Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE METPATH INC.
Serial No. 480,760
November 18, 1986
Hearing: August 5, 1986
Michael A. Cornman, Fritz L. Schweitzer, Jr., Hubert T. Mandeville, Felix L. D'Arienzo, Jr., Gerard J. McGowan, Jr. and Andrew S. Langsam for MetPath Inc.
Russ Herman
Trademark Examining Attorney
Law Office 4
(Thomas Lamone, Managing Attorney)
Before Rice, Krugman and Cissel
Members
Member
An application has been filed by MetPath, Inc. to register 'MALE-P.A.P. TEST' as a service mark for clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer and reporting the results thereof. [FN1] Applicant has claimed acquired distinctiveness of the mark pursuant to Section 2(f) of the Trademark Act.
Registration has been refused by the Examining Attorney essentially on the grounds that the subject matter sought to be registered is so highly descriptive of the recited services as to be incapable of functioning as a service mark to indicate origin and that, even if the term is capable, the record does not support a showing of secondary meaning for purposes of Section 2(f) of the Act. Specifically, it is the Examining Attorney's position that the term 'Pap Test' is commonly perceived as a test for detecting cancer of the female reproductive tract; that in view of this perception, members of the public encountering the designation 'MALE-P.A.P. TEST' used in connection with applicant's services are likely to believe that the services constitute a test for cancer designed for the male reproductive tract and analogous in nature to the 'Pap Test' for women. The Examining Attorney, while acknowledging that the 'Pap Test' for women concerns a taking of cells from a women's cervix and microscopically examining them while the 'MALE-P.A.P. TEST' comprises a chemical analysis of blood serum, asserts that both tests are nevertheless designed as procedures for early detection of cancer in the uro-genital tract; that while the 'Pap-Test' for women is derived from the last name of George Papanicolaou, the developer of the procedure, the average person would not be aware of this derivation and its significance is unimportant. The Examining Attorney further points out that applicant's test is an enzyme immunoassay test that measures prostatic acid phosphatase; that 'P.A.P.' is an acronym for 'prostatic acid phosphatase' and that as used by applicant in its literature, it is clear that 'P.A.P.' refers to prostatic acid phosphatase. The Examining Attorney notes that at least one other party utilizes the identical test as that rendered by applicant and refers to said test as a 'PAP Test.' In support of his position, the Examining Attorney, has submitted definitions of 'Pap test' taken from Dorland's Illustrated Medical Dictionary and Webster's New World Dictionary of the American Language as well as a number of excerpts taken from the NEXIS research database. These excerpts refer to the development by Abbott Laboratories of a diagnostic test to monitor prostate cancer. The NEXIS excerpts note that '. . . Abbott is introducing its PAP test worldwide . . .' and that '. . . The new product--Abbott PAP--is an enzyme immunoassay test that measures prostatic acid phosphatase. . . .'
*2 Applicant has appealed, asserting that its testing services rendered under the mark sought to be registered comprise a chemical analysis on blood serum performed exclusively for men to detect prostatic cancer and that, therefore, it is significantly different in process, sample, patient and disease from the ordinary Pap test on women's cervical cells. Applicant argues that the inclusion of the term 'MALE' in association with 'P.A.P. Test' creates an oxymoronic effect since there can be no 'male Pap test' in the ordinary sense, in view of the fact that men have no cervices nor do men get cervical or uterine cancer. Moreover, applicant contends that to the few people who might understand that 'P.A.P.' is an abbreviation for prostatic acid phosphatase, the presence of the term 'MALE' in the mark is redundant since only men have prostate glands and only men generate prostatic acid phosphatase. Applicant concludes that the mark, which always includes 'MALE' separated by a hyphen from the initials P.A.P. which always are separated by periods, is at most suggestive and requires considerable thought and imagination to conclude that the mark suggests the blood-testing services offered and that the mark is properly registrable, especially in view of the more than five years' continuous exclusive use prior to the filing date of the application. In support of its position, applicant has submitted a claim of five years of substantially exclusive and continuous use of the mark, together with estimates of sales revenues and advertising expenditures. Applicant has also submitted a number of advertisements and laboratory schedules evidencing use of the mark.
At the outset, we note that while applicant emphatically contends that its mark is not merely descriptive of the services but is, at most, suggestive, this question has already been determined by the Board in connection with a decision on appeal from a Section 2(e)(1) refusal of applicant's previously filed application for the identical mark for the identical services as those involved herein. That case, In re MetPath, Inc., 223 USPQ 88 (TTAB 1984) held that applicant's mark 'MALE-P.A.P. TEST' would likely be perceived by the public as an indication that applicant's services involve tests for the detection of cancer of the male reproductive tract; that is, tests analogous to the female 'Pap Test.' The Board specifically rejected applicant's contention that the use of 'P.A.P.' in all capital letters, each followed by a period, would dispel the probable descriptive significance of applicant's designation to consumers since the Board doubted that the average person would be aware of the derivation and therefore, the proper form of presentation of 'Pap Test.' The Board further held that those knowledgeable in the field of medicine as well as those laymen who read applicant's advertisements carefully, would recognize the letters 'P.A.P.' to be an acronym for 'prostatic acid phosphatase' and that the designation as a whole would indicate that applicant's services involve the testing of prostatic acid phosphatase levels in males. The Board concluded that in view of the foregoing reasons, the term 'MALE-P.A.P. TEST' was merely descriptive of applicant's testing services. That decision, which was not appealed, constitutes a final adjudication on the issue of the merely descriptive character of 'MALE-P.A.P. TEST' as applied to applicant's testing services and the only issue remaining for us to consider herein is whether applicant's Section 2(f) showing of secondary meaning is sufficient to warrant registration. In this regard, we note that applicant's showing consists of a claim of substantially exclusive and continuous use for the five years next preceding the filing of the application as well as sales revenue and advertising expense figures. Applicant states that from September 1978 through May 1984, it has conducted some 485,000 tests under the mark, generating some $2 million in revenues. Applicant further states that during this period, it has expended over $62,000 in advertising and promotion of the mark. Aside from the fact that the advertising expenditures appear to be quite modest, there is nothing in the record evidencing recognition by the public of 'MALE-P.A.P. TEST' as an indication of origin, associating the mark exclusively with applicant. On the contrary, the record shows that 'PAP test' is used by at least one other party for the identical test or services rendered by applicant. Applicant's own use of the term, while consistently capitalized and while consistently accompanied by an 'SM' designation, is always used in a generic noun form as the name of the services as opposed to a trademark adjectival form to modify the generic name of the services.
*3 In view of the foregoing, we conclude that the term 'MALE-P.A.P. TEST' for applicant's testing services is a highly descriptive term and that the Section 2(f) showing by applicant falls far short of persuading us that the term has acquired secondary meaning, thereby justifying registration pursuant to Section 2(f) of the Act.
Decision: The refusal of registration is affirmed.
J. E. Rice
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 480,760 filed May 17, 1984.