Medical Diagnostic Laboratories, LLC

Trademark Trial and Appeal Board

Sep 22, 2016

No. 86420590 (T.T.A.B. Sep. 22, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Medical Diagnostic Laboratories, LLC
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Serial No. 86420590
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Siu K. Lo, Esq., Scott S. Christie and Irene M. Hurtado of McCarter & English LLP1
for Medical Diagnostic Laboratories, LLC.

Tina H. Mai, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Taylor, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On October 10, 2014, Medical Diagnostic Laboratories, LLC (“Applicant”) filed an
application to register the mark BRCAcare in standard characters on the Principal
Register for, as amended, “Genetic testing for medical purposes; Medical screening;
Providing health information, specifically a Comprehensive BRCA Analysis, an
Ashkenazi Jewish 3-site Mutation Analysis, an Ashkenazi Jewish 3-site Mutation

1 On May 5, 2016, Scott S. Christie and Irene M. Hurtado of McCarter & English LLP
entered a notice of appearance as co-counsel for Applicant in this matter.
Serial No. 86420590
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Analysis with reflex, BRCA1: Specific Site Analysis, and BRCA2: Specific Site
Analysis” in International Class 44.2 The Trademark Examining Attorney refused
registration of the mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that the mark is merely descriptive of Applicant’s
identified services.
Applicant appealed and filed a request for reconsideration which was denied. The
appeal is now fully briefed. For the reasons set forth below, we affirm the refusal to
register.
Whether the Mark is Merely Descriptive?
Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when
used in connection with the applicant’s goods or services, is merely descriptive of
them. 15 U.S.C. § 1052(e)(1).3 “A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)).4 The determination of whether a mark

2 Application Serial No. 86420590, filed pursuant to Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. Applicant mis-
stated the current identification in its brief by including the services it had deleted in its
Request for Reconsideration, “Medical testing for diagnostic or treatment purposes.” These
services cannot be added back now because they would exceed the scope of the last accepted
identification.
3 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it .... (e) Consists of a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive or deceptively misdescriptive of them. ...”
4 To the extent that Applicant contends that the degree of imagination or competitor’s need
tests are the proper analysis for determining whether a mark is merely descriptive or
Serial No. 86420590
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is merely descriptive must be made in relation to the goods or services for which
registration is sought, not in the abstract. In re Chamber of Commerce, 102 USPQ2d
at 1219; In re Bayer, 82 USPQ2d at 1831. This requires consideration of the context
in which the mark is used or intended to be used in connection with those goods or
services, and the possible significance that the mark would have to the purchasers of
the goods or services in the marketplace. In re Chamber of Commerce, 102 USPQ2d
at 1219; In re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987). Evidence that a term is merely descriptive to the
relevant purchasing public “may be obtained from any competent source, such as
dictionaries, newspapers, or surveys.” In re Bayer, 82 USPQ2d at 1831 (quoting In re
Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986)).
The issue before the Board is whether Applicant’s compound word mark5
BRCAcare, as a whole, is merely descriptive of the identified services.
Both the Examining Attorney and Applicant submitted evidence that “BRCA” is
an abbreviation for “breast cancer.”6 The record also shows that BRCA refers to a
gene with multiple variants, and that when a deleterious mutation is present, it may

suggestive, Applicant is mistaken. While these various tests for determining the difference
between descriptive and suggestive terms have been used by an array of Federal courts, the
correct current test as set forth by our primary reviewing court, the Court of Appeals of the
Federal Circuit, is articulated above.
5 “A compound word mark is comprised of two or more distinct words (or words and syllables)
that are represented as one word…” Trademark Manual of Examining Procedure (“TMEP”)
§ 1213.05(a) (April 2016).
6 Search results for “BRCA” from www.acronymfinder.com attached to February 1, 2015
Office Action; excerpt for “BRCA” from http://acronyms.thefreedictionary.com/BRCA
attached to Applicant’s June 19, 2015 Office Action Response.
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increase the risk of breast, ovarian and other types of cancer. We highlight the
following excerpt entitled “BRCA mutation” from Wikipedia:7
A BRCA mutation is a mutation in either the BRCA1or BRCA2 genes,
which are tumor suppressor genes. Hundreds of different types of
mutations of these genes have been identified, some of which have been
determined to be harmful, while others as benign or of still unknown or
uncertain impact. Harmful mutations in these genes may produce a
hereditary breast-ovarian cancer syndrome in affected persons. … There
are many variations in BRCA genes. … Genetic counseling is commonly
recommended to people whose personal or family health history
suggests a greater than average likelihood of a mutation. … If the client
chooses to be tested, then two types of tests are available. … A positive
test result for a known deleterious mutation is proof of a predisposition,
although it does not guarantee that the person will develop any type of
cancer. … An intensive cancer screening regime is usually advised for
women with deleterious or suspected deleterious BRCA mutations in
order to detect new cancers as early as possible.

This appears to be the more commonly recognized meaning of the term given the
“Angelina Jolie Effect” – the increase in genetic testing among women following
Angelina Jolie’s decision to have a double mastectomy after testing positive for the
BRCA mutation.8
Researchers who study hereditary breast and ovarian cancer call it “The
Angelina Jolie Effect.”

They reported a sustained global surge in requests for BRCA genetic
testing after the actress wrote about her preventative mastectomy two
years ago. Last month she gave another boost to awareness when she
wrote about her recent surgery to remove her ovaries.

But raising awareness hasn’t necessarily lowered barriers, BRCA
experts say.9

7 Applicant’s June 19, 2015 Office Action Response.
8 “The Angelina Jolie Effect: One Year Later” published by Fred Hutch (www.fredhutch.org)
attached to July 4, 2015 Office Action.
9 Marie McCullough, “With BRCA genetic testing on the rise, insurers balk.” philly.com
attached to July 4, 2015 Office Action.
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The word “care” is defined as “things that are done to keep someone healthy, safe,
etc.” or “responsibility for or attention to health, well-being, and safety.”10 Clearly,
the definition of “care” is sufficiently broad to encompass Applicant’s identified
services.
Thus, we find that Applicant’s mark BRCAcare immediately conveys to
prospective purchasers that Applicant’s medical services are designed to test and
screen patients for either breast cancer and/or the BRCA genetic mutation.
Applicant’s disclaimer of the identical wording “BRCA CARE” in recently issued
registrations for either identical or legally identical services supports our finding:11
Registration No. 4949768 for the mark displayed below

10 Merriam-Webster Dictionary (www.merriam-webster.com) attached to February 1, 2015
Office Action and Applicant’s June 19, 2015 Office Action Response.
11 The Examining Attorney in her brief requests that the Board take judicial notice of the
registrations which issued during the course of the appeal. We decline to do so. “The Board’s
well-established practice is not to take judicial notice of third-party registrations when an
applicant or examining attorney requests that such notice be taken during the course of an
appeal.” Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1208.04 (2016)
(“Judicial Notice”) (citing, for example, In re House Beer, LLC, 114 USPQ2d 1073, 1075
(TTAB 2015) and In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998), aff’d, 194 F.3d 1297,
52 USPQ2d 1539 (Fed. Cir. 1999)). The proper procedure for making of record evidence that
was previously unavailable is to file a request for remand. See, e.g., In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1244 n.4 (TTAB 2010) (registration that issued after notice of appeal
and submitted with appeal brief not considered, applicant could have filed a request for
remand).
Applicant, however, not only discussed the registrations in its reply brief but also submitted
copies. Generally, the Board does not consider evidence filed after appeal. Trademark Rule
2.142(d); 37 C.F.R. § 2.142(d). One exception is when the non-offering party does not object
to the new evidence, and discusses the new evidence or otherwise affirmatively treats it as
being of record. See TBMP § 1207.03 (“Evidence Considered Due to Actions of Non-offering
Party”) and cases cited therein. For this reason, we have discussed the registrations in our
opinion.
Serial No. 86420590
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for “Genetic testing for medical purposes; Medical screening; Medical testing for
diagnostic or treatment purposes; Providing health information” in International
Class 44, registered on the Principal Register on May 3, 2016;12 and Registration No.
4949771 for the mark displayed below

for “Genetic testing for medical purposes; Medical screening; Medical testing for
diagnostic or treatment purposes; Providing health information” in International
Class 44, registered on the Principal Register on May 3, 2016.13

12 The description of the mark is as follows: “The mark consists of the literal element
‘BRCAcare’ depicted in a dark brown font color, where ‘BRCA’ is in a uppercase italic font
style and ‘care’ is in a lowercase normal font style; the literal element ‘BRCAcare’ is
positioned in the middle of a rectangular box depicted in shades of gold to create the
appearance of light reflecting off of a metallic surface; the rectangular box is outlined by a
rectangular boarder with rounded edges and is depicted in shades of gold to create the
appearance of reflections.” The colors dark brown and gold is/are claimed as a feature of the
mark.
13 The description of the mark is as follows: “The mark consists of the literal element
‘BRCAcare’, where ‘BRCA’ is in a uppercase italic font style and ‘care’ in a lowercase normal
font style; the literal element ‘BRCAcare’ is positioned in the middle of rectangular box that
creates the appearance of light reflecting off of a metallic surface; the rectangular box is
outlined by a rectangular boarder with rounded edges and is depicted to create the
appearance of reflections.”
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Applicant maintains that the Examining Attorney failed to consider its composite
mark BRCAcare as a whole. According to Applicant, the record shows that the
acronym “BRCA” and the word “care” each have multiple meanings. While this is
true, when combined, the terms BRCA and “care” do not present a unique or
incongruous meaning in relation to Applicant’s services. See In re Finisar Corp., 78
USPQ2d 1618 (TTAB 2006), aff’d per curiam, 223 Fed. App’x 984 (Fed. Cir. 2007)
(SMARTSFP held merely descriptive of optical transceivers). It is settled that “[t]he
question is not whether someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). Here, a prospective
consumer familiar with Applicant’s services will immediately understand their
nature.
Applicant also points to third-party registrations containing the wording BRCA
on the Principal Register without a disclaimer as evidence that its mark is not merely
descriptive.14 Each of the previously registered marks (BRCAPLUS,
BRCAVANTAGE, BRCASSURE, and BRCATRUE) combine BRCA with wording
that is apparently not descriptive of the identified BRCA goods and/or services,
resulting in a non-descriptive, unitary mark. “If a compound word mark consists of
an unregistrable component and a registrable component combined into a single
word, no disclaimer of the unregistrable component of the compound word will be

14 January 4, 2016 Request for Reconsideration.
Serial No. 86420590
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required.” TMEP § 1213.05(a) (citing In re EBS Data Processing, Inc., 212 USPQ 964,
966 (TTAB 1981) (finding that “[a] disclaimer of a descriptive portion of a composite
mark is unnecessary . . . if the elements are so merged together that they cannot be
regarded as separable elements . . . for example, . . . by combining two words or terms,
one of which would be unregistrable by itself . . .”).
In sum, we find that Applicant’s mark BRCAcare for “Genetic testing for
medical purposes; Medical screening; Providing health information, specifically a
Comprehensive BRCA Analysis, an Ashkenazi Jewish 3-site Mutation Analysis, an
Ashkenazi Jewish 3-site Mutation Analysis with reflex, BRCA1: Specific Site
Analysis, and BRCA2: Specific Site Analysis” in International Class 44 is merely
descriptive.
Decision: The descriptiveness refusal under Section 2(e)(1) of the Trademark Act
is affirmed.