Medical Risk Management Associates, LLC

Trademark Trial and Appeal Board

Jul 18, 2002

No. 75799561 (T.T.A.B. Jul. 18, 2002)

Mailed: July 18, 2002
Paper No. 13
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Medical Risk Management Associates, LLC

________

Serial No. 75/799,561
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James C. Wray for applicant.

Janice L. McMorrow, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______

Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On August 18, 2000, Medical Risk Management
Associates, LLC applied to register the mark reproduced
below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/799,561
2

on the Principal Register for the following services in
International Class 41:
Consulting and training services in the fields
of sentinel event policy, root cause analysis,
action planning and training for avoiding and
reducing incidences and likelihood of
significant adverse event occurrences for
hospitals, clinics, medical insurance companies,
and health maintenance organizations.1

In the first Office action, the Examining Attorney
maintained that the recitation of services, and in
particular the wording “sentinel event policy,” was
indefinite.2 The Examining Attorney required applicant to
amend the recitation of services to indicate the nature of
the services and their particular field. Also, the
Examining Attorney noted that the drawing did not reproduce
satisfactorily and required a new drawing. Further, the
Examining Attorney required a description of the mark and
suggested the following: “The mark consists in part of a

1 Serial No. 75/799,561, alleging a date of first use and date of first
use in commerce of October 1998.
2 The present Examining Attorney was not the original Examining Attorney
in this case.
Ser No. 75/799,561
3
lighthouse and a rising sun.” Finally, the Examining
Attorney stated that the phrase MEDICAL RISK MANAGEMENT
ASSOCIATES, LLC was descriptive of applicant’s services;
required a disclaimer of the phrase apart from the mark as
shown; and refused to register the mark in the absence of a
disclaimer.
In its response to the Office action, applicant
proposed to amend the recitation of services by
substituting the word “significant” for “sentinel”. In
addition, applicant submitted a new drawing. However,
applicant stated “[t]he drawing is intentionally fuzzy”
because “[i]t is intended to depict a lighthouse in the
fog.” Applicant, however, did not submit a description of
the mark and made no specific reference to the Examining
Attorney’s requirement in this regard. Further, Applicant
argued against the requirement for a disclaimer,
maintaining that the phrase MEDICAL RISK MANAGEMENT
ASSOCIATES, LLC was at most suggestive of applicant’s
services.
With respect to the proposed amendment to the
recitation of services, the Examining Attorney found that
the substitution of “significant” for “sentinel” would
impermissibly broaden the scope of the recitation of the
services. Also, the Examining Attorney continued to
Ser No. 75/799,561
4
maintain that the recitation of services was indefinite.
Further, the Examining Attorney did not find the new
drawing acceptable and maintained that a description of the
mark was still needed. Finally, the Examining Attorney was
not persuaded by applicant’s argument that the phrase
MEDICAL RISK MANAGEMENT ASSOCIATES, LLC was not descriptive
and that a disclaimer was not necessary. Each requirement
was made final and the Examining Attorney finally refused
to register the mark absent compliance with the disclaimer
requirement.
Applicant filed a notice of appeal, followed by its
appeal brief. Thereafter, the Examining Attorney submitted
a request to remand, which the Board granted.3 The
Examining Attorney made of record printouts from the Nexis
and X-Search databases in support of her position that the
phrase MEDICAL RISK MANAGEMENT ASSOCIATES, LLC is merely
descriptive of applicant’s services, and that it therefore
must be disclaimed. All of the requirements contained in
the final refusal were continued and again made final.
Applicant was allowed time in which to file a
supplemental brief, but it did not do so. Thereafter, the

3 The present Examining Attorney requested that the case be remanded and
has handled the case from that point.
Ser No. 75/799,561
5
Examining Attorney submitted her brief. No oral hearing
was requested.
This appeal involves four requirements, which we will
discuss in turn.
Requirement to Amend the Recitation of Services
Inasmuch as applicant’s proposed amendment to the
recitation of services was not accepted, the recitation
reads as originally filed:
Consulting and training services in the fields
of sentinel event policy, root cause analysis,
action planning and training for avoiding and
reducing incidences and likelihood of
significant adverse event occurrences for
hospitals, clinics, medical insurance companies,
and health maintenance organizations.
According to the Examining Attorney, the recitation of
services is “overbroad and indefinite.” (Brief, p. 5). In
particular, the Examining Attorney maintains that
consulting services in the recitation of services could
refer to consultation in several different International
classes and that the underlying field in which the
consulting services are rendered must be specified in order
for proper classification. In addition, the Examining
Attorney contends that a recitation of services must set
forth common names, using terminology that is generally
understood, and that the wording “sentinel event policy,
Ser No. 75/799,561
6
root cause analysis and action planning” does not meet this
requirement.
Because applicant makes no argument in its appeal
brief with respect to the requirement to amend the
recitation of services, we consider applicant to have
conceded this requirement.4 We should point out, however,
that at the very least, we agree with the Examining
Attorney’s position that the wording “sentinel event
policy, root cause analysis and action planning” in the
recitation of services is indefinite.
New Drawing Requirement
It is the Examining Attorney’s position that the
substitute drawing submitted by applicant cannot be
reproduced properly and therefore a proper drawing must be
submitted. Applicant, in its brief, at page 1, states
“[a]pplicant will submit a proper drawing when a decision
is reached on Applicant’s mark.” (Brief, p. 1). In view
of applicant’s statement, we consider applicant to have
conceded this requirement as well. We should point that we
agree with the Examining Attorney that the drawing does not

4 We are perplexed by applicant’s failure to address this requirement
and the requirement for a description of the mark discussed infra.
Applicant is advised that it may not seek a remand after this Board’s
decision for consideration of either a further amendment to its
recitation of services or a description of its mark, as the Board has
no authority to allow such actions. Similarly, with respect to the
requirement for a new drawing discussed infra, the applicant may not
seek a remand after our decision in order to submit a new drawing.
Ser No. 75/799,561
7
reproduce properly as is evidenced from the reproduction of
the mark on page 2 of this decision.
Requirement for a Description of the Mark
The Examining Attorney has required that applicant
provide a description of the mark. As noted previously,
applicant made no mention of this requirement in its
response to the Examining Attorney’s first Office action.
Similarly, applicant made no mention of this requirement in
its appeal brief. Thus, we consider applicant to have
conceded this requirement. Again, we should point out that
we agree with the Examining Attorney’s requirement for a
description of the mark, particularly in view of the
intentionally “fuzzy” nature of the drawing.
Disclaimer Requirement
The Examining Attorney maintains that the phrase
MEDICAL RISK MANAGEMENT ASSOCIATES, LLC is merely
descriptive of applicant’s services and has required that
applicant disclaim the phrase apart from the mark as shown.
Applicant, in its brief on the case, argues that the phrase
is at most suggestive of applicant’s services. We note
that at the time applicant filed its appeal brief, the
evidence of record in support of the Examining Attorney’s
mere descriptiveness argument consisted of dictionary
definitions of the individual words “medical”, “risk”,
Ser No. 75/799,561
8
“management”, and “associate” along with six third-party
registrations of marks wherein the entity designation “LLC”
is disclaimed. After the case was remanded, the Examining
Attorney made of record articles taken from the Nexis
database wherein the phrase “medical risk management” is
used and third-party registrations of marks taken from the
X-Search database wherein the wording “ASSOCIATES LLC is
disclaimed.
The dictionary definitions are taken from The American
Heritage Dictionary of the English Language (3d ed.
1992)(electronic version licensed by INSO). Set forth
below are the definitions the Examining Attorney considered
most pertinent in this case:
medical adjective:
1. Of or relating to the practice of medicine.

risk noun:
3. a. The danger or probability of
loss to an insurer.
Often used to modify another noun: risk
factors; risk management.

management noun
1. The act, manner, or practice of managing;
handling, supervision, or control.

associate verb
1. To join as a partner, ally, or friend.

In addition, the following are representative excerpts
Ser No. 75/799,561
9
of the Nexis articles wherein the phrase “medical risk
management” is used:
A medical risk-management company, FutureHealth
provides a service to insurance companies and
self-insured employers that help them identify
the highest risk portions of their populations
and manage their compliance with medical
treatment.
(The Daily Record, Baltimore, Md., May 2, 2000);

Building a sustainable, competitive edge requires
considerable expenditures of time and money to
develop the needed array of core competencies,
including integrated medical risk management,
information technology based business solutions,
regulatory compliance . . .
(Healthcare Financial Management, October 1, 1999);

MIS provides companies with absence management,
medical advisory, health and safety compliance,
medical referral, medical risk management,
occupational health and screening services.
(The Regulatory News, May 21, 1998); and

Hartford Health’s former PPO, MedSpan, received
approval for its HMO license in May 1996 and has
announced a strategy aimed at reducing employer/
payer costs by supporting provider partnerships,
medical risk management and cost-effective
administrative services.
(Medical Industry Today, May 27, 1997).

In determining whether the evidence of record is
sufficient to establish that the phrase MEDICAL RISK
MANAGEMENT ASSOCIATES, LLC is merely descriptive of
applicant’s recited services, and therefore must be
disclaimed, we apply the following legal principles. A
term or phrase is deemed to be merely descriptive of goods
or services, within the meaning of Section 2(e)(1) of the
Ser No. 75/799,561
10
Trademark Act, if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether a term 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 those goods or
services, and the possible significance that the term 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).
We have carefully considered the evidence of record
and the arguments made by applicant and the Examining
Attorney, and we conclude that MEDICAL RISK MANAGEMENT
ASSOCIATES, LLC is merely descriptive as used in connection
with applicant’s services, and that it therefore must be
disclaimed.
It is clear from the dictionary definitions and Nexis
evidence that MEDICAL RISK MANAGEMENT identifies a feature
of applicant’s consulting and training services, namely,
managing risk in the field of medicine. Also, the terms
ASSOCIATES and LLC are recognized entity designations, with
Ser No. 75/799,561
11
no source-identifying function. They merely indicate that
applicant is a group of partners operating as a limited
liability company (LLC). As evidenced by the third-party
registrations, the Office has considered these types of
entity designations to be merely descriptive. The relevant
purchasers of applicant’s consulting and training services
would immediately understand, when the phrase MEDICAL RISK
MANAGEMENT ASSOCIATES, LLC is used in connection therewith,
that applicant is a limited liability company that renders
consulting and training services for managing risk in the
field of medicine.
Decision: Each of the foregoing requirements, and the
refusal to register based on applicant’s failure to comply
with the requirements, is affirmed.