McNeil & Company, Inc.

Trademark Trial and Appeal Board

Sep 22, 2008

No. 77243312 (T.T.A.B. Sep. 22, 2008)

Mailed: September 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re McNeil & Company, Inc.
________

Serial No. 77243312
_______

Robert E. Purcell of Hiscock & Barclay for McNeil &
Company, Inc.

Colleen M. Dombrow, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Grendel and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

McNeil & Company, Inc. filed an application to
register the mark FARMEDIC [in standard character format]
for “educational services, namely, providing seminars and
courses in training and instruction for emergency services
personnel and the agricultural community in connection with
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 77243312
2
farm-related fire and medical emergencies” in International
Class 41.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that FARMEDIC, when used in
connection with applicant’s services, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that “those in the
educational arena offering courses and training for
emergency services personnel and the agricultural community
in connection with farm-related fire and medical
emergencies call these courses farmedic courses.” Brief,
(unnumbered) p. 8. In support, the examining attorney
attached website evidence showing various third-party uses
of the term “farmedic” or “farm medic” to describe
educational courses or seminars akin to applicant’s
identified services. She was not persuaded by applicant’s
argument that course-givers identified in the website
evidence are affiliated with applicant; indeed, she argues
that the evidence indicates that there is no such

1 Application Serial No. 77243312, filed July 31, 2007, alleging
first use anywhere and first use in commerce on December 31,
Ser No. 77243312
3
affiliation. The examining attorney further contends that
applicant’s mark is merely a telescoped combination of the
terms “farm medic” and, based on the dictionary definitions
of these terms, the mark remains descriptive because the
novel spelling employed by applicant will be perceived by
consumers as the equivalent of the descriptive terms.
Thus, the examining attorney concludes, all meanings are
descriptive in relation to the services. In addition to
the printouts from internet website evidence, the examining
attorney introduced dictionary definitions for the words
“farm” and “medic”.
As alluded to above, applicant has argued that “with
respect to the website references upon which the Examining
Attorney relied in making an initial rejection of the
application that many of those references [showing use of
the term “Farmedic”] specifically mention an affiliation
with Cornell University, which is Applicant’s predecessor-
in-interest by Agreement dated July 17, 2007.” Brief, p.
2. Applicant contends that its purported predecessor-in-
interest, Cornell University, had “sponsored 147 trainers
and instructors around the U.S.A. for its ‘FARMEDIC’
courses” and suggests that the examining attorney has not
shown that the references are “other than those to the

1987.
Ser No. 77243312
4
trademark of Applicant or its predecessor-in-interest.”
Brief, pp. 6-7. Applicant also argues that “[e]ven
presuming arguendo that any of the website references to
the ‘FARMEDIC’ course were not affiliated with applicant or
its predecessors-in-interest, the examining attorney has
failed to demonstrate why such infringing uses by third
parties may be converted into some sort of evidence of
‘industry recognition’ and that Applicant’s trademark is
merely descriptive.” Reply Brief, p. 3. Finally,
applicant also opposes, what it refers to as, the examining
attorney’s improper dissection of applicant’s mark.
Applicant states that “[p]resuming that such definitions
[provided by the examining attorney of the terms ‘farm’ and
‘medic’] are accurate, they result in a totally
nonsensical, non-descriptive connection with applicant’s
services.” Reply brief, p. 3. In this regard, applicant
notes that the same mark was previously registered for the
similar services.2

2 Registration 1427867 for the mark FARMEDIC for “educational
services namely conducting seminars and courses in the areas of
agricultural safety, health and rescue for the agricultural
community and emergency services providers.” The registration
issued on March 2, 1987 to Empire Regional Emergency Medical
Services Agency, Inc.. An assignment was recorded on December 8,
1986 (reel 0546, frame 0550) indicating an assignment was
executed on December 19, 1986 to an assignee identified as
Farmedic Training, Inc. The registration was cancelled on August
9, 1993 under Section 8.
Ser No. 77243312
5
Before addressing the merits of refusal, we note an
objection by the examining attorney to the admissibility of
applicant’s listing of third-party registrations (attached
to applicant’s response to an Office Action and
incorporated in applicant’s brief).
In its response (dated November 27, 2007) to the first
Office Action, applicant attached a list of what it
described as registrations for marks that “include the
words or formatives ‘FARM’ or ‘MEDIC’ for farm or medically
related goods or services that were not obtained under
Section 2(f).” In the final Office Action, the examining
attorney informed applicant that the Board “does not take
judicial notice of registrations, and the mere submission
of a list of registrations does not make the registrations
of record...soft copies of the registrations or the
complete electronic equivalent...must be submitted.”
Applicant did not heed the examining attorney’s advice and
instead incorporated the list of registrations in its
brief, without submitting any copies thereof. The
examining attorney, in her brief, objected to applicant’s
reliance upon these registrations. In response, applicant
stated that “the TTAB case law cited in the TMEP [section
cited by the examining attorney] is antiquated...[i]t is a
ministerial task to print from the USPTO’s own database
Ser No. 77243312
6
copies of the registration certificates...where, as here,
there is no dispute regarding the existence of such
registrations.” Reply brief, p. 2.
The Board manual of procedure makes it clear that the
mere listing of registrations is not sufficient to make the
identified registrations of record. See TBMP § 1208.02 (2d
ed. rev. 2004) and cases cited therein, including, In re
Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998) and
In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB
1996). In spite of increased public access (via the
internet) to USPTO databases, including registration
databases, the requirement for the submission of copies of
registrations has not changed. In view thereof, the
examining attorney’s objection to the admissibility of the
list of registrations is sustained. Accordingly, the list
of registrations has been given no consideration; and we
further note that applicant did not otherwise submit any
evidence into the record.
We now turn to the substance of the descriptiveness
refusal.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the services with which it
is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Ser No. 77243312
7
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the services for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). In other words, the issue is
whether someone who knows what the services are will
understand the mark to convey information about the
services. 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); In re American Greetings Corp., 226 UPSQ 365, 366
(TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Ser No. 77243312
8
Finally, in determining whether a mark is merely
descriptive, we must consider the mark in its entirety. As
argued by applicant, common words may be descriptive when
standing alone, but when used together in a composite mark,
they may become a valid trademark. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054, 1057 (TTAB 1989).
With the above principles in mind and based upon the
record, we find that the mark FARMEDIC is merely
descriptive of educational services, namely, providing
seminars and courses in training and instruction for
emergency services personnel and the agricultural community
in connection with farm-related fire and medical
emergencies.
The record includes a substantial number of online
articles, course descriptions, and third-party websites
showing that there are courses of instruction or seminars
wherein the subject matter, or the course itself, is
described as “Farmedic” (or, in fewer cases, “Farm Medic”
and “farm medic”). Indeed, the examining attorney attached
approximately twenty different online sources showing usage
of this term. The record establishes that these “Farmedic”
courses or seminars are being provided at a wide variety of
educational institutions and are geared toward providing
Ser No. 77243312
9
first aid or rescue training for either emergency medical
technicians (EMT’s), firefighters or those who may work or
come in contact with farm-related medical emergencies. In
one course description, the “Farm Medic Hands On Rescue
Training Program” is described as “provid[ing] specialized
techniques on handling dozens of different agriculture
related accident situations.”3 We disagree with applicant’s
assertion that these references “do not establish any
industry recognition of the term ‘FARMEDIC’ as being merely
descriptive.” Brief, p. 7. To the contrary, the evidence
bears out that there are various different entities
providing nearly identical educational services to
applicant’s recited services and who use the term
“Farmedic” to describe the subject matter for the courses
or seminars. As such, FARMEDIC immediately describes,
without conjecture or speculation, the subject matter of
applicant's educational services, namely, providing
seminars and courses in training and instruction for
emergency services personnel and the agricultural community
in connection with farm-related fire and medical
emergencies.

3 Moultrie Technical College website (www.moultrietech.edu).
Printout attached to December 19, 2007 Office Action.
Ser No. 77243312
10
Although most of the references show the term
“Farmedic” beginning with an uppercase letter “F”, the term
is used by so many different institutions and in news
articles using this term, without attributing a common
source for the services. In other words, the evidence does
not suggest that the term is being used as a source-
identifier. Thus, to the extent that usage of an uppercase
“F” may be construed as indicating trademark use, this does
not appear the case. Instead, we conclude the evidence
suggests that the term “Farmedic” is used by many different
persons in a merely descriptive, if not generic, fashion to
denote a type of course or other mode of instruction that
promotes safety and first-aid training in an agricultural
setting.
Applicant’s suggestion that the examining attorney’s
evidence possibly points to usage of the term “Farmedic” by
persons affiliated with applicant’s purported predecessors-
in-interest, including Cornell University, is simply not
supported by the evidence. Indeed, applicant has not
submitted any evidence to show that it has acquired
trademark rights, or any other rights, from Cornell
University. Applicant’s argument is just that, mere
argument and, without any supporting evidence, we find no
reason to treat this argument, or the underlying premise
Ser No. 77243312
11
thereto, as fact. See, In re Vsesoyuzny Oordena Trudovogo
Krasnogo Znameni, 219 USPQ 69, 70 (TTAB 1983)
("Unfortunately we have no evidence of record to this
effect...assertions in briefs are normally not recognized
as evidence"), citing In re Simulations Publications, Inc.,
187 USPQ 147 (CCPA 1975). The CCPA has noted in a case
regarding arguments of counsel, a party “had ample
opportunity to submit rebuttal evidence but failed to do
so, placing his faith in the arguments of counsel, which
are not evidence.” Peeler v. Miller, 535 F.2d 647, 190
USPQ 117, 121 (CCPA 1976). See also Enzo Biochem Inc. v.
Gen Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed.
Cir. 2005) (“Attorney argument is no substitute for
evidence”). Likewise, as to the now-cancelled
registration, there is simply no evidence that it was owned
by any of applicant’s predecessors-in-interest. Instead,
Office records indicate that the registration was owned by
one corporation and assigned to a second corporation
(neither of which appears to be related to Cornell
University or applicant) before being cancelled.4 And, we
do not hesitate to add that, even if applicant were able to
establish that a predecessor-in-interest once owned the
now-cancelled registration, it would have little effect on

4 See footnote 2.
Ser No. 77243312
12
our decision herein. The registration was cancelled in
August 1993, and it is possible that any trademark rights
the owner of the registration had may have lapsed during
the last fifteen years.
In addition to our finding that applicant’s mark
itself, FARMEDIC, is a term used to merely describe the
subject matter of the same type of instruction or
educational services as those of applicant, we also agree
with the examining attorney’s contention that applicant’s
mark will also be perceived by consumers as a “telescoped”
combination of the descriptive terms “farm” and “medic.”
Based on the dictionary definitions made of record by the
examining attorney, both terms are clearly descriptive in
connection with the recited educational services concerning
“farm-related...medical emergencies.” The evidence of
record also includes several references to the phrase “farm
medic”, i.e., as two separate words, being used to describe
similar courses of instruction or those trained in the same
field.
The registrability of a mark created by combining only
descriptive words depends on whether a new and different
commercial impression is created or the mark so created
imparts an incongruous meaning as used in connection with
the goods or services. In re Tower Tech, Inc., 64 USPQ2d
Ser No. 77243312
13
1314 (TTAB 2002). However, the mere combination of
descriptive words to form a telescoped mark does not
automatically create a new non-descriptive word or phrase.
See, e.g., In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986)
(EXPRESSERVICE merely descriptive of banking and trust
services); In re BankAmerica Corp., 229 USPQ 852 (TTAB
1986) (PERSONALINE is merely descriptive of consumer loan
services in which a personal line of credit is provided);
In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) (SUPEROPE
merely descriptive of wire rope); In re Gagliardi Bros.,
Inc., 218 USPQ 181 (TTAB 1983) (BEEFLAKES is merely
descriptive of thinly sliced beef).
In line with the cases cited above, we find that there
is no thought process required to determine the subject
matter of applicant's educational services upon viewing
applicant’s mark in connection with the services. The
telescoped combination of the descriptive words “farm” and
“medic” creates no incongruity and no imagination is
required to understand the nature of the services.
In summary, we find that the evidence supports the
examining attorney’s refusal to register applicant’s mark
on the basis the mark is merely descriptive of the recited
services. Specifically, we find that the mark FARMEDIC
immediately describes, without conjecture or speculation,
Ser No. 77243312
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the subject matter of applicant's educational services,
namely, providing seminars and courses in training and
instruction for emergency services personnel and the
agricultural community in connection with farm-related fire
and medical emergencies.
Decision: The refusal to register is affirmed.