Donald G. Bronn

Trademark Trial and Appeal Board

Dec 5, 2008

No. 78916919 (T.T.A.B. Dec. 5, 2008)

Mailed: December 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Donald G. Bronn
________

Serial No. 78916919
(filed June 26, 2006)
_______

John R. Benefiel of Law Offices of John R. Benefiel for
Donald G. Bronn.

Frank J. Lattuca, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Walters, Zervas, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Donald G. Bronn filed an intent-to-use application for
the mark DIGITAL BOARD OF MEDICAL EXPERTS (in standard
character format) for “providing medical information,
consultancy and advisory services” in International Class
44. Applicant has disclaimed BOARD OF MEDICAL EXPERTS.1

1 In the first Office action, the examining attorney required a
disclaimer of this term, requested additional information
concerning applicant’s services and the significance of the term
“digital,” but did not refuse registration under Section 2(e)(1).
Applicant responded to the Office action by providing the
disclaimer and responding to the information/ significance
requests. The descriptiveness refusal was then raised, for the
first time, in the second Office action.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78916919

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The Examining Attorney has finally refused
registration on the grounds that the mark merely describes
the goods under Trademark Act Section 2(e)(1), 15 U.S.C. §
1052(e)(1). Applicant has appealed. Both applicant and
the Examining Attorney have filed briefs. We affirm the
refusal for the reasons discussed below.
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979); Abcor Dev., 200 USPQ at 218
Serial No. 78916919

3
(“Appellant's abstract test is deficient - not only in
denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods' as
required by statute”). The issue is whether someone who
knows what the services are will understand the mark to
convey information about them. In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990).
The record includes dictionary definitions of the
terms: DIGITAL, BOARD, MEDICAL, and EXPERT.2 In
particular, the examining attorney relies on the following
definition for DIGITAL:
ELECTRONIC , also: characterized by
electronic and especially computerized technology .3

In addition, the examining attorney submitted copies
of four third-party registrations containing disclaimers of

2 The definitions for the words “board”, “medical” and “expert”
were provided in the examining attorney’s Office action dated
December 5, 2006, and ascertained from The American Heritage
Dictionary of the English Language, Third Edition copyright 1992.
3 Attached to Office action dated June 30, 2007, from Merriam-
Webster Online, based on the print version of Merriam-Webster's
Collegiate® Dictionary, Eleventh Edition).

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one or more of the following terms, “medical”, “expert” and
“board.”
The examining attorney also points to applicant’s
response to an Office action wherein applicant states that
his services will “be provided to health insurance carriers
and involve providing expert opinions to the carrier” and
that this information “will be communicated in writing
and/or via the internet.”4 The examining attorney concludes
that the mark is descriptive because “applicant is
providing access to an organized body of medical experts
through a digital medium.” Brief, p. 3
Applicant has acknowledged that BOARD OF MEDICAL
EXPERTS is merely descriptive of the recited services in
his arguments and by virtue of the disclaimer. However, he
argues that the term DIGITAL is not descriptive and is
incongruous when combined with the descriptive phrase,
BOARD OF MEDICAL EXPERTS. Specifically, applicant argues
that the latter phrase “denotes a group of human medical
experts” and the term DIGITAL “cannot apply to human
beings, i.e., there are no digital people.” Brief, p. 2.
Applicant also argues that the term “digital” does not “in
itself mean ‘electronic’” nor is the term synonymous with

4 Applicant’s response to Office action dated June 5, 2007.

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5
“computer” or “internet.” Id. And, applicant acknowledges
that his services may be delivered by use of the internet,
but “this is not suggested by the term DIGITAL, but rather
would involve ‘mature thought’ or a multistage reasoning
process.” Id., citing to In re Tennis in the Round, 199
USPQ 496 (TTAB 1978). Finally, applicant notes that there
is no evidence of record showing use of the term “digital”
in the field of providing medical information, consultancy
or advisory services, and the lack of such evidence “is a
strong indicator of suggestiveness.”
After considering the evidence of record and all
arguments presented by applicant, we conclude that the mark
DIGITAL BOARD OF MEDICAL EXPERTS is descriptive of the
identified medical information, consultancy and advisory
services. Again, our determination is not made not in the
abstract, but is made in relation to the services for which
registration is sought. In this case, when prospective
purchasers encounter the mark DIGITAL BOARD OF MEDICAL
EXPERTS for the recited services, they will immediately
understand, as the examining attorney explained, that the
mark describes the fact that applicant's medical
information, consultancy and advisory services will be
rendered via electronic or computerized technology (e.g.,
internet) by a group of experienced or knowledgeable
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persons in the field of medicine. There is nothing
incongruous or left to the imagination when DIGITAL is
combined with BOARD OF MEDICAL EXPERTS, and the mark as a
whole is viewed in relation to the recited services.
Finally, although the examining attorney has not presented
evidence showing use of the term “digital” in connection
with the recited services, we find that the term, as
defined, is applicable and will be readily understood in
connection with applicant’s recited services. In other
words, because applicant’s services may be rendered
“digitally” or electronically, as applicant has confirmed
this is one of the possible modes of delivery, the term
“digital” has descriptive value in this context.
Therefore, we find that applicant's mark, DIGITAL BOARD OF
MEDICAL EXPERTS, is merely descriptive of the services
identified in the application.
Decision: The descriptiveness refusal under Section
2(e)(1) of the Act is affirmed.