and at the
oral hearing that even if we should determine that the term
“fetal photos” is generic for applicant’s goods and services,
it does not follow that applicant’s mark FETAL FOTOS is
similarly generic. Applicant argues that the Trademark
Examining Attorney has failed to show that members of the
relevant public will perceive this misspelled term as the
generic equivalent of “Fetal Photos.” Furthermore, as to the
impact of applicant’s adopting as its mark this misspelled
term, applicant argues that it is most relevant that fifty-
three of its customers executed declarations evidencing the
distinctiveness of the FETAL FOTOS term. Applicant argues
that the Trademark Examining Attorney has not countered this
evidence and that she has failed “to show that the relevant
consuming public principally perceives the mark FETAL FOTOS as
7 “Journey to birth – Second Trimester; weighing the risks,
benefits, of testing,” Star Tribune (Minneapolis, MN), June 11,
2001; “Health passes from Mom to Child,” Albuquerque Journal,
May 13, 2001; “Baby Pictures: A Fetal Photo, or a Little Home
Movie of Baby Within the Womb?” The State (Columbia, SC), March
4, 2001; “Baby’s First Picture,” The Macon Telegraph, December
4, 2000; “Women buy Sonograms when Insurers Won’t,” The Dayton
Daily News, January 6, 1994.
Serial Nos. 75825851 and 75825852
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the generic equivalent of ‘fetal photos’ ….” (Applicant’s
reply brief, p. 7)
However, the Trademark Examining Attorney is neither
equipped nor compelled to conduct a survey to demonstrate how
the relevant consuming public principally perceives this
particular term. Under our precedent, we note that
applicant’s use of a misspelling does not require a contrary
conclusion. That is, applicant should not be able to obtain a
registration for a generic term merely by using a misspelling.
See, J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §12:38 (4th ed. June 2001).
In conclusion, we find that FETAL FOTOS names applicant’s
identified goods and services and is, therefore, generic and
incapable of registration on the Supplemental Register.
Decision: The refusals to register under Section 23 of
the Act are hereby affirmed.