American Medical Rehabilitation Providers Associationv.UB Foundation Activities, Inc.

Trademark Trial and Appeal Board

Sep 23, 2008

No. 92043381 (T.T.A.B. Sep. 23, 2008)

Oral Hearing: June 10, 2008 Mailed: September 23, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

American Medical Rehabilitation Providers Association
v.
UB Foundation Activities, Inc.
_____

Opposition No. 91158512
(Consolidating Cancellation No. 92043381)
_____

Deborah M. Lodge and Mary F. Love, of Patton Boggs, LLP for
American Medical Rehabilitation Providers, Association.

Paul I. Perlman, of Hodgson Russ LLP for UB Foundation
Activities, Inc.

_____

Before Grendel, Zervas, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

The opposer and petitioner in this case is American
Medical Rehabilitation Providers Association (AMRPA). The
applicant and respondent is UB Foundation Activities, Inc.
(UBFA). UBFA is the successor-in-interest to the marks at
issue in these consolidated proceedings. The mark at issue
for opposition is “FIM” for “printed publications in the
field of rehabilitation, namely printed coding forms,
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91158512
(Consolidating Cancellation No. 92043381)

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guides, measurement instruments, and reports”1 in
International Class 16. The mark at issue for cancellation
is “THE FIM SYSTEM” for “developing measuring instruments
and educational manuals for use by others in the field of
rehabilitation; teaching others to measure and report
rehabilitation outcomes; analyzing rehabilitation outcomes
for others,”2 in International Class 41.
AMRPA initiated the opposition on November 7, 2003 and
the cancellation on May 28, 2004. AMRPA filed a motion to
consolidate the cases on October 29, 2004, which the Board
granted on November 1, 2004. In the notice of opposition
and the petition to cancel, AMRPA alleged that the marks
“FIM” and “THE FIM SYSTEM,” respectively, are “generic and
incapable of acquiring distinctiveness.” AMRPA further
alleged in both of its complaints that to the extent the
marks are not deemed generic, they are “merely descriptive”
and they “lack acquired distinctiveness.” UBFA denied the
salient allegations of the notice of opposition and the
petition to cancel. Both parties filed briefs, and AMRPA
filed a reply brief. At the request of both parties, an

1 Application No. 75497361, filed June 4, 1998, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging first
use and first use in commerce on January 1, 1994. The
application claims acquired distinctiveness under Section 2(f) of
the Trademark Act, 15 U.S.C. § 1052(f).
2 Registration No. 2647644, registered on November 12, 2002,
based on a filing date of June 4, 1998, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use and first
use in commerce on January 1, 1996. The registration claims
acquired distinctiveness under Section 2(f) of the Trademark Act,
15 U.S.C. § 1052(f).
Opposition No. 91158512
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oral hearing was scheduled and took place on June 10, 2008.
The hearing was presided over by this panel.
After careful consideration of the evidence and the
arguments presented by the parties, for the reasons
discussed herein, AMRPA’s opposition to the registration of
“FIM” is dismissed, and its petition to cancel “THE FIM
SYSTEM” is denied.

The Record
The record in these consolidated proceedings consists
of the pleadings and the files of the “FIM” application and
“THE FIM SYSTEM” registration. Additionally, both parties
submitted multiple testimony depositions and notices of
reliance.
AMRPA took the testimony deposition, with accompanying
exhibits, of the following 3 individuals:
1. Ms. Carolyn Zollar, Vice-President for
Government Relations and Policy for AMRPA.
2. Gerben DeJong, Ph.D., Senior Fellow at the
National Rehabilitation Hospital.
3. Dr. Kenneth Adams, Chief Medical Officer for
Rehab Care Group.
UBFA additionally took the testimony deposition, with
accompanying exhibits, of the following 6 individuals:
1. Ms. Kathleen Dann, Chief Operating Officer for
Uniform Data Systems.
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2. Ms. Francis Hagerty, Director of Marketing for
Uniform Data Systems.
3. Ms. Elizabeth Eisenhauser, Information
Resource Specialist for Uniform Data Systems.
4. Ms. Janet Bailey, Director of Clinical Trials
for Uniform Data Systems.
5. Dr. Samuel J. Markello, Associate Director of
Uniform Data Systems.
6. Dr. Carl Granger, Executive Director of
Uniform Data Systems.
Standing
Generally, opposer/petitioner must show a “personal
interest in the outcome of the proceeding” as well as “a
reasonable basis for belief of damage.” See Books on Tape
Inc. v. The Booktape Corp., 5 USPQ2d 1301, 1302 (Fed. Cir.
1987) (petitioner, as a competitor of respondent, “clearly
has an interest in the outcome beyond that of the public in
general and has standing.”) It is not necessary that
opposer/petitioner allege or establish its own prior rights
in the marks at issue. Id. AMRPA alleged the following in
its petition to cancel “THE FIM SYSTEM”, with substantially
similar allegations in its opposition to “FIM”:
2. Petitioner AMRPA is an association of medical
rehabilitation providers, providing
education, research and advocacy in the areas
of medical rehabilitation, services, and
costs, and patient assessment tools and
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outcome reporting. AMRPA has a membership of
over 400 rehabilitation providers and other
members. It conducts regular meetings,
publishes several publications and operates a
sophisticated inpatient rehabilitation
outcomes system used by inpatient
rehabilitation providers to assist inpatient
rehabilitation facilities to comply with
government regulations.

3. Registrant’s mark consists of the generic
words “THE” FIM” and “SYSTEM.” “THE” and
“SYSTEM” do not add any distinctiveness to
the mark. “FIM” is commonly understood in
the rehabilitation field as the acronym for
“functional independence measure.” Both
“FIM” and “functional independence measure”
are common, descriptive terms used in the
medical rehabilitation field to denote a
particular type of assessment tool and
process called the “Functional Independence
Measure” and related documentation and
scores. Both terms are used by the
Petitioner AMRPA, by AMRPA members and by
others in the field, in connection with
measuring a patient’s physical ability to
function independently.

4. Government regulations from the Center for
Medicare and Medicaid Services (“CMS”)
require rehabilitation providers to submit a
specific form, the Inpatient Rehabilitation
Facilities-Patient Assessment Instrument
(“IRF-PAI”), in order to obtain Medicare
reimbursement under the Inpatient
Rehabilitation-Prospective Payment System
(“IRF-PPS”). The mandatory IRF-PAI forms
include functional independence measures or
FIM components.

(Pet. to Cancel, paras. 2-4)
UBFA has not contested AMRPA’s standing in either
proceeding. We find that AMRPA has established sufficient
grounds to plead and prosecute these actions.
Opposition No. 91158512
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Genericness
Generic terms are words or phrases that the relevant
purchasing public understands primarily as the common or
class name for the goods or services. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed.
Cir. 2001); In re American Fertility Society, 188 F.3d 1341,
1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are
incapable of functioning as registrable trademarks denoting
source, and are not registrable on the Principal Register
under §2(f) or on the Supplemental Register.
The Federal Circuit has established a two-part test
used to determine whether a designation is generic: (1) What
is the class of goods or services at issue? and (2) Does the
relevant public understand the designation primarily to
refer to that class of goods or services? H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc., 782
F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test
turns upon the primary significance that the term would have
to the relevant public. In an opposition/cancellation, the
opposer/petitioner has the burden of proving genericness by
a "preponderance of the evidence." Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1887 (TTAB 2006) (in
counterclaim for cancellation, “[i]t is applicant's burden
to demonstrate by a preponderance of the evidence that
DARJEELING is generic, or that the mark has become generic
as a result of opposer's failure to exercise control over
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use of the mark,” citing Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991)).
As AMRPA has acknowledged repeatedly in the record, the
“FIM” and “THE FIM SYSTEM” terms at issue in these
consolidated proceedings refer to rehabilitation tools
utilized by rehabilitation health care professionals.
(Zollar dep. at 62:19 and 90:12-17; Adams dep. at 39:5-6;
DeJong dep. at 55:14-56:2 and 83-88). Accordingly, we find
that the genus of goods covered by both the “FIM” and “THE
FIM SYSTEM” marks is “rehabilitation assessment tools.” We
find too that the relevant public is health care
professionals who are involved in the field of
rehabilitation.
1. Alleged generic use of “FIM” by the relevant
public.
Evidence of the relevant public's understanding of a
term may be obtained from any competent source including
consumer surveys, dictionary definitions, newspapers and
other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
AMRPA’s exhibits and deposition testimony include various
uses of the term “FIM.” In its brief, AMRPA pointed to
several of these uses to support its assertion that the
relevant public uses “FIM” in a generic manner. Since AMRPA
highlighted these particular uses, we consider them AMRPA’s
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best evidence of genericness. A sampling of AMRPA’s
highlighted uses includes:

1. “I am writing to you regarding the Functional
Independence Measure (FIM) and the Uniform Data
System (UDSmr). Schoolcraft College has a very
well known and established Occupational Therapy
Assistant Program. Fifty-percent of our
clinical field work centers are FIM
subscribers. Our students are required by
these centers to use the FIM.” Letter from
Schoolcraft College to Janet Bailey, Director
of Subscriber Services to Uniform Data System
for Medical Rehabilitation, dated February 4,
1998.

2. “Figure 1: (a) Evolution of the scores
obtained for each individual FIM item. A score
of 1 corresponds to total dependency, and 7 to
full independence for daily-life activities.
(b) Evolution of the Neurobehavioural Rating
Scale-Revised (NRS-R) scores. Only the most
significant items are represented. A score of
1 corresponds to no disorder, 2 to mild
trouble, 3 to moderate trouble and 4 to severe
trouble.” BRAIN INJURY, 1996 VOL. 10, No. 2,
149-153.

3. “Differences in functional outcome were
determined by analyzing admission, discharge
and changes in FIM scores. An additional
measure of functional outcomes included
successful prosthetic ambulation and prosthetic
complications during admission.” Am J. PHYS.
MED. REHAB. at 353-357.

4. “We are looking at a modified version of the
FIM, at least for our own documentation, and
then using the standard FIM scores only for our
UDS reporting.” Letter from Cypress
Rehabilitation Center dated January 30, 1997.

5. “CEC Continuing Education Consortium . . . FIM
Certification Training Class” March 23 – 9:00
am to 12:30 pm. Fee $45. 3 contact hours.”
March 1998 brochure.

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6. “Although the IRF-PAI contains portions of the
FIM – an evaluation tool that an estimated 85%
of the inpatient rehab world uses now – it has
additional questions about medical conditions
and comorbidities.” PPS Alert for Inpatient
Rehab, August 2001.

7. “The first product to come from Granger’s
initiative was the Functional Independence
Measure or FIM, a paper system used by adult
rehabilitation units.” Buffalobizjournal.com
June 18-24, 2004.

The evidence submitted by AMRPA does not bear its
burden of showing genericness of the “FIM” term. While the
first excerpt spells out “Functional Independence Measure,”
it also indicates source from the Uniform Data System, which
is “a division of UB Foundation Activities that offers tools
to the medical rehabilitation field.” (Dann dep. at 8:29-
9:1). UDS was created in 1985 to handle “FIM” operations
and licensing. (Granger dep. 151:3-15). The second excerpt
compares the “FIM” to another, similar test. The third
excerpt simply describes the test, and the fourth excerpt
again acknowledges UDS as the source of the “FIM.” The
fifth excerpt indicates “FIM” as a proprietary system that
requires certification; the sixth refers to a rehabilitation
tool that seeks to surpass the success of the “FIM”; and the
seventh acknowledges Dr. Granger, Executive Director of UDS,
as the creator of the “FIM.” These excerpts go against
AMRPA’s position, by pointing to an understanding among the
relevant public that “FIM” does not refer to generic
“printed publications in the field of rehabilitation, namely
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printed coding forms, guides, measurement instruments, and
reports” as identified in UBFA’s Application No. 75497362.
To further counter the notion that “FIM” refers to a
genus in and of itself, UBFA submitted ample evidence of
other rehabilitation assessment tools that either mimic the
FIM, complement it, or simply provide some other type of
rehabilitation assessment. See UBFA’s brief and testimony
citations, pp. 29-30, which point to 18 different
rehabilitation assessment tools, some of which are used as
proprietary marks. UBFA’s evidence is supported by AMRPA’s
employee and witness, Carolyn Zollar. (Zollar dep. at 77:1-
12 “There are various instruments that measure different
parts of functional independence and ability, yes.”).
UBFA has further shown by probative evidence that
health care professionals in the field of rehabilitation
recognize it as the source of the “FIM.” See UBFA’s
Exhibits #12-16. There is substantial evidence in the
record of potential subscribers requesting permission from
UBFA’s UDS division to use the “FIM” instrument and mark.
Id. To the extent a “FIM” user or media outlet may
occasionally fail to acknowledge “FIM” as a proprietary
mark, UBFA polices and corrects such misuse. Id. To that
effect, the record shows numerous letters from UBFA
notifying institutions and media outlets when the “FIM” mark
has been misattributed. Id.
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Moreover, UBFA has produced evidence of its use of
“FIM” as a mark in printed publications. See Plyboo America
Inc. v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999)
(applicant capitalized its proposed mark and placed it in
quotations, indicating belief that the term is used as mark
and not in generic sense). Indeed, UBFA has used the term
“FIM” with a “TM” to indicate its trademark rights on the
FIM instrument forms, the form required by Medicare, and
licensed from UDS by thousands of facilities, for at least
the past 10 years. See UBFA’s Exhibits 12-16.
Accordingly, AMRPA has not met its burden of
establishing generic use by the relevant public of “FIM”.
Instead, as shown in the record, the relevant public
perceives that there are other rehabilitation codes
available to them, and they refer to the FIM as a particular
option that emanates from a particular source, the UDS
division of UBFA.
2. Alleged generic use of “THE FIM SYSTEM” by the
relevant public.
The mark at issue in the cancellation proceeding, “THE
FIM SYSTEM,” is a phrase. The test for evaluating the
genericness of a phrase is, as with a one-word mark, set
forth in H. Marvin Ginn, supra, 228 USPQ at 530. However,
the Federal Circuit has dictated that in evaluating a phrase
under the two-pronged test of H. Marvin Ginn, we must
determine whether there is sufficient evidence of
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genericness of “the meaning of the disputed phrase as a
whole.” See In re American Fertility Soc., supra, 51 USPQ2d
at 1837.
As in American Fertility, the party with the burden of
proof in proving genericness (here AMRPA) has failed to meet
that burden. AMRPA has not provided evidence of the sort
that might show “THE FIM SYSTEM” to be generic in the eyes
of the relevant public, such as by use in dictionaries,
newspapers, magazines, trade journals, and other
publications. In re Northland Aluminum Prods., Inc., 227
USPQ at 963. AMRPA did not even allege in its brief that it
had proven “THE FIM SYSTEM” mark to be generic, and indeed
it did not.
Merely Descriptive
AMRPA has alleged in its pleadings and its brief that
“FIM” and “THE FIM SYSTEM” are merely descriptive marks.
UBFA does not dispute that allegation. Rather, both are on
file with Section 2(f) claims of acquired distinctiveness.
15 U.S.C. §1052(f). Accordingly, that both marks are
“merely descriptive” is an established fact in these
proceedings. See Yamaha International v. Hoshino Gakki, 840
F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (when a mark
is registered under the provisions of Section 2(f), “the
statute accepts a lack of inherent distinctiveness as an
established fact”); Omnicom Inc. v. Open Systems Inc., 19
USPQ2d 1876, 1878 (TTAB 1989) (registrant's claim of
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secondary meaning pursuant to Section 2(f) is evidence that
the mark in question is not inherently distinctive).
Acquired Distinctiveness
Unlike with the genericness determination, the burden
is on the 2(f) applicant/registrant to show that its marks
have acquired sufficient distinctiveness to overcome their
status as “merely descriptive.” Yamaha Int’l Corp. v.
Hoshino Gakki Co. Ltd., supra, 6 USPQ2d at 1007.3 The kind
and amount of evidence necessary to establish that a mark
has acquired distinctiveness in relation to goods or
services depends on the nature of the mark and the
circumstances surrounding the use of the mark in each case.
Id.; Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823,
166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d
526, 126 USPQ 381 (C.C.P.A. 1960); In re Capital Formation
Counselors, Inc., 219 USPQ 916 (TTAB 1983). It is
sufficient that the relevant public associate the marks with
a single, albeit anonymous, source. Ralston Purina Co. v.
Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820,
823 (S.D.N.Y. 1972).
The more descriptive the marks, the greater the burden
will be on the applicant/respondent to prove its
distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki

3 The Federal Circuit in Yamaha explained that an opposer must
merely establish a prima facie case for the burden to shift to
applicant. We find here that AMRPA has done so, and that the
burden has shifted to UBFA to prove acquired distinctiveness by a
preponderance of the evidence.
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Co. Ltd., supra, 6 USPQ2d at 1008. In Yamaha, the Federal
Circuit Court of Appeals affirmed the Board’s ruling that
with a product design configuration, there was a greater
burden on the applicant to show acquired distinctiveness.
Nevertheless, the Board found, and the Federal Circuit
affirmed, that even with that greater burden, eight years of
substantially exclusive and continuous use plus substantial
sales and promotion by the defendant, along with an
identification of source on the products yielded a
sufficient showing.
Here, the marks, while “merely descriptive,” are not so
“highly descriptive” of the identified goods and services as
to require an undue amount of evidence to show acquired
distinctiveness. Id. UBFA has produced probative evidence
showing significant revenue generated by the “FIM” and “THE
FIM SYSTEM” marks over the past 12 years, longer than that
considered to be sufficient for the “greater” burden in
Yamaha. In particular, UBFA licenses its “FIM” and “THE FIM
SYSTEM” marks along with other proprietary software and
information to a large number of subscribers for substantial
revenue. (Hagerty dep. at 120:5-6.). In 1994, UBFA had 622
subscribers to the “FIM,” generating $1,533,767 in sales
revenue (Id., and Exhibit 6). By 2006, that number had
hugely increased to 1,130 subscribers, generating $6,334,837
in sales revenue. Id. About 76% of the relevant market of
inpatient rehabilitation facilities subscribe to UBFA’s
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products and services encompassing the “FIM” and “THE FIM
SYSTEM” marks. (Dann dep. at 12:4-9).
To the extent a “FIM” user or media outlet may
occasionally fail to acknowledge “FIM” as a proprietary
mark, UBFA polices and corrects such misuse. See UBFA’s
Exhibits 12-16. To that effect, the record shows numerous
letters from UBFA notifying institutions and media outlets
when the “FIM” mark has been misattributed. Id.
Accordingly, on this record, we find that UBFA has met its
burden of proving acquired distinctiveness of both the “FIM”
and “THE FIM SYSTEM” marks.
Conclusion
AMRPA’s opposition to the registration of “FIM” is
dismissed and its petition to cancel “THE FIM SYSTEM” is
denied.
DECISION: The opposition is dismissed and the petition
to cancel is denied.