Physicians Practice, Inc.

Trademark Trial and Appeal Board

Sep 26, 2003

No. 76186666 (T.T.A.B. Sep. 26, 2003)

Mailed:
September 26, 2003
Paper No. 11
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Physicians Practice, Inc.
________
Serial No. 76/186,666
_______
Sherry H. Flax of Saul Ewing LLP for Physicians Practice,
Inc.
Sonya B. Stephens, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Physicians Practice, Inc. seeks registration on the
Principal Register for the mark HOUSESTAFF.COM for
services recited as “computer services, namely, providing
on-line magazines in the fields of business, marketing,
financial and general practice management for physicians,
medical students, and medical personnel via a global
computer network,” in International Class 42.1
1 Application Serial No. 76/186,666 was filed on December 26,
2000 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. Applicant has voluntarily agreed to
disclaim exclusive rights “to use ‘house,’ ‘staff,’ and
‘housestaff’ apart from the mark as shown.”
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/186,666
- 2 -
This case is now before the Board on appeal from the
final refusal to register on the ground that the term
HOUSESTAFF.COM is merely descriptive of applicant’s
services under Section 2(e)(1) of the Lanham Act, 15 U.S.C.
§1052(e)(1).
Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing.
We affirm the refusal to register.
A term is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, if it forthwith conveys an immediate
idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services with
which it is used or is intended to be used. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978); and In re Eden Foods Inc., 24 USPQ2d 1757
(TTAB 1992). It is well settled that a term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered merely descriptive; it is enough that the term
describes one significant feature, attribute, function,
property, ingredient, quality, characteristic, purpose or
Serial No. 76/186,666
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use of the goods or services. In re Opryland USA Inc., 1
USPQ2d 1409 (TTAB 1986); and In re The Weather Channel,
Inc., 229 USPQ 854 (TTAB 1985). The question of whether a
particular term is merely descriptive must be determined
not in the abstract, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used or is intended to be used, and the
possible significance that the mark is likely to have for
the average purchaser encountering the goods or services in
the marketplace. See In re Abcor Development Corp., supra;
In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995);
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In
re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986) and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
That is, the question is not whether someone presented
with only the term or phrase 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
term or phrase to convey information about them. See In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); and In re American Greetings Corp., 226 USPQ
365 (TTAB 1985). Accordingly, we find most unpersuasive
applicant’s argument that “‘house staff’ is used widely to
refer to the employees of a state house of representatives”
Serial No. 76/186,666
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or that it is used “ … in connection with college
residences.” (Applicant’s brief, p. 3).
The Trademark Examining Attorney has placed into the
record thirty-nine stories from the LEXIS/NEXIS database
demonstrating that the term “house staff” refers to medical
personnel who are employed at medical centers and
hospitals. While applicant does not deny that its services
are, or will be, directed, inter alia, to medical
professionals employed at such medical facilities,
applicant argues that its services will be used by a
broader group of medical personnel. However, as the
Trademark Examining Attorney has correctly contended, it is
not necessary that a term describe all of the intended
users in order to be found to be merely descriptive.
Rather, it is enough that the term describes a significant
group of the intended users of the services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973). And while not
itself determinative herein, we find that applicant’s
voluntary disclaimer of the term “housestaff” also appears
to support a finding of descriptiveness of this term.
Applicant argues that the United States Patent and
Trademark Office has in the past registered marks that
include terms (e.g., “medical staff,” “staff physician,”
Serial No. 76/186,666
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and “house call”) that are far more descriptive than “house
staff” in connection with goods or services targeted to
medical personnel.
The Examining Attorney, citing In re Scholastic Testing
Service, Inc., 196 USPQ 517, 519 (TTAB 1977) and TMEP
§1209.03(a), properly notes in her brief that “[t]hird-party
registrations are not conclusive on the question of
descriptiveness” and that “[a] mark which is merely
descriptive is not registrable merely because other similar
marks appear on the register.” Each case must be determined
on its own merits. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board or this court”]; In re
Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514
(TTAB 2001); and In re Pennzoil Products Co., 20 USQP2d
1753, 1758 (TTAB 1991).
In addition, it is pointed out that because the Board
does not take judicial notice of third-party registrations,
the mere citation to such purported registrations in
applicant’s request for reconsideration and appeal brief “is
insufficient to make them of record.” In re Duofold Inc.,
184 USPQ 638, 640 (TTAB 1974). The proper procedure,
instead, for making information concerning third-party
registrations of record is to submit either copies of the
actual registrations or the electronic equivalents thereof,
Serial No. 76/186,666
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i.e., printouts of the registrations which have been taken
from the PTO’s own computerized database. See In re
Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 n. 3 (TTAB
1995); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n. 3
(TTAB 1994); and In re Melville Corp., 18 USPQ2d 1386, 1388
n. 2 (TTAB 1991).
In any event, even if such information were to be
considered, it would be devoid of any probative value
because it would not reveal which of the cited registrations
issued with a disclaimer of the allegedly similar term under
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a),
and/or pursuant to a claim of acquired distinctiveness in
accordance with Section 2(f) of such Act, 15 U.S.C.
§1052(f).
Accordingly, we find that the term “house staff” (or
“house-staff” or “housestaff”) is descriptive for the
recited services.
Of course, applicant’s entire mark is not just the term
“house staff,” but is a composite mark presented in the form
of an Internet address, HOUSESTAFF.COM. Applicant argues
that this combination “is inventive and creates a unique
commercial impression that indicates the source of the
services … .” (Applicant’s brief, p. 3).
However, we find that no new meaning is created by the
combination of the terms "HOUSESTAFF" and ".COM"; rather,
the consuming public for services of the kind rendered by
applicant would understand the meaning of the term
Serial No. 76/186,666
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HOUSESTAFF.COM to be the same as that of its constituent
parts combined. Prospective consumers will view applicant’s
mark as a combination of merely descriptive wording along
with a top level Internet domain name “.com.” See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1792-94 (TTAB 2002)
[BONDS.COM for, inter alia, “providing information regarding
financial products and services via a global computer
network …, with respect to taxable and tax exempt debt
instruments,” is generic term for such services; it lacks
“any meaning apart from the meaning of the individual terms
combined”; and it “is properly considered a compound word in
this analysis”]; and In re Martin Container Inc., 65 USPQ2d
1058, 1060 (TTAB 2002) [CONTAINER.COM is “incapable of
identifying the source of applicant’s retail and rental
services featuring containers” because “what applicant seeks
to register is simply a generic term [CONTAINER], which has
no source-identifying significance in connection with
applicant’s services, in combination with the top level
domain indicator [.COM], which also has no source-
identifying significance, and … combining the two does not
create a term which has somehow acquired the capability of
identifying and distinguishing applicant's services”].
More recently, the Board has had occasion to speak to
the combination of a descriptive term and a TLD:
In each of the referenced two cases, the
Board held that the applicant was attempting
to register a composite of a generic term
and a TLD, neither of which had source
Serial No. 76/186,666
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indicating significance. In the case at
hand, we are only faced with a refusal
premised on the combination of a descriptive
term and a TLD. We find there is nothing in
the combination of a descriptive term and a
TLD, as contrasted with the combination of a
generic term and a TLD, that renders the
composite registrable on the Principal
Register without a showing of acquired
distinctiveness.
In re Microsoft Corporation, (SN. 78/013,678) __ USPQ2d ___
(TTAB September 11, 2003) [OFFICE.NET refused registration
under Section 2(e)(1) for a wide range of computer software
and hardware products]. Cf. Trademark Manual of Examining
Procedure (TMEP) §§ 1209.03(m) and 1215.04 (3rd Ed. 2003).
Similarly, to the extent that the Trademark Examining
Attorney has clearly established that the term “house
staff” is merely descriptive for applicant’s online
magazines directed to physicians, medical students and
other medical personnel, combining this term with a top
level Internet domain name does not add source identifying
significance to this composite mark, and hence, this
composite is not registrable on the Principal Register
absent a showing of acquired distinctiveness.
Decision: The refusal to register under Section
2(e)(1) of the Act is hereby affirmed.