Insys Development Company, Inc.

Trademark Trial and Appeal Board

Jan 11, 2019

No. 87456734 (T.T.A.B. Jan. 11, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Insys Development Company, Inc.
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Serial No. 87456734
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F. William McLaughlin of Wood, Phillips, Katz, Clark & Mortimer,
for Insys Development Company, Inc.
Kathleen de Jonge, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Zervas, Wellington, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Insys Development Company, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark INSYS HOME HEALTH EDUCATOR PROGRAM (in
standard characters with HOME HEALTH disclaimed) for:
Printed publications, namely, brochures featuring
information for patients and caregivers to educate them on
treatment of cancer pain, in International Class 16; and
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Educational services, namely, an in home program for
patients and caregivers to educate them on treatment of
cancer pain, in International Class 41. 1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s
failure to comply with a requirement to disclaim the composite wording HOME
HEALTH EDUCATOR PROGRAM, which the Examining Attorney maintains is
merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
when used on or in connection with Applicant’s goods and services, and therefore
must be disclaimed apart from the mark as shown. When the refusal was made final,
Applicant appealed. We affirm the refusal to register.
I. Evidentiary Issue
The Examining Attorney submitted for the first time with her brief a definition of
“educator” from RANDOM HOUSE WEBSTER’S UNABRIDGED DICTIONARY and a request
that the Board take judicial notice thereof.2 In its reply brief, Applicant objected to
the new definition of “educator” (which refers to a person or a thing that educates3)
and asked that the Board instead rely on the OXFORD DICTIONARIES definition of
“educator” (which refers to a person – not a thing – who provides instruction or

1 Application Serial No. 87456734 was filed on May 19, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
2 Examining Attorney’s Appeal Brief, unnumbered p. 4, n.3; 6 TTABVUE 5 (request). 6
TTABVUE 9 (definition).
3 Examining Attorney’s Appeal Brief, 6 TTABVUE 9.
Serial No. 87456734
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education4) submitted with each Office Action and prior to the appeal. Following one
of the options for dealing with new evidence as suggested in TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 710.01(c) (Oct. 2018), Applicant objected to the new
definition and, while preserving the objection, discussed in its reply brief why the new
definition does not support the proposition presented by the Examining Attorney.
While the better practice would have been for the Examining Attorney to ensure
that the relevant definition was included in the record prior to appeal, it is well-
established that the “Board may take judicial notice of definitions from printed
dictionaries that were not made of record prior to appeal, and may do so either sua
sponte or upon request of the . . . examining attorney.” TMEP § 710.01(c). See also In
re Premiere Distillery LLC, 103 USPQ2d 1483, 1448 n.2 (TTAB 2012) (judicial notice
taken of definition from RANDOM HOUSE DICTIONARY submitted with examining
attorney’s brief after appeal filed); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1208.04 (June 2018). In view of this established practice,
Applicant’s objection is overruled.
II. Applicable Law
Under Section 6(a) of the Trademark Act, “[t]he Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”
Merely descriptive terms are unregistrable under Section 2(e)(1) of the Trademark
Act, and therefore are subject to a disclaimer requirement if the mark is otherwise

4 August 17, 2017 Priority Action at TSDR 16; and November 5, 2017 Office Action at TSDR
13.
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registrable. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed.
Cir. 2005). Failure to comply with a disclaimer requirement is a basis for refusing
registration of the entire mark. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332,
116 USPQ2d 1262, 1264 (Fed. Cir. 2015); In re RiseSmart Inc., 104 USPQ2d 1931,
1933 (TTAB 2012).
A term is “merely descriptive” within the meaning of Section 2(e)(1) “if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d
1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). A term “need not immediately convey an
idea of each and every specific feature of the goods [or services] in order to be
considered merely descriptive; it is enough if it describes one significant attribute,
function or property of the goods [or services].” In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)).5
Whether a term is merely descriptive is “evaluated ‘in relation to the particular
goods [or services] for which registration is sought, the context in which the mark is
used, and the possible significance the term would have to the average consumer
because of the manner of its use or intended use,”’ Chamber of Commerce, 102

5 A “mark need not be merely descriptive of all recited goods or services in an application. A
descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services
for which registration is sought.”’ In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting Stereotaxis, 77 USPQ2d at 1088).
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USPQ2d at 1219 (quoting Bayer, 82 USPQ2d at 1831), and “not in the abstract or on
the basis of guesswork.” Fat Boys Water Sports, 118 USPQ2d at 1513 (citing In re
Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). “In other words,
we evaluate whether someone who knows what the goods [or services] are will
understand the mark to convey information about them.” Id. at 1515 (citing
DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012)).6
Because the term HOME HEALTH EDUCATOR PROGRAM involves the
combination of words, we are “required to examine the meaning of each component
individually, and then determine whether the [term] as a whole is merely
descriptive.” DuoProSS, 103 USPQ2d at 1758. If the words HOME, HEALTH,
EDUCATOR, and PROGRAM, or recognized combinations thereof (e.g., HOME
HEALTH or HEALTH EDUCATOR), are individually descriptive of the goods and
services in the application, we must determine whether their combination in
Applicant’s mark “conveys any distinctive source-identifying impression contrary to
the descriptiveness of the individual parts.” In re Oppedahl & Larson LLP, 373 F.3d
1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2003). If each word instead “retains its merely
descriptive significance in relation to the goods [and services], the combination
results in a composite that is itself merely descriptive.” Fat Boys Water Sports, 118

6 A term is suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods or services are to reach a
conclusion about their nature from the term. See, e.g., Fat Boys Water Sports, 118 USPQ2d
at 1515.
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USPQ2d at 1516 (citing In re Tower Tech., Inc., 64 USPQ2d 1314, 1317-18 (TTAB
2002)); see also In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953-55 (TTAB
2018).
Evidence that a term is merely descriptive to the relevant purchasing public may
be obtained from any competent source, such as dictionaries, newspapers, surveys,
labels, packaging, or advertising materials. Mecca Grade Growers, 125 USPQ2d at
1953 (citing Bayer, 82 USPQ2d at 1831 and Abcor Dev., 200 USPQ at 218). The record
contains the following evidence made of record by the Examining Attorney:7
• Definitions of “home,” “health,” “educator,” and “program” from OXFORD
DICTIONARIES;8
• Definition of “educator” from RANDOM HOUSE WEBSTER’S UNABRIDGED
DICTIONARY;9
• Description of “health educators” from the OCCUPATIONAL OUTLOOK
HANDBOOK;10 and
• Job description of “health educator” from New England College.11
The Examining Attorney argues that within the composite term HOME HEALTH
EDUCATOR PROGRAM, the word HOME means “the place where one lives
permanently, especially as a member of a family or household;” HEALTH means “a

7 The Examining Attorney bears the initial burden of showing that the composite wording
HOME HEALTH EDUCATOR PROGRAM is merely descriptive, and must be disclaimed.
Fat Boys Water Sports, 118 USPQ2d at 1513.14 “If such a showing is made, the burden of
rebuttal shifts to the applicant.” Id. Applicant submitted no evidence, only argument.
8 November 5, 2017 Office Action at TSDR 5-16. Also submitted with the August 17, 2017
Priority Action at 5-23. Definitions are from the North American English (U.S.) version of
the dictionary.
9 Examining Attorney’s Appeal Brief, 6 TTABVUE 9.
10 November 5, 2017 Office Action at TSDR 17-18. Also submitted with the August 17, 2017
Priority Action at TSDR 24-25.
11 Id. at TSDR 19-21.
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person’s mental or physical condition;” EDUCATOR means “a person or thing that
educates;” and PROGRAM means “a set of related measures, events, or activities with
a particular long-term aim.”12 She further explains that “[a] health educator teaches
people about behaviors that promote wellness” and “develops and implements
strategies to improve the health of individuals,” while “home health educators
perform these functions in the patient’s home;” and that “Applicant’s identification of
goods and services does not contain any limiting language regarding the nature of
the person or thing that educates patients and caregivers regarding treatment of
cancer pain. [Therefore,] Applicant’s brochures and in-home educational programs
. . . serve the function of an in home educator to teach patients and caregivers about
treatment of cancer pain.”13 Finally, she argues that although Applicant has
disclaimed HOME HEALTH, the words EDUCATOR and PROGRAM as well as the
composite wording HOME HEALTH EDUCATOR PROGRAM are merely descriptive
of Applicant’s goods and services because they involve brochures and an in-home
educational program which educate patients and caregivers about treatment of
cancer pain.14
Applicant argues that it is not a health educator which, according to the definition
of “educator” originally introduced by the Examining Attorney is a person – not a
thing.15 Instead, Applicant claims that it is a pharmaceutical company, implying that

12 Examining Attorney’s Appeal Brief, unnumbered p. 4; 6 TTABVUE 5.
13 Id. at p. 5; 6 TTABVUE 6.
14 Id. at p. 6; 6 TTABVUE 7.
15 Reply Brief, pp. 2-3; 7 TTABVUE 3-4.
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it is not a person and therefore cannot be a “health educator.”16 Applicant further
argues that its goods and services are not directed to health educators or teachers but
are instead directed to patients and caregivers.17 Therefore, Applicant argues, the
composite wording HOME HEALTH EDUCATOR PROGRAM is at most suggestive
of the goods and services and no disclaimer of that composite term should be required
under Section 6(a) of the Trademark Act.18 As characterized by Applicant,
“[u]ltimately, the issue comes down to how the word ‘Educator’ is understood to [sic]
consumers of the goods and services and whether in context of the mark in its
entirety, the term ‘Home Health Educator Program’ is directly descriptive of the
goods and services.”19
By its disclaimer, Applicant has conceded that the term HOME HEALTH is
merely descriptive of the goods and services.20 See In re Pollio Dairy Prods. Corp., 8
USPQ2d 2012, 2014 n.4 (TTAB 1988) (“By its disclaimer of the word LITE, applicant
has conceded that the term is merely descriptive as used in connection with
applicant's goods.”) (citing State Oil Refining Corp. v. Quaker Oil Corp., 161 USPQ
547 (TTAB 1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972)). See also In re
Page, 51 USPQ2d 1660, 1663 (TTAB 1999) (“Applicant’s statement that his

16 Applicant’s Brief, p. 2; 4 TTABVUE 3.
17 Id. pp. 2, 3-4; 4 TTABVUE 3, 4-5.
18 Applicant’s Brief, p. 5; 4 TTABVUE 6. Reply Brief, p. 3; 7 TTABVUE 4.
19 Reply Brief, p. 1; 7 TTABVUE 2.
20 In response to the requirement for a disclaimer of HOME HEALTH EDUCATOR
PROGRAM, Applicant proffered a disclaimer of HOME HEALTH. October 5, 2017 Response
to Office Action at TSDR 1.
Serial No. 87456734
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disclaimer of this word was not a concession of the mere descriptiveness of this word
. . . is simply not understood or otherwise credible.”). While HOME HEALTH may be
descriptive of the goods and services, we are not bound in our analysis by Applicant’s
strategic decision to disclaim only HOME HEALTH. See TMEP § 1213.08(b)
(Disclaimer of Unregistrable Matter in Its Entirety). The record reveals that
HEALTH is also part of the recognized term HEALTH EDUCATOR.
We agree with the Examining Attorney that each of the individual words in the
composite term HOME HEALTH EDUCATOR PROGRAM are individually
descriptive of the goods and services. DuoProSS, 103 USPQ2d at 1758. The
component terms used in the phrase HOME HEALTH EDUCATOR PROGRAM
retain their plain meanings that will be understood by consumers and do not evoke a
non-descriptive commercial impression; the combination of the terms results in a
composite that is itself merely descriptive in relation to Applicant’s educational
brochures and in-home educational programs. Oppedahl & Larson, 71 USPQ2d 1372.
Further, the record shows that HEALTH EDUCATOR is also merely descriptive
inasmuch as the term describes a significant function of the goods and services, i.e.,
to educate patients and caregivers on matters of health. Fat Boys Water Sports, 118
USPQ2d at 1513. As the definition from RANDOM HOUSE WEBSTER’S UNABRIDGED
DICTIONARY reveals, an educator may be a thing – here, a brochure or a program that
educates patients and caregivers about treatment of cancer pain. To provide the
educational services recited in the application, Applicant must step into the role of a
health educator in patients and caregivers’ homes. Similarly, the brochures
Serial No. 87456734
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themselves serve an educational function (i.e., to educate patients and caregivers on
treatment of cancer pain). When PROGRAM is added to the merely descriptive term
HOME HEALTH EDUCATOR, it does not change the impression of HOME HEALTH
EDUCATOR.21
Based on the record as a whole, we find that the Examining Attorney established
prima facie that the composite term HOME HEALTH EDUCATOR PROGRAM is
merely descriptive of Applicant’s brochures and in-home educational programs.
Applicant submitted no evidence, and its arguments in response to this showing do
not rebut the prima facie descriptiveness of the term.
III. Decision
The refusal to register Applicant’s mark INSYS HOME HEALTH EDUCATOR
PROGRAM in the absence of a disclaimer of HOME HEALTH EDUCATOR
PROGRAM is affirmed. However, this decision will be set aside if, within 30 days of
the mailing date of this decision, Applicant submits to the Board a proper disclaimer
of HOME HEALTH EDUCATOR PROGRAM.22 See Trademark Rule 2.142(g), 37
C.F.R. § 2.142(g); TBMP § 1218.

21 At no point did Applicant argue that PROGRAM is not merely descriptive. Indeed, it
appears to be a generic term as the Class 41 recitation identifies Applicant’s educational
services as a “program.”
22 The standardized disclaimer format is as follows: “No claim is made to the exclusive right
to use HOME HEALTH EDUCATOR PROGRAM apart from the mark as shown.” TMEP
§ 1213.08(a). If Applicant submits the required disclaimer within the time allowed, the
application, as so amended, will be passed to publication for opposition.