IP Law Daily, TRADEMARK—TTAB: Registration of the mark MEDICAL EXTRUSION TECHNOLOGIES is rejected as highly descriptive and not distinctive, (Aug 23, 2017)

By Joseph Arshawsky, J.D.

Medical Extrusion Technologies, Inc.’s ("MET") registration of the mark MEDICAL EXTRUSION TECHNOLOGIES was denied as highly descriptive under Trademark Act Section 2(e)(1), which placed a heavy burden of proof on the issue of acquired distinctiveness, which MET did not meet because its use of the mark was not "substantially exclusive," the Trademark Trial and Appeal Board held in a precedential ruling (Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., August 18, 2017, Quinn, T.).

MET filed an application to register the mark MEDICAL EXTRUSION TECHNOLOGIES, in standard characters, for "polyurethanes…for use in the manufacture of medical devices," in International Class 17. The application included a claim of acquired distinctiveness under Trademark Act Section 2(f). Apollo Medical Extrusion Technologies, Inc. ("AMET") opposed registration on grounds that the mark used in connection with MET’s goods was merely descriptive. AMET challenged the acquired distinctiveness claim on grounds that MET’s mark is highly descriptive, and its use has not been substantially exclusive.

As preliminary evidentiary matters, the TTAB overruled MET’s objection to AMET’s deposition testimony of its vice president of manufacturing and agreed to consider the testimony, and the TTAB agreed to consider all of the items listed in AMET’s notice of reliance. Ultimately, the TTAB sustained the opposition and rejected registration of the application.

Standing. MET did not contest AMET’s standing. The evidence in the record shows that AMET "is a competitor and is engaged in providing contract extrusion services for the medical industry." Further, MET sent AMET a cease and desist letter, which provided additional evidence that AME has a real interest in this proceeding, and therefore had standing.

Degree of descriptiveness. To answer whether MEDICAL EXTRUSION TECHNOLOGIES has acquired distinctiveness, the first question is the degree of descriptiveness of that phrase as used in connection with MET’s goods. The higher the degree of descriptiveness, the higher the burden MET faces in proving acquired distinctiveness.

By seeking registration of its proposed mark pursuant to Section 2(f), MET conceded that this wording is, at the least, merely descriptive of its goods under Section 2(e)(1), the TTAB ruled. The record included numerous examples of third-party uses of the wording "medical extrusion," "extrusion technolog(y/ies)," and phrases such as "medical extrusion industry" and "medical extrusion technolog(y/ies)" in connection with goods of the type identified in MET’s application. A third party witness who founded a competitor testified: "I believe that the name ‘medical extrusion technologies’ describes what the company does precisely." The TTAB held that when combined, the words MEDICAL EXTRUSION TECHNOLOGIES is, at the very least, highly descriptive of medical extrusion goods produced by employing medical extrusion technologies, and is therefore highly descriptive under Section 2(e)(1).

Acquired distinctiveness. Because the TTAB found that the wording of the mark is highly descriptive of MET’s goods, MET’s burden of establishing acquired distinctiveness under Section 2(f) was commensurately high. MET was required to demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself. The Examining Attorney accepted MET’s claim of acquired distinctiveness based on the length of continuous use since 1990. However, there was no evidence that MET’s use was "substantially exclusive." The TTAB ruled that an applicant’s use of wording for a long time does not necessarily establish acquired distinctiveness.

In terms of advertising, MET attended the major trade shows and advertised in publications known to the medical trade, with an advertising budget that grew from $25,000 to $75,000. The TTAB found that this evidence was "hardly impressive, falling far below levels deemed persuasive in other cases involving the acquired distinctiveness of marks that may be highly descriptive."

AMET’s vice president of manufacturing testified that the parties attended the same trade shows, and that the website "medicalextrusiontechnologies.com" was owned by Monolithic Industries. One of the largest competitors, Putnam Plastics, describes itself in a brochure as "a medical extrusion technology leader," engaged in "Comprehensive Medical Extrusion Technologies." One of its logos features the phrase "custom medical extrusion technologies" under the name "Putnam Plastics."

The nature and number of third-party descriptive uses in the record showed that MET’s use has not been "substantially exclusive" as required for a showing of acquired distinctiveness under Section 2(f), the TTAB held. Non-exclusive use presents a serious problem because "it interferes with the relevant public’s perception of the designation as an indicator of a single source." Customers will perceive the proposed mark not as a trademark for one company, but rather as a common terminology used by different companies to describe the goods. MET countered that it was unaware of any other trademark using the specific wording in connection with the same or similar goods. This argument has been rejected by the CCPA, but in any event, being the first to propose a trademark does not negate the highly descriptive wording. The TTAB also noted that the proposed mark appeared in connection with the prominently displayed acronym "MET," and noted there were no sales figures in the record from which it could judge the success of the proposed mark, or whether the advertising efforts bore fruit.

The case is Opposition No. 91219435.

Attorneys: Kirk M. Hallam (Kirk M. Hallam, Attorney at Law) and Nicholas J. Hoffman (Nicholas J. Hoffman, Attorney at Law) for Apollo Medical Extrusion Technologies, Inc. Dirck J. Edge (Dirck J. Edge, Attorney at Law) for Medical Extrusion Technologies, Inc.

Companies: Apollo Medical Extrusion Technologies, Inc.; Medical Extrusion Technologies, Inc.

Cases: Trademark USPTO