Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA110718
`ESTTA Tracking number:
`11/20/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`78349181
`Active Ankle Systems, Inc.
`DORSAL NIGHT SPLINT
`SCOT A. DUVALL
`MIDDLETON REUTLINGER
`2500 BROWN & WILLIAMSON TOWER
`LOUISVILLE, KY 40202
`UNITED STATES
`sduvall@middreut.com
`Reply Brief
`Reply Brief FINAL 112006.pdf ( 22 pages )(71837 bytes )
`Exhibit 1.pdf ( 2 pages )(85349 bytes )
`Exhibit 2.pdf ( 3 pages )(89515 bytes )
`Exhibit 3.pdf ( 2 pages )(269065 bytes )
`Exhibit 4.pdf ( 3 pages )(306625 bytes )
`Exhibit 5.pdf ( 5 pages )(120085 bytes )
`Exhibit 6.pdf ( 4 pages )(116979 bytes )
`Exhibit 7.pdf ( 2 pages )(128713 bytes )
`Exhibit 8.pdf ( 1 page )(47746 bytes )
`Exhibit 9.pdf ( 5 pages )(99725 bytes )
`Exhibit 10.pdf ( 6 pages )(39646 bytes )
`Exhibit 11.pdf ( 6 pages )(403912 bytes )
`Scot A. Duvall
`sduvall@middreut.com
`/Scot A. Duvall/
`11/20/2006
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant: Active Ankle Systems, Inc.
`
`Mark:
`
`DORSAL NIGHT SPLINT
`
`Serial No.: 78/349,181
`
`Filed:
`
`01/08/2004
`
`Trademark Examining Attorney:
`Lana H. Pham
`
`Trademark Law Office 115
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`ON APPEAL
`
`APPLICANT’S REPLY BRIEF ON APPEAL
`
`Respectfully submitted,
`
`/Scot A. DuVall/
`
`Scot A. Duvall
`l\/IIDDLETON REUTLINGER
`
`2500 Brown & Williamson Tower
`
`Louisville, Kentucky 40202- 3410
`Direct:
`(502) 625-2784
`
`(502) 584- 1135
`Firm:
`Facsimile: (502) 561-0442
`COUNSEL FOR APPLICANT,
`
`ACTIVE ANKLE SYSTEMS, INC.
`
`Filed: November 20, 2006
`
`

`
`TABLE OF CONTENTS
`
`INDEX OF CITED CASES............................................................................................................... .. 2
`
`INTRODUCTION............................................................................................................................ .. 3
`
`SUMMARY OF REMAINING ISSUES PRESENTED ...................................................................... .. 4
`
`ARGUMENT ................................................................................................................................... .. 5
`
`I.
`
`THE EXAMINING ATTORNEY HAS CONCEDED SIGNIFICANT ISSUES ................. .. 5
`
`A. American Fertilizy Is Now Viewed As Applicable Precedent ..................................... .. 5
`
`B.
`
`The “Apt or Highly Descriptive” Refusal Is Now (Implicitly) Withdrawn .................. .. 5
`
`C. Applicant’s Characterization Of the Product Genus Is Stipulated As Correct .............. .. 6
`
`II.
`
`THE EXAMINING ATTORNEY’S FINDING OF GENERICNESS, TO THE
`EXTENT BASED ON FINDING SINGLE TERMS (OR COMBINATIONS
`OF SINGLE TERMS) GENERIC, IS LEGALLY INSUFFICIENT ................................... .. 7
`
`A. Gould Does Not Apply To MultiWord
`Phrase Marks Such As DORSAL NIGHT SPLINT ................................................... .. 7
`
`B.
`
`The Board Should Convene An Augmented Panel And Overrule Its Decision In
`Leatherman Tool Group, In Light Of American Fertility ........................................... .. 8
`
`C. DORSAL NIGHT SPLINT Is Not Made Generic Merely By The Inclusion
`Of The Merely Descriptive Term DORSAL ............................................................ .. .9
`
`III.
`
`THE EXAMINING ATTORNEY IMPROPERLY CHARACTERIZES
`APPLICANT’S MARK AS DENOTING A GENERIC SUBSET OF
`“NIGHT SPLINTS” OR “D ORSAL SPLINTS” ............................................................. .. 11
`
`IV.
`
`APPLICANT’S MARK IS NOT GENERIC UNDER THE MARVIN GINN TEST............ .. 12
`
`A.
`
`B.
`
`C.
`
`The Examining Attorney Has Changed Course (Again)
`On The Product Genus, Agreeing With Applicant’s View ....................................... .. 12
`
`The Examining Attorney Has Changed Course (Again)
`On The “Relevant Public” ..................................................................................... .. 13
`
`The Correct “Relevant Public” Is Comprised Of Physicians, Not The
`General Public ...................................................................................................... .. 14
`
`D. Applicant Is Entitled To All Doubt On The Issue Of Genericness ........................... .. 14
`
`E.
`
`The Evidence Relied Upon By The Examining Attorney
`When Viewed In Context, Does Not Establish Genericness ..................................... .. 15
`
`CONCLUSION ............................................................................................................................ .. 20
`
`

`
`INDEX OF CITED CASES
`
`A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 U.S.P.Q.2d 1364 (3rd Cir. 1986)
`
`.................. ..
`
`11,12
`
`In re American Fertility Society, 188 F.3d 1341, 51 U.S.P.Q.2d 1832
`(Fed. Cir. 1999) .............................................................................................................. .. passim
`
`In re First Union National Bank, 223 U.S.P.Q. 278 (T.T.A.B. 1984) ........................................ ..
`
`19
`
`In re Gould Paper Corp., 834 F.2d 1017, 5 U.S.P.Q.2d 1110 (Fed. Cir. 1987) .......................... .. passim
`
`In re K—T Zoe Furniture Inc., 16 F.3d 390, 29 U.S.P.Q.2d 1787 (Fed. Cir. 1994) ...................... ..
`
`11
`
`In re Ieatherman Tool Group Inc., 32 U.S.P.Q.2d 1443 (T.T.A.B. 1994) ................................. .. passim
`
`Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 228 U.S.P.Q. 528
`(Fed. Cir. 1986) .............................................................................................................. .. passim
`
`In re Miller Brewing Company, 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977),
`cert. denied, 434 U.S. 1025 (1978) .................................................................................. ..
`
`In re Reckitt & Colman, North America Inc., 18 U.S.P.Q.2d 1389 (T.T.A.B. 1991) .................. ..
`
`Warner Hudnut, Inc. v. Wander Co., 280 F.2d 435, 126 U.S.P.Q. 411 (C.C.P.A. 1960) ............. ..
`
`In re Wavery Inc., 27 U.S.P.Q.2d 1620 (T.T.A.B. 1993) .......................................................... ..
`
`10
`
`10
`
`15
`
`14
`
`

`
`Applicant Active Ankle Systems, Inc., by counsel, submits this Reply Brief on appeal from the
`
`Examining Attomey’s final refusal to register Applicant’s mark on the Supplemental Register pursuant to
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`Section 23 of the Lanham Act (issued in the Office Action dated 11/02/2005), and from the Examining
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`Attomey’s denial of Applicant’s May 2, 2006 Request for Reconsideration (issued in the Office Action
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`dated June 2, 2006).
`
`INTRODUCTION
`
`The Board is presented with a valuable opportunity to clarify the law of genericness in a manner
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`beneficial to applicants, trademark professionals, and the Trademark Office. This appeal, as with the
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`prosecution of the application leading up to it, has been fraught with a great deal of inefficiency resulting
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`from the Office’s failure to take clear and consistent positions on the issues of law and fact presented in
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`this case. At virtually every step along the way, the Office has engaged in an impermissible process of
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`burden shifting, by failing to take positions on matters relating to the issue of genericness, on which the
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`burden of proof lies with the Office. Such an approach not only fails to honor this Board’s clearly—stated
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`procedural approach in assessing cases of alleged genericness, it is a disservice to applicants who seek to
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`protect their marks through registration
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`The brevity of the Examining Attomey’s appeal brief belies the tortuous prosecution suffered by
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`Applicant in this case, which became unnecessarily complicated due to the panoply of grounds asserted in
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`support of refusal. Applicant submitted a detailed 24—page Main Brief on Appeal, setting forth the issues
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`on appeal and addressing the various flawed grounds of refusal In stark contrast, the Examining
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`Attomey’s Gpage Appeal Brief fails to dispute (much less acknowledge) many of Applicant’s arguments
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`traversing the refusal The Board should find that the Office has effectively conceded some grounds of
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`the final refusal and that only a few disputed grounds of refusal remain for resolution by the Board
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`Furthermore, it is inappropriate for the Examining Attorney, at the eleventh hour on appeal, to
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`reveal the Office’s position regarding significant legal issues in this case. This case signah an opportune
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`time for the Board to restate its expectations as to how refusals on grounds of genericness must be
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`

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`addressed by the Trademark Office in a manner that not only comports with and adheres to existing law,
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`but also increases the efficiency of the Office and applicants in prosecution of trademark applications.
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`SUMMARY OF REMAINING ISSUES PRESENTED
`
`Applicant’s Main Brief explained that this appeal turns upon two main issues of law. The first is
`
`whether the Federal Circuit’s decision in In re American Fertility Society, 188 F.3d 1341, 51 U.S.P.Q.2d
`
`1832 (Fed. Cir. 1999) can apply to marks sought to be registered for goods. The Examining Attorney has
`
`failed to address this issue on appeal and, as discussed below, has actually adopted Applicant’s position.
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`The issue is thus conceded. The Board should note this issue and clarify the law for future cases.
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`The second issue of law is whether the American Fertility test is the exclusive genericness test for
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`multi—word marks. The Examining Attorney has failed even to discuss Applicant’s assessment of the
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`governing case law. Rather than rebutting Applicant’s position, the Examining Attorney now argues that
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`DORSAL NIGHT SPLINT is generic regardless whether American Fertility or In re Gould Paper Corp.,
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`834 F.2d 1017, 5 U.S.P.Q.2d 1110 (Fed. Cir. 1987), is the correct analysis. Gould has no vitality in cases
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`such as this one involving multi—word marks, and Applicant’s mark is not generic under American
`
`Fertility. In light of the Examining Attomey’s continued reliance upon In re leatherman Tool Group
`
`Inc., 32 U.S.P.Q.2d 1443 (T.T.A.B. 1994), which relied upon Gould for analysis of a similar mark, the
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`Board should overrule Leatherman Tool, as it has no vitality whatsoever in light of the Federal Circuit’s
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`express limitation of Gould.
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`In issuing the final refusal, the Examining Attorney posited two alternative grounds for finding
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`Applicant’s mark generic. The first such basis is that Applicant’s mark is an “apt name” or “so highly
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`descriptive” as to be incapable of exclusive appropriation as a trademark. This basis, having not been
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`addressed by the Examining Attorney on appeal, is now conceded. The Board should clarify that this
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`concept is no longer valid, as it reflects outdated legal principles that have long since been discredited by
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`the Federal Circuit and the Trademark Office itself. The second basis posited by the Examining Attorney
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`was that Applicant’s mark is in the nature of a “generic adjective” and therefore unregistrable. Having
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`abandoned this theory in name only, the Examining Attorney now cites only to a non—binding Seventh
`
`-4-
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`

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`Circuit case and the TMEP which (as discussed at length in Applicant’s Main Brief) is mistaken in its
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`characterization of the Board case mentioned therein.
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`Finally, the Examining Attorney argues, for the first time on appeal, that Applicant’s mark
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`denotes its own subset of the product genus. This legal theory is on shaky ground at best, given that the
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`Third Circuit case relied upon is not cited in the TMEP, and given that neither the Board nor the Federal
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`Circuit has adopted such an approach Moreover, the evidence of record belies such characterization of
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`Applicant’s mark DORSAL NIGHT SPLINT.
`
`ARGUMENT
`
`I.
`
`THE EXAMINING ATTORNEY HAS CONCEDED SIGNIFICANT ISSUES
`
`A.
`
`American Fertility Is Now Viewed As Applicable Precedent
`
`The Examining Attomey’s Appeal Brief confirms (as noted in Applicant’s Main Brief on appeal),
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`that the positions taken by the Trademark Office have been a moving target throughout the course of
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`prosecution. For example, the Examining Attorney has reversed course on appeal from her long—held
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`position throughout prosecution that the Federal Circuit’s decision in In re American Fertility Society,
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`188 F.3d 1341, 51 U.S.P.Q.2d 1832 (Fed. Cir. 1999) cannot apply to the present case on the ground that
`
`Applicant’s mark is for goods and not services. See Appeal Brief at 5 (unnumbered) (“the phrase ‘dorsal
`
`night splint’
`
`is generic for Applicant’s goods. See In re American Fertility Society .
`
`. .”). Clearly,
`
`American Fertility is applicable to this case and the Examining Attorney has effectively conceded the
`
`issue.
`
`B.
`
`The “Apt or Highly Descriptive” Refusal Is Now (Implicitly) Withdrawn
`
`Applicant traversed the Examining Attomey’s argument that DORSAL NIGHT SPLINT is “apt”
`
`or “highly descriptive” (and therefore unregistrable), as a discarded legal standard of no applicability in
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`this case. The Examining Attorney has declined even to address this argument. Accordingly, the Board
`
`should consider the issue conceded by the Office. To remove all doubt for future genericness cases, the
`
`Board should confirm that those dual grounds are no longer legally sufficient to show genericness, in light
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`

`
`of recent decisions of the Board and of the Federal Circuit (the Trademark Office’s expressed policy in
`
`the TMEP suggests as much).
`
`C.
`
`Applicant’s Characterization Of The Product Genus Is Stipulated As Correct
`
`The Examining Attomey’s position on the product genus has likewise shifted throughout
`
`prosecution. In the initial refusal on genericness, the Examining Attorney asserted that Applicant’s mark
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`DORSAL NIGHT SPLINT is “primarily used” to refer to a type of orthopedic goods. Applicant took this
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`statement as a finding that the genus is “orthopedic goods.” In response to this assertion, Applicant
`
`provided evidence, in the form of registrations, wherein the phrase “night splint” (but not “dorsal night
`
`splint”) was shown to be primarily used to refer to a type of orthopedic goods. Applicant also noted that
`
`the Examining Attomey’s own evidence established that “night splint” (and not “dorsal night splint”) is
`
`primarily used to denote an orthopedic splint for the foot or ankle. See Response to Office Action dated
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`September 14, 2005, at 4. As a result, Applicant took the position that the correct product genus was
`
`“orthopedic splints for the foot or ankle,” the goods of the application.
`
`In the final refusal, the Examining
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`Attorney changed course and asserted, without more, a different genus of goods from that asserted by
`
`Applicant: “night splint for use on the surface of the foot and ankle.” This alleged “genus” was without
`
`basis in the record, and is unsupported by the record.
`
`In the Motion for Reconsideration, Applicant suggested an accurate way to classify the goods in a
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`manner supported by the evidence of record, namely, “orthopedic splints for the foot and ankle to be worn
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`while sleeping.” See Request for Reconsideration dated May 2, 2006, at 14. In her appeal brief, see
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`Examining Attomey’s Brief at 3 (unnumbered), the Examining Attorney has changed course again, and
`
`now agrees with Applicant’s characterization of the product genus: “orthopedic splints for the foot and
`77
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`ankle to be worn while sleeping.
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`Thus, this issue is conceded by the Examining Attorney.
`
`

`
`II.
`
`THE EXAMINING ATTORNEY’S FINDING OF GENERICNESS, TO THE EXTENT
`BASED ON FINDING SINGLE TERMS (OR COMBINATIONS
`OF SINGLE TERMS) TO BE GENERIC, IS LEGALLY INSUFFICIENT.
`
`A.
`
`Gould Does Not Apply To Multi-Word Phrase Marks
`Such As DORSAL NIGHT SPLINT
`
`On appeal, the Examining Attorney has sidestepped a crucial issue of law presented in this case,
`
`by taking no position on whether the Federal Circuit’s decision in American Fertility prohibits the
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`application of In re Gould Paper Corp., 834 F.2d 1017, 5 U.S.P.Q.2d 1110 (Fed. Cir. 1987), to the facts
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`of this case.
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`In both the initial refusal and the final refusab, the Examining Attorney expressly relied
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`upon Gould, for the proposition that a mark comprising a phrase can be found generic based on an
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`assessment of the genericness of the constituent parts of the phrase. See Final Refusal at 4 (“The
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`combination of these three generic terms are such that each term retains its generic significance”).
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`Despite the clarity of the Federal Circuit’s holding in American Fertility, and the Board’s faithful
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`application of that holding in subsequent cases, the Examining Attorney now suggests that DORSAL
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`NIGHT SPLINT is generic regardless of which standard applies. See Appeal Brief at 6 (unnumbered).
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`Accordingly, the Board is called upon to consider Applicant’s argument advanced in Section I—A
`
`of the Main Brief on Appeal, namely, that the Federal Circuit’s decision in Gould is inapposite, having
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`been expressly lin1ited in American Fertility to cases involving compound word marks. The Examining
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`Attomey’s refusal even to take a position on this crucial issue in this appeal —— one n_ot involving a
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`compound word mark —— should be viewed by the Board with a skeptical eye. If Gould retains any vitality
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`for the analysis of allegedly generic multi—word phrase marks, then the Examining Attorney surely would
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`have made such arguments. The Office’s silence in this regard is telling, indeed.
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`Accordingly, the only means by which this Board could find Applicant’s mark DORSAL NIGHT
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`SPLINT to be generic is if the evidence of record clearly establishes that fact. As discussed below
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`(Section IV), the evidence does not even come close to satisfying the legal standard.
`
`

`
`B.
`
`The Board Should Convene An Augmented Panel And Overrule Its Decision In
`Leatherman Tool Group , In Light Of American Fertility
`
`The Examining Attorney dissects the mark DORSAL NIGHT SPLINT into three individual
`
`words, DORSAL, NIGHT, and SPLINT — then concludes that each term individually is generic for the
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`goods, and that the combination of those “generic terms” makes the mark generic in its entirety. See
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`Appeal Brief at 3 (unnumbered). Likewise, the Examining Attorney argues that “DORSAL SPLINT” is
`
`generic and “NIGHT SPLINT” is generic, and therefore, the hybrid of those terms “DORSAL NIGHT
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`SPLINT” must be as well, even without any need for evidence of such use. See Appeal Brief at 5
`
`(unnumbered). The Federal Circuit could not have stated more clearly inAmerz'can Fertilizy that it is
`
`impermissible to dissect words, or even portions, of the applicant’s mark, declare them to be generic, and
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`from that evidence alone, conclude that the mark as a whole is generic.
`
`The single case of the Board cited by the Examining Attorney in support of her analysis, In re
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`Leatherman Tool Group, Inc., 32 U.S.P.Q.2d 1443 (T.T.A.B. 1994) (POCKET SURVIVAL TOOL), is
`
`no longer good law. The Board should augment the panel to be assigned to this case, and should
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`expressly overrule Leatherman Tool. To do otherwise would be to perpetuate confusion as to the proper
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`standard, as it is clear that the Examining Attorney still considers Leatherman Tool good law.
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`In fact, the
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`analysis employed by the Examining Attorney herein is remarkably similar to that case.
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`In Leatherman Tool, the applicant sought registration of POCKET SURVIVAL TOOL on the
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`Principal Register pursuant to Section 2(f), alleging acquired distinctiveness. Registration was refused on
`
`grounds of genericness. However, the analysis employed by examining attorney in that case, and
`
`affirmed by the Board, was the same as that employed by the Examining Attorney herein. The examining
`
`attorney relied on Nexis excerpts which established that “pocket tool” and “survival tool” are generic
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`designations for, respectively, a compact or pocket—sized hand tool, and a specialized hand tool which
`
`combines a knife and a multiplicity of other types of blades. The Board held (emphasis added):
`
`Plainly, a compact or pocket—sized version of a survival tool is aptly named by the
`designation "pocket survival tool" and, as shown by many of the catalog advertisements
`and magazine new—product reviews made of record by applicant, such designation would
`be so perceived by the relevant public, which comprises buyers and potential purchasers
`of Swiss army knives and other small hand tools suitable for use as survival tools.
`
`-3-
`
`

`
`>l<>l<>l<
`
`The relevant public would thus readily understand that, when joined to form the phrase
`"POCKET SURVIVAL TOOL," the individual words have a meaning identical to the
`meaning which ordinm usage would ascribe to those terms in combination. There is
`nothing unique or incongruous about the combination nor would it have any meaning
`other than generically signifying a "pocket survival tool" when used in connection with a
`pocket—sized, hand—held survival implement such as applicant's compact, folding knife
`with pliers and multiple blades. "POCKET SURVIVAL TOOL" consequently serves
`only to designate the class or genus of goods to which applicant applies such designation.
`In short, the evidence of record
`is sufficient to meet the burden of proof upon the
`Patent and Trademark Office of establishing that the designation "POCKET SURVIVAL
`TOOL" is generic and thus incapable of registration. See, e.g., In re Gould Paper Corp.
`
`The Board in Leatherman Tool, expressly relying upon Gould, thus approved an analysis of
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`POCKET SURVIVAL TOOL now squarely at odds with the Federal Circuit’s holding in American
`
`Fertility and its progeny, which held that Gould cannot apply to such marks. The Board should expressly
`
`overrule leatherman Tool to the extent it permits the Gould “dissection” or “dissection / recombination”
`
`analysis in the context of multi—word marks. In the Main Brief on Appeal, Applicant provided detailed
`
`arguments demonstrating that the Gould analysis is no longer permissible in cases such as this.
`
`C.
`
`DORSAL NIGHT SPLINT Is Not Made Generic Merely By
`The Inclusion Of The Merely Descriptive Term DORSAL
`
`In light of the Federal Circuit’s holding in American Fertility, Q analysis that focuses on only
`
`one of several terms in Applicant’s mark necessarily fails, because the Examining Attorney must analyze
`
`the total mark in making a genericness determination. The Examining Attorney strains credulity by
`
`making various arguments on appeal that violate this principle. Reduced to its essentials, the Examining
`
`Attomey’s analysis is that if a term appearing within a mark is merely descriptive of the goods, and that
`
`term is combined with other terms that are generic standing alone, then the descriptive term is somehow
`
`transformed into a generic term, and the entire mark becomes generic. This analysis is no different from
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`the impermissible dissection analysis undertaken by the Examining Attorney throughout the prosecution
`
`of this case. This is clearly not the law, and the Board should take the opportunity to clarify law for the
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`Trademark Office and for applicants going forward
`
`

`
`Applicant traversed the Examining Attomey’s previously—asserted ground that the term DORSAL
`
`is a “generic adjective” that, when combined with the NIGHT SPLINT portion of Applicant’s mark,
`
`makes the entire mark generic without more. On appeal, the Examining Attorney no longer employs the
`
`term “generic adjective,” but claims that “a term need not be a noun to be generic.” See Appeal Brief at 5
`
`(unnumbered). In this regard, the Examining Attorney relies upon a single case, In re Miller Brewing
`
`Company, 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977), cert. denied, 434 U.S. 1025 (1978), and
`
`TMEP §1209.01(c)(ii).
`
`Id. Both are inapposite here.
`
`Miller Brewing is not cited in the TMEP, so it is not recognized as embodying any aspect of the
`
`Trademark Office’s policy regarding generic marks. Moreover, the Examining Attorney cites to no cases
`
`of the Board or of the Federal Circuit purporting to follow that case. Likewise, the TMEP section
`
`referenced by the Examining Attorney is a repeated reference to an inapposite case. TMEP 1209.01(c)(ii)
`
`states (emphasis added):
`
`The expression "generic name for the goods or services" is not limited
`to noun forms but also includes "generic adjectives," that is, adjectives
`that refer to a genus, species, category or class of goods or services. In re
`Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991)
`
`(PERMA PRESS generic for soil and stain removers for use on
`permanent press products).
`
`This is the very same case relied upon by the Examining Attorney in support of the “generic adjective”
`
`ground of the refusal. In the Main Brief, Applicant already explained the inapplicability of this case, a
`
`matter undisputed by the Examining Attorney.1 The Board’s decision in Reckitt did not rely on any
`
`characterization of the mark at issue (PERMA PRESS) as a “generic adjective.” Indeed, the Board
`
`expressly declined to consider the Examining Attomey’s argument “that terms which are found to be so
`
`highly descriptive as to be incapable of distinguishing applicant's goods should be held ‘generic’ even
`
`though they are not nouns but adjectives.” See Reckitt, 18 U.S.P.Q.2d at 1391 (emphasis added).
`
`The Board in In re Reckitt & Colman, North America Inc., 18 U.S.P.Q.2d 1389 (T.T.A.B. 1991),
`1
`expressly held that the term, PERMA PRESS, a shorthand reference to “permanent press,” was “a generic
`term for a particular species of goods within the genus of soil and stain removers —— namely, soil and stain
`removers for use on perma press fabrics.” Simply put, Reckitt is a traditional genericness case, and the
`Examining Attorney does not dispute this on appeal
`
`-10-
`
`

`
`The Examining Attorney further states, without case support, that “a term that serves as the
`
`common descriptor of a key ingredient, characteristic, or feature of the goods is also generic and thus
`
`incapable of distinguishing source” (emphasis added). This new argument is a throwback to the already
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`conceded claim that Applicant’s mark is “apt” or “highly descriptive.” The Federal Circuit has explained
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`that “common descriptive” is merely another reference to an “apt” term, long discarded as a ground for
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`genericness. See In re K—T Zoe Furniture Inc., 16 F.3d 390, 29 U.S.P.Q.2d 1787 (Fed. Cir. 1994).
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`Likewise, the examining attorney in Leatherman Tool 32 U.S.P.Q.2d 1443 (T.T.A.B. 1994) contended
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`that the applied—for mark was “apt or common descriptor” for the Applicant’s goods. Thus, the
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`Examining Attomey’s newly—minted argument suffers from the same problem as the “apt or highly
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`descriptive” basis that she has already conceded.
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`III.
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`THE EXAMINING ATTORNEY IMPROPERLY CHARACTERIZES APPLICANT’S MARK
`AS DENOTING A GENERIC SUBSET OF “NIGHT SPLINTS” OR “DORSAL SPLINTS”
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`It appears that the Examining Attorney has agreed with Applicant’s characterization of the
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`product genus, if for no reason other than to advance a new argument —— that Applicant’s product denotes
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`a generic “subset or recent entry” of goods in the product classes of “night splints” or “dorsal splints.” In
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`scant support for the suggestion that Applicant’s product has become its own genus, the Examining
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`Attorney relies solely on a non—binding case from the Third Circuit, A.J. Canfield Co. v. Honickman, 808
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`F.2d 291, 1 U.S.P.Q.2d 1364 (3rd Cir. 1986). The Examining Attorney cites Canfield for the following
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`proposition: “A new product that differs from an established product in some significant, functional
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`feature or characteristic may become its own genus for purposes of determining registrability.” Notably,
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`the Examining Attorney cites to no case of the Federal Circuit or of the Board that has adopted this
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`holding of Canfield . Furthermore, Canfield is not cited in the TMEP, so it is not recognized as
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`embodying any aspect of the Trademark Office’s policy regarding generic marks.
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`Even if Canfield were followed by the Board, the Examining Attomey’s argument fails due to the
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`lack of supporting evidence in the record. Initially, the Examining Attorney claims that the phrases “night
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`splint” and “dorsal splint” are each the name of a genus of goods comprising Applicant’s product. To the
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`contrary, the evidence of record demonstrates that the phrase “dorsal splint” does not exclusively denote
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`

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`goods to be worn on the foot or ankle. As Applicant explained during the course of prosecution, the
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`Examining Attomey’s evidence established that “dorsal splint” commonly refers to a splint worn on the
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`hand or finger. Thus, to the extent that the Examining Attomey’s argument is founded on
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`characterization of Applicant’s product as a type of “dorsal splint,” the argument is unsupported by the
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`evidence of record. By contrast, there is no doubt that the product genus includes “night splints” such as
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`Applicant’s product, but that is not dispositive of the issue.
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`In an attempt to fit the circumstances of this case to Canfield, the Examining Attorney argues (for
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`the first time on appeal, and without direct support), that Applicant’s product is set apart from previous
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`night splints or dorsal splints by virtue of its application to the back and upper dorsum of the foot and
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`ankle. As a result, the Examining Attorney summarily concludes that the term DORSAL is a “class-
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`defining generic term” that causes the entire mark DORSAL NIGHT SPLINT to be generic. Likewise,
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`the Examining Attorney summarily concludes that the relevant public commonly understands the phrase
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`“dorsal night splint” to be “a subset or recent entry” in “that” class of goods —— apparently meaning “night
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`splints” and “dorsal splints.”
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`The Examining Attomey’s arguments are noteworthy by their overwhelming reliance on
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`assumptions and conclusory reasoning, rather than the evidence of record. As noted above, there is no
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`precedent for this approach in the Board’s case law, much less that of the Federal Circuit. The Board
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`should decline the Examining Attomey’s implicit invitation to establish new precedent and follow the
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`Third Circuit’s approach in Canfield , which is squarely at odds with the Marvin Ginn test.
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`IV.
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`APPLICANT’S MARK IS NOT GENERIC UNDER THE MARVIN GINN TEST
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`A.
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`The Examining Attorney Has Changed Course (Again)
`On The Product Genus, Agreeing With Applicant’s View
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`The product genus, previously a moving target, is now stipulated by the Examining Attorney to
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`be “orthopedic splints for the foot and ankle to be worn while sleeping.” This characterization of he
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`product genus is well—supported by the record
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`-12-
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`B.
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`The Examining Attorney Has Changed Course (Again)
`On The “Relevant Public”
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`The Examining Attorney’s position on the “relevant public” has been a moving target, and
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`remains so. This is yet another matter on which Applicant has been unfairly placed in a position to “bet
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`against itself” in the prosecution of the application. The Examining Attorney has again changed her
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`position regarding the relevant public , on appeal. As a result, the Board should conclude that the
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`Trademark Office has not borne its high burden of establishing genericness.
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`The history of prosecution on this point is telling. Purporting to apply the Marvin Ginn test in the
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`final refusal, the Examining Attorney failed to define the “relevant public” for Applicant’s product
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`In the
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`Request for Reconsideration, Applicant noted this failure, and affirmatively stated that the evidence of
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`record reflected that the “relevant public” would be medical professionals and podiatrists. See Request
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`for Reconsideration dated May 2, 2006, at 16. The Examining Attorney, in denying the Request for
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`Reconsideration, stated (without more, and without addressing Applicant’s position) that the relevant
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`public is the “general public.”
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`On appeal, Applicant maintained its position that the “relevant public” consists of medical
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`professionals and/or podiatrists, based solely on the evidence made of record by the Examining Attorney.
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`And now, the Examining Attorney has changed course again on this crucial issue. For the first time on
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`appeal, the Examining Attorney states: “it alga that [Applicant’s] consumers are the general public,
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`and in certain instances, medical doctors” (emphasis added). For this position, the Examining Attorney
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`relies on “Applicant’s specimen and lack of limitation in the identification.” Appeal Brief at 3
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`(unnumbered) .
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`The Examining Attorney’s analysis, presented without any supporting case law, is flawed. First,
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`the Examining Attorney fails to discuss precisely how the specimen serves as evidence of who the
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`“relevant public” is. Second, while the scope of the goods identification may be presumed broad for
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`purposes of a likelihood of confusion analysis, the fact that the application scope is not “limit[ed]” does
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`not compel the conclusion that the relevant public for gene