IP Law Daily, TRADEMARK—TTAB: Board finds SECOND OPINION is generic for medical testing services, (Jul 12, 2018)

By Cheryl Beise, J.D.

The Trademark Trail and Appeal Board has affirmed a trademark examining attorney’s refusal to register the mark SECOND OPINION on the ground that the mark was generic for "medical testing for diagnostic or treatment purposes in the field of cancer." The record showed that the public would understand medical testing services to be an integral part of providing "second opinions." Trademark Law Judge Linda A. Kuczma filed a dissenting opinion. In Judge Kuczma’s view, the evidence did not show that the relevant public would understand SECOND OPINION primarily to refer to medical testing services or any type of medical tests (In re Chronix Biomedical, Inc., July 10, 2018, Adlin M.).

Applicant Chronix Biomedical, Inc., filed an application to register on the Supplemental Register the term SECOND OPINION, in standard characters, for "medical testing for diagnostic or treatment purposes in the field of cancer." The examining attorney refused registration under Section 23(c) of the Trademark Act on the ground that the proposed mark was a generic term for the identified services. The applicant appealed.

In determining whether a mark is generic, the Board must first determine the genus of goods and services at issue, and second, whether the term sought to be registered is understood by the relevant public primarily to refer to that genus of goods or services. The examining attorney bears the burden of making a "strong" showing, with "clear evidence," that Applicant’s mark is generic.

According to the Board, there was no dispute that the genus is essentially as described in Applicant’s identification of services: "medical testing services for diagnostic or treatment purposes. The Board next found that the record established that the relevant purchasing public consisted of doctors or other health care providers who order or purchase testing for diagnostic or treatment purposes and also contrary to the applicant’s assertion, patients who seek such medical testing or treatment. The applicant directly marketed its medical testing services to patients as well as medical professionals.

The Board next turned to the relevant public’s understanding of SECOND OPINION. The examining attorney offered two dictionary definitions of the phrase "second opinion" as meaning "an opinion from a second qualified person on something such as a health or legal problem" and "a patient privilege of requesting an examination and evaluation of a health condition by a second physician to verify or challenge the diagnosis by a first physician." The record also established that healthcare providers commonly offer "second opinion" services, often in connection with cancer diagnoses. Frequently, a "second opinion" focused on, or involved, medical tests, the Board noted. In addition, the applicant marketed its testing services in connection with "second opinions."

The Board found that the record evidence showed that the primary significance of "second opinion" to those seeking medical tests for themselves or their patients encompassed medical testing for the purpose of verifying or challenging a first diagnosis or recommendation, i.e., providing a "second opinion."

"While most of the third-party evidence of record reflects use of ‘second opinion’ in connection with a collection of healthcare services, as opposed to Applicant’s use of the term in connection with ‘medical testing’ specifically, this does not make the term less generic for Applicant’s testing services, which are an integral part of providing ‘second opinions,’" the Board said. A term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole. Moreover, others had a competitive need to, and do, use the term "second opinion" in connection with reviewing or providing medical testing. The Board affirmed the refusal to register.

Dissenting opinion. Trademark Law Judge Linda A. Kuczma filed a dissenting opinion to express her disagreement with the majority’s conclusion that SECOND OPINION is generic for medical testing services. Judge Kuczma agreed with the majority that the relevant genus was "medical testing services for diagnostic or treatment purposes" and that the relevant public included patients as well as medical professionals, but she disagreed that the evidence showed that the relevant public would understand SECOND OPINION primarily to refer medical testing. "While SECOND OPINION may be merely descriptive of the end purpose for which the testing is used, i.e., to render ‘second opinions,’ it does not refer to any class or type of medical tests and is not generic for medical testing services for diagnostic or treatment purposes," Judge Kuczma said. She would reverse the refusal to register.

This case is Serial No. 86612457.

Attorneys: Karen Frank (Coblentz Patch Duffy & Bass LLP) for Chronix Biomedical, Inc. Thomas Young, Trademark Examining Attorney, USPTO.

Companies: Chronix Biomedical, Inc.

Cases: Trademark USPTO