APPLICATION OF AMERICAN SOCIETY OF CLINICAL PATH., INC., Patent Appeal No. 8531.
| Decision Date | 27 May 1971 |
| Docket Number | Patent Appeal No. 8531. |
| Citation | 169 USPQ 800,442 F.2d 1404 |
| Parties | Application of AMERICAN SOCIETY OF CLINICAL PATHOLOGISTS, INC. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Philip B. Polster, J. Philip Polster, Polster & Polster, St. Louis, Mo., attorneys of record, for appellant.
S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Jack E. Armore, Washington, D.C., of counsel.
Before RICH, ALMOND, BALDWIN, and LANE, Judges, and LANDIS, Judge, United States Customs Court, sitting by designation.
This is an appeal from the decision of the Trademark Trial and Appeal Board, 159 USPQ 622 (1968), affirming the examiner's refusal to register on the Principal Register the designation "REGISTRY OF MEDICAL TECHNOLOGISTS"1 for hereinafter described services because the wording is merely descriptive of appellant's services "within the meaning of Section 2(e) (1) of the Statute" (15 U.S.C. § 1052).
Asserting first use as early as 1936, the application seeking registration of the above-quoted term describes the services to be covered thereby as follows:
* * * providing national board examinations in medical technology and related specialties, certifying qualified persons according to their qualifications, as medical technologists, histologic technicians, etc., publishing information about requirements for qualification of school curricula and the like and publicizing opportunities for careers in medical technology and related specialties.
The examiner refused registration reasoning that the wording of the term sought to be registered "is merely descriptive of the claimed services," that the asserted long use "would appear to support use of the alleged mark mainly as a trade name," and that the wording in conjunction with the claimed services "immediately conveys the impression that the latter are in some way connected with the maintenance of a roster of medical technologists."
In its affirmance of the examiner's refusal of registration, the board, one member dissenting, stated that:
It appears from the literature of record herein that applicant is engaged, inter alia, in maintaining a registry of medical technologists for use by medical and hospital groups. There can be no question but that "REGISTRY OF MEDICAL TECHNOLOGISTS" possesses a merely descriptive significance as applied to this service. It likewise appears that the services described in the application * * * are all part and parcel of the function of creating and maintaining a registry of medical technologists. It is manifest that if the term "REGISTRY OF MEDICAL TECHNOLOGISTS" is merely descriptive of the service of establishing a roster or registry of medical technologists, it is also descriptive of those services that are incidental to and/or necessary adjuncts thereto.
The board found nothing in the record to show that the term REGISTRY OF MEDICAL TECHNOLOGISTS had any significance other than as a designation describing the nature and character of appellant's services, adding that the fact that:
* * * applicant has received many inquiries addressed to "REGISTRY OF MEDICAL TECHNOLOGISTS" is merely a reflection of applicant\'s use of the designation in certain literature as a trade name signifying a standing committee of applicant\'s organization and does not, in and of itself, dispel the descriptive character of the term.
The parties here are in agreement that the principal issue is whether or not the mark sought to be registered "is merely descriptive of any or all of the services." There is further agreement that (a) "descriptiveness of a mark must be determined in relation to the goods or services for which registration is sought," and (b) "registration should be refused if the mark is descriptive of any of the goods or services for which registration is sought." These are well settled legal principles.
Inquiry, therefore, must be focused on the services for which the mark in issue is sought to be registered. In the interest of clarity and convenience, we break these services into four parts:2...
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