IP Law Daily, TRADEMARK—TTAB: TTAB finds PHYSICIANCARE to be suggestive and not descriptive, (Oct 30, 2024)

By Jonathan Anderson

Purchasers must engage in a multistep analysis to arrive at the mark’s meaning, rendering it suggestive, according to the Board.

The Trademark Trial and Appeal Board has reversed the Examining Attorney’s refusal to register the mark PHYSICIANCARE for clinical communications, concluding that it is more suggestive than descriptive. The Examining Attorney had refused registration on the basis that the proposed mark is merely descriptive of the applied for services. The Board concluded that purchasers must engage in a multistep analysis to arrive at the mark’s meaning, rejecting the Examining Attorney’s contention that the mark retains the descriptive meaning of the individual component terms (In re LDM Group, LLC, No. 97184496 (T.T.A.B. Oct. 24, 2024)).

Background. Applicant, LDM Group, LLC, sought registration on the principal register of the proposed standard-character mark PHYSICIANCARE for “Healthcare business administration services in the nature of providing a website featuring technology allowing users to manage and deliver clinically-relevant communications on behalf of pharmaceutical and medical device manufacturers to physicians and other healthcare providers via a nationwide computer network of electronic health records providers; Providing medical and support information, namely, application service provider featuring application programming interface (API) software for data transfer representing prescriber educational messages to physicians and other healthcare providers through the management and delivery of clinically relevant communications on behalf of pharmaceutical and medical device manufacturers via a nationwide computer network of electronic health records providers” in International Class 42.

The Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the applied for services. After the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration. The Examining Attorney found that the request for reconsideration raised a new issue regarding Applicant’s identification of services and issued a non-final Office Action that superseded the previous Final Office Action. After Applicant responded and resolved the identification of services issue, the Examining Attorney issued a subsequent Final Office Action, which maintained the merely descriptiveness refusal under Section 2(e)(1). The appeal was resumed.

Arguments. The Examining Attorney argued that the individual component terms of Applicants’mark—“physician” and “care”—are both descriptive in relation to the identified services. The combined wording, according to the Examining Attorney, does not create a unique, incongruous, or nondescriptive meaning, but instead retains the descriptive meaning of the individual terms.

Applicant argued that its mark cannot be descriptive because it is not providing a medical service, but rather a digital communication service. Applicant explained that it provides its website and application services to pharmaceutical and medical device manufacturers who use the services to provide messages to healthcare providers, who then may use such information to render care to a patient. Applicant further argued that the proposed mark does not convey an immediate thought or connection to its services. Rather, according to Applicant, the mark is suggestive of a twice-removed relationship between the services and the ultimate healthcare rendered to a patient.

Analysis. The Board concluded that the proposed mark, taken as a whole, falls more on the suggestive than the descriptive side of the spectrum and therefore is not merely descriptive of Applicant’s identified services. The mark informs relevant purchasers that the medical and clinical information transmitted by Applicant’s services is used by physicians to care for patients. As such, the Board found that purchasers must engage in a multistep analysis to arrive at the mark’s meaning. The first immediate step entails Applicant’s communications to physicians and healthcare providers. Subsequent steps include the physician’s review of Applicant’s communications and potential care provided to the patient. Applicant’s mark thus presents an incongruous meaning, or at least one that requires some level of imagination and mental pause, the Board said.

The Case is Serial No. 97184496.

Judge: Bradley, J.

Attorneys: Bridget Hoy (Lewis Rice LLC) for LDM Group, LLC. Teague Avent for the USPTO.

Companies: LDM Group, LLC

Cases: Trademark USPTO