Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MEDICAL DISPOSABLES COMPANY
Serial No. 74/098,753
December 21, 1992
Hearing: November 18, 1992
Robert B. Kennedy of Kennedy and Kennedy for applicant.
Angela Micheli
Trademark Examining Attorney
Law Office 11
(Thomas G. Howell, Managing Attorney)
Before Rooney, Cissel and Quinn
Members
Member
An application was filed to register the mark shown below
for disposable premoistened wash cloths; incontinent garments, namely, adult diapers, incontinent garment liners and incontinent garment liner holders and patient cleaning cloths; incontinent bed sheet liners; paper tissues; and wash cloths. [FN1] Applicant was requested to disclaim the words, "Medical Disposables" apart from the mark as shown. [FN2] In response, applicant submitted the following disclaimer:
No claim is made to the exclusive right to the word MEDICAL apart from the mark as shown nor to the exclusive right to use the word DISPOSABLES apart from the mark as shown, but the expression MEDICAL DISPOSABLES is not disclaimed apart from the mark as shown.
Applicant argued that the disclaimer submitted is consistent with the disclaimer made in applicant's registration No. 1,409,328. In addition, applicant asserted that the term MEDICAL DISPOSABLES, as a combination of words, is distinctive and offered, if the Examining Attorney should so desire, to submit a formal declaration as to its exclusive use of the designation for many years. The requirement for a proper disclaimer was then made final and the Examining Attorney stated that a claim of acquired distinctiveness was not appropriate because the term MEDICAL DISPOSABLES is generic for applicant's products. [FN3] In support of this holding, the Examining Attorney included copies of eleven articles retrieved from the Lexis/Nexis data base. Excerpts from these articles include the following:
... makes synthetic non-woven materials used in the manufacture of disposable diapers, fabric softeners and other personal-care and medical disposables. (The Washington Post, June 14, 1984)
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... Another is an oil-resistant TPR grade that complements Monsanto's Geolast range. Also in the wings are drapable sheets for the medical disposable-goods market, ... (Chemical Week Associates, February 22, 1989)
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... Medical disposables is another growth area, as far as Loctite is concerned. 'Because of the AIDS epidemic, the medical profession wants everything disposable ...' (Chemical Week Associates, March 15, 1989)
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... instruments, general hospital equipment and supplies, special hospital and dental furniture, equipment for medical laboratories, orthopedic products and medical disposables ... (Business America, March 11, 1991)
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Medical disposables are a very heterogenous (sic) description of goods. A coherent safety philosophy exists for production conditions, but not for the product itself. Influencing factors on product safety itself are ... (National Library of Medicine)
*2 The applicant again argued the merits of its position, saying that the "sporadic" Nexis/Lexis articles use the term "medical disposables" for products which, in the broadest sense, relate directly to medical use, such as sterile fluid systems, medical and surgical instruments, etc. and that, with such a wide variety of products represented by the phrase MEDICAL DISPOSABLES, it is impossible to determine what are "medical disposables". Without such a determination, argues applicant, one cannot conceive the identity of a particular product merely by reference to the term or associate it as a generic class of goods.
With this last response, applicant included the declaration of its executive vice president for sales, Scott Sigler, who states that applicant has continuously used the mark sought to be registered in connection with its goods since 1988; that it has sold approximately $101,459,000 worth of products so marked from 1988 through June 30, 1991; and that it has spent approximately $627,595 for advertising and promotion during this period.
The Examining Attorney responded that the evidence of record shows that the term MEDICAL DISPOSABLES is used in the trade to indicate a specific category of product and that being a unitary expression, the words MEDICAL DISPOSABLES may not be individually disclaimed. The requirement for a proper disclaimer was made final. Applicant then appealed. [FN4]
It appears to be applicant's position that the combination of the words MEDICAL and DISPOSABLES does not form a unitary expression and that, even if it does, the phrase is neither descriptive nor generic. In addition, applicant appears to argue that in the event its mark is found to be descriptive, then it has acquired distinctiveness under Section 2(f) of the Act. We do not agree.
Turning first to the nature of the term sought to be registered, we note that two descriptive words may, when combined, form a nondescriptive phrase. However, the mere act of combining does not in itself render the resulting composite a registrable trademark. Rather, it must be shown that in combination the descriptiveness of the individual words has been diminished, that the combination creates a term so incongruous or unusual as to possess no definitive meaning or significance other than that of an identifying mark for the goods. See In re Calspan Technology Products, Inc., 197 USPQ 647 (TTAB 1977).
As to whether this particular combination of descriptive words is itself descriptive, applicant relies for support of its position on the case of Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 160 USPQ 777, (S.D.N.Y.1968). In that case, the court stated that the question of whether a term is merely descriptive depends on "... whether the word conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is".
*3 Applicant argued, based on the Stix case, that "the phrase MEDICAL DISPOSABLE (sic) requires imagination, thought and perception to connect the mark with its products here, and is therefore suggestive and not a portion of Applicant's mark that must be disclaimed as a generic phrase." However, it is well settled that the question of the descriptiveness of a proposed mark is not limited to a consideration of that term in a vacuum. In other words, descriptiveness is determined on the basis of what is conveyed by the proposed mark as it is used on the goods and not what it means to one who has never seen and does not know what the goods are. See In re Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215 (CCPA 1978)
In our opinion, when considered in relation to its use on applicant's goods, the term MEDICAL DISPOSABLES clearly has a descriptive connotation.
The test for determining whether a term is the ultimate in descriptiveness, or generic, is what is the primary significance of that term to the relevant public. See H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed.Cir.1986). Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.Cir.1985).
The Lexis/Nexis evidence [FN5] made of record by the Examining Attorney clearly shows that "medical disposables" is a commonly used expression referring to medical instruments and supplies which may be used once and discarded. The fact that the excerpts submitted do not all specifically refer to the type of articles manufactured and sold by applicant does not lessen the effect of this evidence. Obviously there are a number of types of supplies used in medical practice which are disposable and may, for that reason, be identified by that phrase. Thus, the term, "medical disposables" covers the entire class of products intended for medical use and which have in common the fact that they are to be disposed of following a single use. Any or all of these products may be identified by the common term "medical disposables". See: In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991).
In addition, as stated in the case of In re Gould Paper Corporation, 834 F.2d 1017, 5 USPQ2d 1110 (Fed.Cir.1987), the Patent and Trademark Office may satisfy its evidentiary burden by means of dictionary definitions showing that "the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound". In this case, the dictionary provides the following definitions. (Webster's Third New International Dictionary 1976)
*4 Medical: "... 2: requiring or devoted to medical treatment."
Disposable: "... 2: capable of being disposed of easily; esp: designed to be thrown away after use with only negligible loss <fabrics from which are made --- napkins, towels and diapers>."
When these two ordinary words are joined into a compound, they form a phrase which has a commonly understood meaning, i.e., disposable items required for or devoted to medical treatment. Thus, although applicant's goods are not identified as intended for medical use in the application, they are clearly items which are used in medical institutions and at least one, "patient cleaning cloths," is more specifically identified as intended for use in a medical setting. Registration is properly refused on either the Principal or the Supplemental Register if the term sought to be registered is generic of any of the goods or services for which registration is sought. In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd unpublished decision, 10 USPQ2d 1879 (Fed.Cir.1989). We note in passing that the similar goods identified in applicant's Supplemental Registration No. 982,377 were specifically identified as "disposable products for medical institutions and industry, namely, underpads and wash cloths."
In view of the foregoing, we find the term sought to be registered to be a generic designation as applied to the identified goods.
Applicant has argued that its registration on the Supplemental Register provides prima facie proof that the phrase is not generic. However, applicant is advised that "a registration issued on the Supplemental Register is not entitled to the presumptions of Section 7(b) of the statute. It does not constitute prima facie evidence of registrant's ownership of the mark, or of its exclusive right to use the mark in commerce. In fact, it is not prima facie evidence of anything except that the registration issued. See Copperweld Corporation v. Arcair Company, 200 USPQ 470 (TTAB 1978) and cases cited therein.
As to the fact that applicant was permitted to submit a disclaimer of the words, "medical" and "disposables" separately in its Principal Register registration, No. 1,409,328, it is noted that the actions of an Examining Attorney are not binding on the Board. It is clear that the allowance of separate disclaimers for the several parts of a unitary expression does not follow Office practice as set forth in In re Wanstrath, 7 USPQ2d 1412 (Com'r 1987). In fact, applicant does not disagree with the practice. It is only as to the question of whether or not MEDICAL DISPOSABLES is a unitary expression that applicant takes issue. We have determined that it is. Therefore, separate disclaimers are improper in this case.
Inasmuch as we have found the term MEDICAL DISPOSABLES to be generic, the question of whether or not it has acquired secondary meaning is irrelevant. In any event, if that question were before us, it is our opinion that the proffered evidence of secondary meaning would not be sufficient to allow registration under Section 2(f). See In re Pennzoil Products Co., 20 USPQ2d 1753, 1760-61 (TTAB 1991).
*5 In view of the foregoing, the requirement for a disclaimer of the unitary phrase, MEDICAL DISPOSABLES, is affirmed. Applicant is allowed until 20 days from the mailing date of this communication in which to submit a proper disclaimer, failing which registration will be refused.
L.E. Rooney
R.F. Cissel
T.J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Applicant claims ownership of Regn. No. 982,377 for the term, MEDICAL DISPOSABLES issued on the Supplemental Register on April 16, 1974 and Regn. No. 1,409,328 for the mark MEDICAL DISPOSABLES and design issued on the Principal Register on September 16, 1986. In the latter registration, the word, "medical" and the word "disposables" were disclaimed. Applicant has also stated in the application that "The lining shown in the drawing is a feature of the mark and is not intended to indicate color".
FN2. Although the Examining Attorney did not say so, it was presumably because the term was believed to be merely descriptive under Section 2(e)(1).
FN3. In its reply brief, applicant argued that the Examining Attorney asserts (in her appeal brief) that the words MEDICAL DISPOSABLES are incapable of identifying applicant's goods and distinguishing them from those of others; that this is not an argument to prove descriptiveness but rather an argument for genericness; and that at no time before has the Examining Attorney claimed the words to be generic. However, as above noted, the Examining Attorney did hold the term to be generic in the Office action mailed October 4, 1991. Again, in the Office action of April 4, 1992, the Examining Attorney stated that the Nexis materials show that the term "medical disposables" is used in the trade to indicate a specific category of product and made the requirement for a disclaimer final. Moreover, in its brief on appeal, applicant stated that "(A) claim of acquired distinctiveness was also held not appropriate because the phrase was deemed to be generic for applicants (sic) products ...". Obviously, the applicant is mistaken in saying that the Examining Attorney had not, previous to her brief on appeal, claimed the words to be generic.
FN4. Applicant filed a "Supplemental Brief Following Oral Hearing On Appeal". Since there is no provision for such a brief, we have not considered it in reaching our decision herein.
FN5. Printouts from articles which are made available from the Lexis/Nexis data base are competent evidence when offered to illustrate common descriptive usage of a particular term, rather than for the truth of the statements made therein. See In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.Cir.1987).