Merion Publica-tions, Inc.

Trademark Trial and Appeal Board

Oct 16, 2002

No. 75630793 (T.T.A.B. Oct. 16, 2002)

Hearing: June 25, 2002
Mailed: October 16, 2002
Paper No. 18
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Merion Publications, Inc.
________
Serial Nos. 75/629,629; 75/630,793 and 75/854,084
_______
Timothy D. Pecsenye and David M. Perry of Blank Rome
Comisky & McCauley LLP for Merion Publications.
Brett Tolpin, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Hanak, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Merion Publications has filed applications to register
the marks ADVANCE FOR PROVIDERS OF POST ACUTE CARE;1 ADVANCE
FOR NURSES, SERVING THE GREATER PHILADELPHIA/TRI-STATE
1 Application Serial No. 75/629,629, filed January 29, 1999, which
asserts first use and first use in commerce as early as June 25, 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/629,629; 75/630,793; and 75/854,084
2
METRO AREA;2 and ADVANCE FOR NURSES SERVING THE CAROLINAS
AND GEORGIA METRO AREAS,3 each for a “magazine featuring the
allied health professions.”
In response to the Trademark Examining Attorney’s
requirement to disclaim the phrases “PROVIDERS OF POST
ACUTE CARE,” “NURSES, SERVING THE GREATER PHILADEPHIA/TRI-
STATE METRO AREA,” and “NURSES SERVING THE CAROLINAS AND
GEORGIA METRO AREAS” on the ground of mere descriptiveness,
applicant amended the applications to seek registration
under Section 2(f) of the Act, in part, as to the phrases.
Because the Examining Attorney was not persuaded by
applicant’s argument and evidence in support of the Section
2(f) claims, he issued a final requirement in each
application that the phrase at issue be disclaimed apart
from the mark as shown, and finally refused to register
each mark absent compliance with the disclaimer
requirement. Applicant and the Examining Attorney filed
briefs and applicant filed a request that the appeals for
2 Application Serial No. 75/630,793, filed January 22, 1999, which
alleges a bona fide intention to use the mark in commerce. We note
that the mark in the drawing includes a comma (,) between “ADVANCE” and
“SERVING”, whereas the mark as displayed on the specimens does not.
Also, it appears from the record that applicant has begun use of this
mark although it has not filed an amendment to allege use.
3 Application Serial No. 75/854,084, filed November 19, 1999, which
asserts first use and first use in commerce as early as September 20,
1999.
Ser No. 75/629,629; 75/630,793; and 75/854,084
3
the three applications be consolidated for purposes of oral
hearing. The Board approved this request on May 28, 2002
and an oral hearing was held on June 25, 2002. In view
thereof, and inasmuch as the three applications involve
similar issues and records, this opinion is issued for all
three applications.
At the outset, we note that inasmuch as applicant has
amended each of its applications to seek registration under
Section 2(f), in part, the question of whether any of the
phrases at issue are inherently distinctive is not before
us. Rather, the sole issue on appeal is the sufficiency of
applicant’s evidence under Section 2(f) as to the phrases
“PROVIDERS OF POST ACUTE CARE”; “NURSES, SERVING THE
GREATER PHILADEPHIA/TRI-STATE METRO AREA”; and “NURSES
SERVING THE CAROLINA AND GEORGIA METRO AREAS.”
In each application, applicant bases its Section 2(f)
claim on ownership of prior registrations of the “same
mark” and the declaration of Jaci L. Nicely, its director
of Human Resources. It is applicant’s position that its
prior registrations and/or its evidence of use as set forth
in the declarations are sufficient to establish that the
phrases have acquired distinctiveness. If there is any
doubt on the issue, applicant argues that it must be
resolved in its favor.
Ser No. 75/629,629; 75/630,793; and 75/854,084
4
At the outset, we note that it is well settled that
the burden of proving that a mark has acquired
distinctiveness is on the applicant, and the more
descriptive the mark, the greater the evidence needed to
establish acquired distinctiveness. See Yamaha
International Corp. v. Hoshino Gakki Co. , Ltd., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988). This is also the
case where an applicant seeks to prove that a portion of a
mark, rather than the mark in its entirety, has acquired
distinctiveness.
We consider first whether applicant may base its
Section 2(f) claims on its ownership of prior registrations
for the “same mark.” Relying on Trademark Rule 2.41(b)
applicant argues that each of the phrases at issue –
“PROVIDERS OF POST ACUTE CARE”; “NURSES, SERVING THE
GREATER PHILADELPHIA/TRI-STATE METRO AREA”; and “NURSES
SERVING THE CAROLINAS AND THE GEORGIA METRO AREAS” - “is
for all intents and purposes, the same as [the] analogous
professional designations in [applicant’s] sixteen [prior]
Ser No. 75/629,629; 75/630,793; and 75/854,084
5
‘ADVANCE FOR’ registrations.” (Brief, p. 13).4 Thus,
applicant argues that each of its applied-for marks is “the
same” as its sixteen previously registered ADVANCE marks.5
Section 7(b) of the Trademark Act provides that a
registration on the Principal Register “shall be prima
facie evidence of the validity of the registration,
registrant’s ownership of the mark and of registrant’s
exclusive right to use the mark in commerce in connection
with the goods or services identified in the certificate.”
See also In re Electro Products Laboratories, Inc., 156
USPQ 54 (TTAB 1967). Thus, Section 7(b) creates the basis
for permitting reliance on an existing registration, under
certain circumstances, to support a claim that
distinctiveness has been transferred to a mark which is
essentially the same as the registered mark. Further,
4 The sixteen marks on which applicant is relying are: ADVANCE FOR
NURSE PRACTITIONERS; ADVANCE FOR PHYSICIAN ASSISTANTS; ADVANCE FOR
PHYSICAL THERAPISTS & PT ASSISTANTS; ADVANCE FOR OCCUPATIONAL THERAPY
PRACTITIONERS; ADVANCE FOR RESPIRATORY CARE PRACTITIONERS; ADVANCE FOR
SPEECH-LANGUAGE PATHOLOGISTS & AUDIOLOGISTS; ADVANCE FOR ADMINISTRATORS
OF THE LABORATORY; ADVANCE FOR HEALTH INFORMATION PROFESSIONALS;
ADVANCE FOR RADIOLOGIC SCIENCE PROFESSIONALS; ADVANCE FOR
ADMINISTRATORS IN RADIOLOGY & RADIATION ONCOLOGY; ADVANCE FOR DIRECTORS
IN REHABILITATION; ADVANCE FOR MANAGERS OF RESPIRATORY CARE; ADVANCE
FOR MEDICAL LABORATORY PROGESSIONALS; ADVANCE FOR OCCUPATIONAL
THERAPISTS; ADVANCE FOR PHYSICAL THERAPISTS; and ADVANCE FOR
AUDIOLOGISTS. Each of the marks contains a Section 2(f) claim, in
part. In certain of the marks the Section 2(f) claim is to the wording
“FOR” in addition to the professional designation, whereas in others
the Section 2(f) claim is to the professional designation only.
5 Although applicant characterizes its marks as “ADVANCE FOR” marks, it
appears from the specimens of record that the “family” portion of
applicant’s marks is the single word “ADVANCE,” not the phrase “ADVANCE
FOR.” Thus, we have used “ADVANCE” and not “ADVANCE FOR” in referring
to applicant’s “family” of marks.
Ser No. 75/629,629; 75/630,793; and 75/854,084
6
Trademark Rule 2.41(b) provides that, in appropriate cases,
“ownership of one or more prior registrations on the
Principal Register . . of the same mark may be accepted as
prima facie evidence of distinctiveness.”
Thus, the question to be resolved in cases such as
these is whether the applied-for mark is “the same” as the
applicant’s existing registered mark for purposes of Rule
2.41(b). In these cases, applicant is essentially seeking
to “tack” the use of its sixteen registered marks to its
use of the three applied-for marks for purposes of
transferring distinctiveness to the new marks. See, for
example, In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB
1977). Thus, the analysis used to determine whether any of
applicant’s applied-for marks is the “same mark” as any of
its previously registered marks, for purposes of that rule,
is similar to the analysis used in “tacking” cases to
determine whether a party may rely, for purposes of
establishing priority, on its prior use of a mark which is
not identical to its present mark. In this situation, the
issue is whether either of the applied-for marks and the
previous marks are “legal equivalents.” See Van Dyne-
Crotty, Inc. v. Wear Guard Corp., 926 F.2d 1156, 17 USPQ2d
1866 (Fed. Cir. 1991) and Institut National Des
Ser No. 75/629,629; 75/630,793; and 75/854,084
7
Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d
1875 (TTAB 1998).
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same,
continuing commercial impression such that the consumer
would consider both as the same mark. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001); and Compania Insular Tabacalera, S.A. v.
Camacho Cigars, Inc., 167 USPQ 299 (TTAB 1970). A minor
difference in the marks such as mere pluralization or an
inconsequential modification or modernization of the later
mark will not preclude application of the rule. See In re
Loew’s Theatres, Inc., 223 USPQ 513 (TTAB 1984), aff’d, 769
F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) and In re Flex-O-
Glass, Inc., supra. At the same time, however, it is clear
that the “legal equivalents” standard is considerably
higher than the standard for “likelihood of confusion.”
Thus the fact that two marks may be confusingly similar
does not necessarily mean that they are legal equivalents.
Van Dyne-Crotty, Inc. v. Wear-Guard Corp., supra, and Pro-
Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB
1993).
In these cases, we are not convinced that any of
applicant’s applied-for marks creates “the same” commercial
Ser No. 75/629,629; 75/630,793; and 75/854,084
8
impression as the marks in its sixteen existing
registrations simply because they consist of ADVANCE and
what applicant considers “analogous” professional
designations. While the applied-for marks and the existing
registered marks are perhaps similar in that they consist
of ADVANCE and professional designations in the health care
field, the marks are certainly not indistinguishable. To
use just one example, applicant’s existing registered mark
ADVANCE FOR MANAGERS OF RESPIRATORY CARE does not convey
the same meaning or commercial impression as its applied-
for mark ADVANCE FOR PROVIDERS OF POST ACUTE CARE. The
professional designations in these marks are not
interchangeable and their use results in more than a minor
difference in the marks.
Applicant’s own evidence reinforces the perception
that the professional designations that it uses have
separate and distinct meanings and commercial impressions.
As can be seen from the printout at applicant’s website, it
is clear that the various titles are used to identify
different magazines and are directed to distinct audiences
in the health care field. Thus, applicant itself promotes
the different connotations of the marks to its subscribers.
Further, as to applicant’s particular marks ADVANCE
FOR NURSES, SERVING THE GREATER PHILADELPHIA/TRI-STATE AREA
Ser No. 75/629,629; 75/630,793; and 75/854,084
9
and ADVANCE FOR NURSES SERVING THE CAROLINAS AND GEORGIA
METRO AREAS, we are not persuaded that they are “the same”
as applicant’s prior registered mark ADVANCE FOR NURSE
PRACTITIONERS. While there is no question that a nurse
practitioner is a type of nurse, it is nonetheless the case
that a nurse practitioner is a nurse with advanced
education and experience in a specialized area of nursing
practice. In this regard, we judicially notice the
following definitions of “nurse practitioner”:
nurse practitioner(NP): a registered nurse who has
advanced education in nursing and clinical experience
in a specialized area of nursing practice. NP’s
are certified by passing an examination administered
by a professional organization such as the American
Nurses’ Credentialing Center (ANCC).
Mosby’s Medical, Nursing & Allied Health Dictionary
(5th ed. 1998); and
nurse practitioner: a registered nurse with at
least a master’s degree in nursing and advanced
education in the primary care of particular groups
of clients; capable of independent practice in a
variety of settings.
Stedman’s Medical Dictionary (27th ed. 2000).
In other words, a nurse practitioner is much more than a
nurse, and the professional designations “nurse” and “nurse
practitioner” have different meanings and commercial
impressions.
These cases are readily distinguishable from In re
Dial-A-Mattress Operating Corp., supra, where the applicant
Ser No. 75/629,629; 75/630,793; and 75/854,084
10
was allowed to tack its use of the registered mark “(212)M-
A-T-T-R-E-S to its use of “1-888-M-A-T-T-R-E-S-S for
purposes of transferring acquired distinctiveness. The
marks were considered the same or legal equivalents because
the differences therein were immaterial. In the present
case, the differences between applicant’s applied-for marks
and its existing registered marks are not insignificant.
In view of the foregoing, we find that none of
applicant’s sixteen registered marks is the same as or the
legal equivalent of applicant’s applied-for marks and, in
particular, NURSE and NURSE PRACTITIONER are not the same
or legal equivalents. Thus, applicant may not rely on any
of its existing registered marks as the basis for
establishing its Section 2(f) claims.
Additionally, to the extent that it is also
applicant’s position that each of the phrases at issue has
acquired distinctiveness on the basis of applicant’s
ownership of a “family” of ADVANCE marks, this position is
untenable. Whether applicant owns a family of “ADVANCE”
marks or whether ADVANCE is a distinctive component of
applicant’s composite marks has no bearing on the question
of whether the phrases at issue, which are not part of the
so-called family name, should be disclaimed or have
acquired distinctiveness. It is clear that an
Ser No. 75/629,629; 75/630,793; and 75/854,084
11
unregistrable component of an otherwise registrable mark
must, in the absence of a 2(f) showing, be disclaimed. See
Section 6 of the Trademark Act.
Lastly, we turn to the declarations of Jaci L. Nicely,
applicant’s Director of Human Resources. In the
declarations, Ms. Nicely has set forth information
concerning the circulation, advertising and promotion, and
the web site “hits” for applicant’s magazines ADVANCE FOR
PROVIDERS OF POST ACUTE CARE, ADVANCE FOR NURSES, SERVING
THE GREATER PHILADELPHIA/TRI-STATE AREA and ADVANCE FOR
NURSES SERVING THE CAROLINAS AND GEORGIA METRO AREAS. The
problem with this evidence is that it relates to
applicant’s composite marks, and not the particular phrases
which applicant claims have acquired distinctiveness.
Thus, the declarations are not probative of whether the
phrases at issue, as opposed to the composite marks, have
become distinctive. Evidence of acquired distinctiveness
must relate to the specific mark for which registration is
sought. See In re K-T Zoe Furniture, Inc., 16 F.3d 398, 29
USPQ2d 1787, 1789 (Fed. Cir. 1994). [Where the applicant
sought to register “THE SOFA & CHAIR COMPANY” in a stylized
script, the Examining Attorney’s requirement to disclaim
the phrase “THE SOFA & CHAIR COMPANY” apart from the mark
was upheld in the absence of a showing that the phrase had
Ser No. 75/629,629; 75/630,793; and 75/854,084
12
acquired distinctiveness]. Thus, where as here, the
applicant claims distinctiveness as to a portion of a mark,
the evidence of acquired distinctiveness must relate to
that portion. In this case, there is no evidence that
subscribers to applicant’s magazines and/or those who visit
its web site recognize the phrases rather than the
composite marks as source-indicators. Moreover, there is
no evidence that applicant, in its advertising and
promotional materials, emphasizes the phrases at issue
rather than its composite marks.
In view of the foregoing, we find that applicant’s
evidence does not establish that the phrases PROVIDERS OF
POST ACUTE CARE; NURSES, SERVING THE GREATER
PHILADEPHIA/TRI-STATE METRO AREAS; and NURSES SERVING THE
CAROLINAS AND THE GEORGIA METRO AREAS have acquired
distinctiveness for applicant’s magazines. Of course, we
recognize that applicant is the owner of sixteen existing
registrations for marks, which include claims of acquired
distinctiveness as to portions, which include professional
designations. However, as is often stated, each case must
be decided on its own set of facts. In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). We are not
privy to the files of those registrations and the evidence
of acquired distinctiveness submitted therein.
Ser No. 75/629,629; 75/630,793; and 75/854,084
13
Decision: In each application the requirement for a
disclaimer and the refusal to register in the absence of a
disclaimer is affirmed. Nonetheless, this decision will be
set aside and applicant’s marks published for opposition if
applicant, no later than thirty days from the mailing date
hereof, submits appropriate disclaimers of PROVIDERS OF
POST ACUTE CARE; NURSES, SERVING THE GREATER
PHILADELPHIA/TRI-STATE METRO AREA; and NURSES SERVING THE
CAROLINAS AND GEORGIA METRO AREAS.