American Bio Medica Corp.

Trademark Trial and Appeal Board

Jan 30, 2001

No. 75188002 (T.T.A.B. Jan. 30, 2001)

Hearing: Paper No. 19
August 3, 2000 tw/ewh
1/30/01
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Bio Medica Corp.
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Serial No. 75/188,002
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Edmund M. Jaskiewicz for American Bio Medica Corp.
John E. Michos, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Cissel, Hanak and Quinn, Administrative Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
American Bio Medica Corp. (applicant) seeks to register on
the Supplemental Register the term RAPID DRUG SCREEN for “urine
test cards for detecting the presence of narcotics.” The
application was filed on October 24, 1996 with a claimed first
use date of May 1996.
The Examining Attorney has refused registration on the basis
that RAPID DRUG SCREEN is one generic term for applicant’s goods,
and hence pursuant to Section 23 of the Trademark Act is
incapable of distinguishing applicant’s goods from similar goods
manufactured by others.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/188,002
2
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining Attorney
filed briefs and were present at a hearing held on August 3,
2000.
It is beyond dispute that “the burden of showing that a
proposed trademark is generic remains with the Patent and
Trademark Office.” In re Merrill Lynch, 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). Moreover, it is incumbent upon the
Examining Attorney to make a “substantial showing … that the
matter is in fact generic.” Merrill Lynch, 4 USPQ2d at 1143.
Indeed, this substantial showing “must be based on clear evidence
of generic use.” Merrill Lynch, 4 USPQ2d at 1143. Thus, “a
strong showing is required when the Office seeks to establish
that a term is generic.” In re K-T Zoe Furniture Inc., 16 F.3d
390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994). Moreover, any doubt
whatsoever on the issue of genericness must be resolved in favor
of the applicant. In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB
1993).
In this case the Examining Attorney has failed to make of
record sufficient competent evidence demonstrating that the
phrase RAPID DRUG SCREEN has been used in a generic sense. In
short, the record falls short of the required “clear evidence of
generic use.” Merrill Lynch, 4 USPQ2d at 1143.
At page eight of his brief, the Examining Attorney states
that the “most persuasive part of the evidentiary record is the
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demonstration that the wording RAPID DRUG SCREEN for which
applicant seeks registration is, in fact, in use by others in its
proper form as a generic name for a category of drug screen.”
The Examining Attorney then identifies two excerpts of stories
which he contends demonstrate that the phrase RAPID DRUG SCREEN
is used by others in a generic manner for a category of drug
tests. However, these two excerpts simply do not support the
Examining Attorney’s contention. The first excerpt taken from
the November 27, 1998 issue of The Daily Oklahoman does not use
the term “rapid drug screen,” but rather uses the term “rapid
drug-screening.” The second excerpt is not from a publication,
but rather is a mere wire service release. Such wire service
releases are entitled to very little, if any, evidentiary weight.
In re Professional Tennis Council, 1 USPQ2d 1917, 1918 n.5 (TTAB
1986).
Applicant has introduced in their entireties two detailed
reports discussing, among other things, drug test kits which can
provide results in a prompt manner. One report is entitled U.S.
Home Diagnostic and Monitoring Device Markets (1998) and the
other report is entitled The Market for Rapid In Vitro Diagnostic
Tests (1999). In essence, these detailed reports demonstrate that
drug testing kits, which provide prompt results, have been in
wide spread use since the early 1990’s. If the term RAPID DRUG
SCREEN was truly a generic term for “urine test cards for
detecting the presence of narcotics,” then there would likely be
Ser. No. 75/188,002
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in the vast NEXIS database many references to this term wherein
it is used in a generic manner. Instead, we have not a single
instance where the term RAPID DRUG SCREEN has been used in a
publication in a generic manner.
These facts alone are sufficient to, at a minimum, raise
doubts as to whether the term RAPID DRUG SCREEN is indeed a
generic term for “urine test cards for detecting the presence of
narcotics.” In re America Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999). As noted earlier in this opinion,
when there are doubts on the issue of genericness, said doubts
are resolved in applicant’s favor. Waverly, 27 USPQ2d at 1624.
However, we need not stop here. The record in this case is
replete with numerous articles and reports wherein the term RAPID
DRUG SCREEN is used as a trademark to identify applicant’s
particular urine test cards for narcotics. The two reports just
previously discussed contain comparisons to various products
similar to applicant’s. In these reports, the only drug test
product referred to as RAPID DRUG SCREEN is applicant’s product.
Moreover, these reports depict applicant’s mark with initial
capital letters, thus, “Rapid Drug Screen.” Finally, these
reports describe competing test kits and list their trademarks,
such as RAPID ONE and QUICKSCREEN. Indeed, even the Examining
Attorney made of record a dozen articles from the NEXIS database
wherein the term RAPID DRUG SCREEN is depicted with initial
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capital letters and is clearly used to refer to applicant’s
particular drug test kit.
One final comment is in order. The Examining Attorney has
made of record numerous articles wherein the term “drug screen”
appears. Many of these articles also contain the word “rapid,”
albeit not immediately preceding the term “drug screen.” These
articles demonstrate that “drug screen” is a generic term for
applicant’s goods. The terms “drug screen” and “drug test” are
synonyms. These articles also demonstrate that the word “rapid”
is highly descriptive of certain drug screens, namely, those that
provide results in a matter of minutes.
Nevertheless, in view of the teachings of American Fertility
Society, we can not hold on this record that “rapid drug screen”
is generic for applicant’s goods given the facts that (1) there
is no evidence of generic use of “rapid drug screen” in its
entirety, and (2) there is evidence of use by third parties of
RAPID DRUG SCREEN as a trademark for applicant’s particular urine
test cards.
Decision: The refusal to register the mark RAPID DRUG SCREEN
on the Supplemental Register is reversed.
Ser. No. 75/188,002
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