throbber
THIS DECISION IS NOT
`CITABLE AS PRECEDENT
`OF THE TTAB
`Paper No. 26
`
`
`
`
`TJQ
`
`
`
`
`
`Mailed: September 25, 2002
`
`
`
`
`
`
`
`
`
`
`
`Hearing:
`June 4, 2002
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Council on Professional Standards for Kinesiotherapy
`________
`
`Serial No. 75/300,422
`_______
`
`Michael A. Grow, Leo M. Loughlin and Sarira D. Alexander of
`Arent Fox Kintner Plotkin & Kahn for applicant.
`
`Caroline E. Wood, Trademark Examining Attorney, Law Office
`110 (Chris A.F. Pedersen, Managing Attorney).
`_______
`
`Before Simms, Quinn and Drost, Administrative Trademark
`Judges.
`
`Opinion by Quinn, Administrative Trademark Judge:
`
`
`
`Council on Professional Standards for Kinesiotherapy
`
`filed an application to register the certification mark
`
`REGISTERED KINESIOTHERAPIST R.K.T. for “medical services,
`
`namely, the treatment of the effects of disease, injury and
`
`congenital disorders through the use of therapeutic
`
`exercise and education.”1 The application indicates that
`
`
`1 Application Serial No. 75/300,422, filed May 30, 1997, alleging
`first use anywhere on August 17, 1987, and first use in commerce
`on May 23, 1998.
`
`

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`Ser No. 75/300,422
`
`“[t]he Certifier has adopted and is exercising legitimate
`
`control over the use of the certification mark in
`
`commerce.” The application also includes the following
`
`statement: “The certification mark, as used by authorized
`
`persons, certifies that such persons meet the standards and
`
`tests of competency and skill and knowledge in the field of
`
`the treatment of disease, injury and congenital disorders
`
`as established by the certifier.” Applicant claims that
`
`the words “Registered Kinesiotherapist” have acquired
`
`distinctiveness under Section 2(f) of the Trademark Act.
`
`
`
`The Trademark Examining Attorney has made final the
`
`requirement to disclaim the words “Registered
`
`Kinesiotherapist” apart from the mark. The Examining
`
`Attorney maintains that the words are generic and, thus,
`
`must be disclaimed pursuant to Section 6 of the Act. The
`
`Examining Attorney further states that even if the term
`
`“REGISTERED KINESIOTHERAPIST” in the proposed mark is found
`
`to be not generic, it is highly descriptive, and the
`
`evidence of acquired distinctiveness is insufficient to
`
`allow registration without a disclaimer.
`
`
`
`When the requirement was made final, applicant
`
`appealed. Applicant and the Examining Attorney have filed
`
`briefs, and an oral hearing was held before this panel.
`
`2
`
`

`
`Ser No. 75/300,422
`
`
`
`The Examining Attorney maintains that the term
`
`“kinesiotherapist” is generic, and that the term
`
`“registered kinesiotherapist” is the name of a category of
`
`medical professionals, namely kinesiotherapists who have
`
`met applicant’s standards and, thus, who are registered in
`
`a roster maintained by applicant. The Examining Attorney
`
`is not persuaded by the existence of third-party
`
`registrations of marks that applicant argues are similar to
`
`its own. According to the Examining Attorney, the term is
`
`generic and must be disclaimed apart from the mark. In
`
`support of the refusal, the Examining Attorney has relied
`
`upon the following evidence: a dictionary definition of
`
`the term “registered”; excerpts retrieved from the Internet
`
`showing uses of the term “kinesiotherapist”; and NEXIS
`
`excerpts showing uses of the term “registered
`
`kinesiotherapist.”
`
`
`
`Applicant argues that the term REGISTERED
`
`KINESIOTHERAPIST is not generic, and that the record
`
`establishes that the term has acquired distinctiveness as
`
`used in connection with applicant’s certified medical
`
`services. Applicant contends that the Office has not met
`
`its burden of proving genericness with clear and convincing
`
`evidence, and that any doubt on this matter must be
`
`resolved in applicant’s favor. In support of its
`
`3
`
`

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`Ser No. 75/300,422
`
`contentions, applicant submitted the following:
`
`declarations (and related exhibits) of applicant’s
`
`employees, namely, Jerry W. Purvis, coordinator, Martha
`
`Mincey, a director of continuing competency, Doris A.
`
`Woods, director, registration board, and Bridget Collins, a
`
`director of continuing competency; a blank application to
`
`apply for registration on applicant’s roster; form
`
`declarations of over ninety individuals, most (if not all)
`
`of whom are listed in applicant’s roster and authorized to
`
`use “REGISTERED KINESIOTHERAPIST”; a copy of a final
`
`judgment in a civil action (not involving applicant or its
`
`mark); and copies of third-party registrations.
`
`The Record
`
`
`
`We first turn to take a closer look at the evidentiary
`
`record. The website of the American Kinesiotherapy
`
`Association indicates that applicant is “an organization
`
`whose function is to insure that kinesiotherapy
`
`practitioners meet the standards for education,
`
`credentialing, and professional competence, which
`
`[applicant] has established.” The record includes a
`
`dictionary definition of the term “registered” which means,
`
`in pertinent part, “to enter in an official register; to
`
`enroll officially or formally, especially in order to vote
`
`or attend classes; to place or cause placement of one’s
`
`4
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`

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`Ser No. 75/300,422
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`name in a register.” The American Heritage Dictionary of
`
`the English Language (3rd ed. 1992). In addition, there are
`
`articles retrieved from the Internet and the NEXIS database
`
`showing generic uses of the term “kinesiotherapist” as the
`
`name of a specific occupation in the health care field.
`
`This evidence shows that a “kinesiotherapist” is a health
`
`care professional who, under the direction of a physician,
`
`treats the effects of disease, injury and congenital
`
`disorders, through the use of therapeutic exercise and
`
`education.2
`
`
`
`The record also includes NEXIS articles showing what
`
`the Examining Attorney views as generic uses of the term
`
`“registered kinesiotherapist.” Examples include the
`
`following:
`
`Meyer has 20 years of experience as a
`registered kinesiotherapist...
`(The Union Leader, August 30, 1999)
`
`Brown, a four-year letterman on the
`golf team, is a registered
`kinesiotherapist.
`(The Advocate, April 28, 1996)
`
`Denver Broncos linebacker Robert
`Felton, a registered
`kinesiotherapist...
`(Los Angeles Times, November 20, 1992)
`
`
`2 The job and career information found at www.humankinetics.com
`indicates that the “kinesiotherapy profession is not recognized
`by the American Medical Association,” and that “kinesiotherapists
`do not enjoy the same respect or status given to physical
`therapists.”
`
`5
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`

`
`Ser No. 75/300,422
`
`
`
`In response to the just-cited NEXIS articles,
`
`applicant submitted the declarations of Bridget Collins and
`
`Martha Mincey, applicant’s directors of continuing
`
`competency. The declarants state that each of the
`
`individuals named in the articles is a “Registered
`
`Kinesiotherapist” who has met applicant’s qualifications
`
`and is authorized by applicant to identify himself/herself
`
`as a “Registered Kinesiotherapist.”
`
`
`
`Also introduced by applicant is the declaration of
`
`Doris Woods, applicant’s director of its registration
`
`board. Ms. Woods states that the mark has been in
`
`substantially exclusive and continuous use since 1987, and
`
`has been so used in interstate commerce at least as early
`
`as January 1993.3 Ms. Woods goes on to assert that hundreds
`
`of individuals have met standards set by applicant and that
`
`such persons are authorized to use the mark; that applicant
`
`is the only organization in the country that can issue such
`
`certifications; that for about eight years, the mark has
`
`been used on over 10,000 mailings per year to those in the
`
`health care field; that to remain eligible to use the mark,
`
`a “Registered Kinesiotherapist R.K.T.” must receive
`
`continuing education credits each year; and that the mark
`
`
`3 Applicant earlier submitted the Section 2(f) declaration of its
`coordinator, Jerry Purvis.
`
`6
`
`

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`Ser No. 75/300,422
`
`sought to be registered has become highly distinctive and
`
`well known to the trade and the relevant public. The
`
`declaration is accompanied by a patch worn by, and a
`
`certificate that may be displayed by, persons who have been
`
`certified by applicant and who are authorized to use the
`
`mark. The certificate indicates that the recipient “having
`
`submitted satisfactory evidence of completion of the
`
`qualifications as determined by this Board [The American
`
`Board for Registration of Kinesiotherapists] and the
`
`Council of Professional Standards for Kinesiotherapy is
`
`hereby awarded this Certificate in Kinesiotherapy and is
`
`entitled to be listed in the Official Roster of Registered
`
`Kinesiotherapists maintained by the Council and is entitled
`
`to use the certification mark Registered Kinesiotherapist
`
`R.K.T.”
`
`
`
`Applicant also submitted a final judgment in a civil
`
`action wherein, inter alia, the court found the third-party
`
`certification marks OCCUPATIONAL THERAPIST REGISTERED OTR
`
`and OCCUPATIONAL THERAPY ASSISTANT to be valid and
`
`enforceable, and not generic.4 Also of record are copies of
`
`twelve third-party registrations of marks which, according
`
`
`4 National Board for Certification in Occupational Therapy, Inc.
`v. American Occupational Therapy Association, in the United
`States District Court for the District of Maryland, Southern
`Division, Civ. No. AMD 97-767 (dated March 25, 1999).
`
`7
`
`

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`Ser No. 75/300,422
`
`to applicant, are similar to its mark, thereby
`
`demonstrating that applicant’s mark should join them on the
`
`register.
`
`
`
`Finally, the record includes form declarations of 93
`
`individuals, all of whom appear to be kinesiotherapists,
`
`and many, if not all, of whom have completed the
`
`qualifications determined by applicant so as to be listed
`
`in applicant’s “Official Roster of Registered
`
`Kinesiotherapists.” Each declarant states that he/she is
`
`engaged in the health care field as a health care
`
`professional, and is employed as such. Each declarant goes
`
`on to state the following:
`
`I am familiar with the certification
`mark REGISTERED KINESIOTHERAPIST R.K.T.
`and the treatment and therapy services
`offered by those individuals who have
`met the standards prescribed for the
`use of this mark.
`
` recognize that only persons who have
`met the standards and tests of skill
`and competency established by
`[applicant] are permitted to use the
`mark REGISTERED KINESIOTHERAPIST, alone
`or in combination with the letters
`“RKT.”
`
`The mark REGISTERED KINESIOTHERAPIST
`R.K.T. has been used for many years and
`has become well known as a distinctive
`certification mark among members of the
`health care industry and their
`prospective patients or customers.
`
`
` I
`
`8
`
`

`
`Ser No. 75/300,422
`
`I am aware that [applicant] has engaged
`in significant advertising and
`promotional efforts to publicize the
`certification mark REGISTERED
`KINESIOTHERAPIST R.K.T.
`
`Through those advertising and
`promotional efforts, the mark has
`become recognized in the health care
`industry as a means of signifying that
`individuals providing services under
`the mark have met the standards of
`skill and competency established by
`[applicant].
`
`
`
`The Law
`
`Certification marks are subject to the statutory bars
`
`to registration under Section 2 of the Trademark Act.
`
`There is no special exemption from the proscription of
`
`Section 2(e)(1) of the Act and, thus, a certification mark
`
`cannot be registered if it is generic or merely descriptive
`
`of the services it certifies. See: In re National
`
`Association of Legal Secretaries (International), 221 USPQ
`
`50 (TTAB 1983); and In re Professional Photographers of
`
`Ohio, Inc., 149 USPQ 857 (TTAB 1966). See generally: J.
`
`McCarthy, McCarthy on Trademarks and Unfair Competition,
`
`§19:95 (4th ed. 2001).
`
`We turn first to the issues of whether the term
`
`REGISTERED KINESIOTHERAPIST is generic, or whether it is
`
`just merely descriptive, when used in connection with the
`
`medical services rendered under the certification mark
`
`9
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`

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`Ser No. 75/300,422
`
`sought to be registered. A mark is merely descriptive if,
`
`as used in connection with the goods and/or services, it
`
`describes, i.e., immediately conveys information about, an
`
`ingredient, quality, characteristic, feature, etc. thereof,
`
`or if it directly conveys information regarding the nature,
`
`function, purpose, or use of the goods and/or services.
`
`See: In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
`
`215 (CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757
`
`(TTAB 1992); and In re American Screen Process Equipment
`
`Co., 175 USPQ 561 (TTAB 1972). The issue is not determined
`
`in a vacuum, but rather the mere descriptiveness of the
`
`mark is analyzed as the mark is used in connection with the
`
`goods and/or services.
`
`A mark is a generic name if it refers to the class or
`
`category of goods and/or services on or in connection with
`
`which it is used. In re Dial-A-Mattress Operating Corp.,
`
`240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H.
`
`Marvin Ginn Corp. v. International Association of Fire
`
`Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
`
`The test for determining whether a mark is generic is its
`
`primary significance to the relevant public. Section 14(3)
`
`of the Act; In re American Fertility Society, 188 F.3d
`
`1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v.
`
`RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991);
`
`10
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`Ser No. 75/300,422
`
`and H. Marvin Ginn Corp. v. International Association of
`
`Fire Chiefs, Inc., supra. The United States Patent and
`
`Trademark Office has the burden of establishing by clear
`
`evidence that a mark is generic and thus unregistrable. In
`
`re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
`
`1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
`
`relevant public’s understanding of a term may be obtained
`
`from any competent source, including testimony, surveys,
`
`dictionaries, trade journals, newspapers, and other
`
`publications. In re Northland Aluminum Products, Inc., 777
`
`F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
`
`Genericness
`
`
`
`There is no dispute about the genericness of the term
`
`“kinesiotherapist.” The evidence clearly and convincingly
`
`establishes that the term names a specific type of health
`
`care professional and that the term is recognized and
`
`understood as such. And, at the oral hearing, applicant
`
`even offered to disclaim the term “kinesiotherapist” if
`
`that would advance the application toward registration.
`
`
`
`With respect to genericness in this case, however, we
`
`must decide whether the term “REGISTERED KINESIOTHERAPIST”
`
`as a whole is generic. See: Estate of P.D. Beckwith, Inc.
`
`v. Comm’r of Patents, 252 U.S. 538, 545-46 (1920). We find
`
`that the term “REGISTERED KINESIOTHERAPISY” as a whole is
`
`11
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`Ser No. 75/300,422
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`generic for the certified medical services rendered by
`
`applicant. Simply put, there is no better way than
`
`“REGISTERED KINESIOTHERAPIST” to name applicant’s services
`
`which essentially provide a certification program for
`
`kinesiotherapists. Applicant maintains that there are
`
`other ways of identifying such services, by using the terms
`
`“certified,” “professional,” or “board certified.”
`
`However, when “registered” is combined with the term
`
`“kinesiotherapist,” the combined term “registered
`
`kinesiotherapist” would appear to be as generic as
`
`applicant’s examples. See: In re Sun Oil Co., 426 F.2d
`
`401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring)
`
`[“All of the generic names for a product belong in the
`
`public domain.”](emphasis in original). Our view is that
`
`the term “REGISTERED KINESIOTHERAPIST” will be viewed in
`
`the same way as “registered nurse,” which is a generic name
`
`for a specific medical professional.5
`
`
`
`The designation “REGISTERED KINESIOTHERAPIST” as a
`
`whole is no less generic than its constituents, that is to
`
`say, the combination of the generic terms “registered” and
`
`
`5 We take judicial notice of the dictionary definition of
`“registered nurse”: “n. a graduate trained nurse who has been
`licensed by a state authority (as a board of nursing examiners)
`after successfully passing examinations for registration.”
`Webster’s Third New International Dictionary (unabridged ed.
`1993).
`
`12
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`

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`Ser No. 75/300,422
`
`“kinesiotherapist” does not mean something distinct from
`
`the combined meanings of the individual terms. See: In re
`
`Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
`
`1987). Our view is supported by the NEXIS evidence showing
`
`that the authors of the articles perceived the combined
`
`term “registered kinesiotherapist” as a generic term. The
`
`articles show evidence of the public’s understanding of the
`
`combined term inasmuch as the term is used as a generic
`
`noun in small letters to identify a specific job title in
`
`the medical profession. See: In re American Fertility
`
`Society, supra at 1836. Even though the articles may
`
`identify only individuals who are listed on applicant’s
`
`roster, readers of the articles would perceive the uses of
`
`“registered kinesiotherapist” as a generic term. As such,
`
`the term is generic. See: In re Mortgage Bankers
`
`Association of America, 226 USPQ 954 (TTAB 1985) [CERTIFIED
`
`MORTGAGE BANKER is incapable of identifying source of
`
`services which essentially are the providing of a
`
`certification program for mortgage bankers]; American
`
`Speech-Language-Hearing Association v. National Hearing Aid
`
`Society, 224 USPQ 798 (TTAB 1984) [“Certified Audiologist”
`
`is incapable of distinguishing audiologists certified by an
`
`entity from audiologists that may be certified by other
`
`organizations or associations even if the entity is the
`
`13
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`Ser No. 75/300,422
`
`only such organization maintaining an ongoing certification
`
`program]; In re National Association of Legal Secretaries
`
`(International), supra [PROFESSIONAL LEGAL SECRETARY is
`
`incapable of exclusive appropriation, but rather should, in
`
`fairness, remain in the public domain]; and In re
`
`Professional Photographers of Ohio, Inc., supra [“Certified
`
`Professional Photographer” is not registrable as a
`
`certification mark because it is merely a title bestowed on
`
`an individual rather than a mark used in the sale or
`
`advertising of photography services rendered by that
`
`person].
`
`
`
`In making our determination, we have considered the
`
`relevant public to be both medical professionals (e.g.,
`
`kinesiotherapists) and the general public. Although
`
`applicant would have us conclude that the relevant public
`
`comprise the medical professionals only, we find that the
`
`relevant public is broader, and would include patients
`
`seeking the care of a kinesiotherapist who has met certain
`
`standards. In view of applicant’s position on this point,
`
`it has not introduced any evidence bearing on how the
`
`general public, who might avail themselves of medical
`
`services offered by a kinesiotherapist listed in
`
`applicant’s roster, perceive the term “registered
`
`kinesiotherapist.”
`
`14
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`

`
`Ser No. 75/300,422
`
`
`
`We have carefully reviewed the NEXIS articles relied
`
`upon by the Examining Attorney, together with applicant’s
`
`declarations in response thereto. The NEXIS articles show
`
`uses by others of the term “registered kinesiotherapist” in
`
`a generic manner. By referring to the name of a specific
`
`medical professional in small letters, the authors use
`
`“registered kinesiotherapist” as a generic noun. We note
`
`that the authors use the term “registered kinesiotherapist”
`
`per se, with no reference to “R.K.T.” or to the entire
`
`designation “REGISTERED KINESIOTHERAPIST R.K.T.”
`
`
`
`We also have considered the declarations from the
`
`health care professionals. The declarations refer to the
`
`distinctiveness of the designation “REGISTERED
`
`KINESIOTHERAPIST R.K.T.” as a whole. It may well be that
`
`the letter portion of the designation, that is, “R.K.T.”,
`
`is the part that lends any distinctiveness to the mark as a
`
`whole. Although the individuals state that only persons
`
`who have met the standards and tests of skill and
`
`competency established by applicant are permitted to use
`
`“Registered Kinesiotherapist,” no statement is made
`
`regarding distinctiveness of this term per se.
`
`
`
`Although we have considered the third-party
`
`registrations, they do not compel a different result
`
`herein. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
`
`15
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`
`Ser No. 75/300,422
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`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.”]. Our view is the same with respect to the court
`
`judgment regarding the validity of two marks, both of which
`
`are included in the third-party registrations. While
`
`uniform treatment under the Trademark Act is an
`
`administrative goal, our task in this appeal is to
`
`determine, based on the record before us, whether
`
`applicant’s particular mark sought to be registered here is
`
`generic. As is often stated, each case must be decided on
`
`its own merits. See, e.g.: In re Best Software Inc., 58
`
`USPQ2d 1314 (TTAB 2001).
`
`
`
`In sum, the designation “registered kinesiotherapist”
`
`is a combination of commonly understood terms that is
`
`generic when considered as a whole. The designation
`
`“registered kinesiotherapist” should not be subject to
`
`exclusive appropriation, but rather should remain free for
`
`others in the kinesiotherapy profession to use in
`
`connection with their health care services. In re Boston
`
`Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
`
`1999). Competition certainly would be hindered at the
`
`point when others in the field would begin to certify
`
`16
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`Ser No. 75/300,422
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`kinesiotherapists. In re Tekdyne Inc., 33 USPQ2d 1949,
`
`1953 (TTAB 1994). Accordingly, the term “Registered
`
`Kinesiotherapist” must be disclaimed apart from the mark.
`
`Mere Descriptiveness
`
`
`
`This point is not disputed by applicant. Indeed,
`
`applicant’s reliance on Section 2(f) with respect to
`
`“REGISTERED KINESIOTHERAPIST” acts as a concession that the
`
`term is, at the very least, merely descriptive. Yamaha
`
`International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
`
`1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); and In re Cabot
`
`Corp., 15 USPQ2d 1224, 1229 (TTAB 1990).
`
`
`
`Even if we had not found REGISTERED KINESIOTHERAPIST
`
`to be generic, and even in the absence of a claim under
`
`Section 2(f), we nevertheless would find it to be merely
`
`descriptive. The term immediately conveys the impression
`
`that applicant’s certification of medical services involves
`
`the registration of kinesiotherapists who meet certain
`
`certification qualifications set by applicant. In re
`
`Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It
`
`is clear that the term “Registered Kinesiotherapist” has a
`
`specific and readily recognized meaning when it is used in
`
`connection with applicant’s services.
`
`17
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`Ser No. 75/300,422
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`Acquired Distinctiveness
`
`In finding that the term REGISTERED KINESIOTHERAPIST
`
`is incapable of being a source identifier for applicant’s
`
`certification services, we have considered, of course, all
`
`of the evidence touching on the relevant public’s
`
`perception of the term, including the evidence of acquired
`
`distinctiveness. As to acquired distinctiveness, applicant
`
`has the burden to establish a prima facie case of acquired
`
`distinctiveness. Yamaha International Corp. v. Hoshino
`
`Gakki Co., Ltd., supra at 1006.
`
`
`
`As indicated above, applicant submitted the
`
`declarations of 93 individuals who are health care
`
`professionals, many, if not all, of whom are listed on
`
`applicant’s “Official Roster of Registered
`
`Kinesiotherapists.” Although we have considered the
`
`declarations, they hardly are the most impressive type of
`
`evidence in this situation. Most of the declarants appear
`
`to have met applicant’s qualifications, passed applicant’s
`
`test and received a certificate stating same. At the very
`
`least, these are persons who know the source of the
`
`certification services. See: In re Edward Ski Products
`
`Inc., 49 USPQ2d 2001, 2005 (TTAB 1999). Given the
`
`individuals’ relationship with applicant, their
`
`declarations play only a minor role in determining public
`
`18
`
`

`
`Ser No. 75/300,422
`
`perception of the mark. More telling is the absence of
`
`declarations or any other direct evidence from applicant
`
`bearing on the perception of the general public, that is,
`
`patients who will be the recipients of the medical services
`
`certified under the mark, or even other medical
`
`professionals who might recommend a kinesiotherapist. What
`
`we do have is the NEXIS evidence introduced by the
`
`Examining Attorney that indicates that the public would
`
`view the term “registered kinesiotherapist” as generic,
`
`just as in the case of “registered nurse.”
`
`
`
`The evidence suggests that applicant has enjoyed a
`
`degree of success, with many individuals being certified
`
`under its auspices. Nonetheless, we have no idea about
`
`either the revenues generated under the mark or the
`
`expenditures made in promoting the mark. The issue here is
`
`the achievement of distinctiveness, and the evidence falls
`
`far short of establishing this. In re Bongrain
`
`International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed.
`
`Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d 1275
`
`(TTAB 1997). To be clear on this significant point, other
`
`than the not surprising recognition by individuals who have
`
`passed applicant’s exam, we have no evidence that patients
`
`and others who avail themselves of medical services
`
`rendered by a “registered kinesiotherapist” recognize the
`
`19
`
`

`
`Ser No. 75/300,422
`
`term as a distinctive term for applicant’s services offered
`
`under the mark REGISTERED KINESIOTHERAPIST R.K.T.
`
`
`
`Accordingly, even if the term REGISTERED
`
`KINESIOTHERAPIST were found to be not generic, but merely
`
`descriptive, given the highly descriptive nature of the
`
`term, we would need to see a great deal more evidence than
`
`what applicant has submitted in order to find that the term
`
`has become distinctive of applicant’s certification
`
`services. That is to say, the greater the degree of
`
`descriptiveness, the greater the evidentiary burden on the
`
`user to establish acquired distinctiveness. Yamaha Int’l.
`
`Corp. v. Hoshino Gakki Co., supra; and In re Merrill Lynch,
`
`Pierce, Fenner & Smith, Inc., supra.
`
`
`
`Due to the generic nature of the term “registered
`
`kinesiotherapist,” the mark REGISTERED KINESIOTHERAPIST may
`
`not be registered in the absence of a disclaimer of the
`
`term.
`
`
`
`Decision: The refusal to register is affirmed in the
`
`absence of a disclaimer of the generic term “REGISTERED
`
`KINESIOTHERAPIST.” Applicant is allowed thirty days from
`
`the date of this decision to submit a disclaimer of
`
`“REGISTERED KINESIOTHERAPIST” apart from the mark.
`
`Trademark Rule 2.142(g).
`
`20

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