In re The American Fertility Society

• Decision Date: 19 August 1999
• Citation: 51 USPQ2d 1832,188 F.3d 1341
• Parties: (Fed. Cir. 1999) IN RE THE AMERICAN FERTILITY SOCIETY (now known as American Society for Reproductive Medicine) 98-1540 Decided:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1341

188 F.3d 1341 (Fed. Cir. 1999)

IN RE THE AMERICAN FERTILITY SOCIETY (now known as American Society for Reproductive Medicine)

98-1540

United States Court of Appeals for the Federal Circuit

Decided: August 19,1999

Appealed from: U.S. Patent and Trademark Office Trademark Trial and Appeal Board

Mark S. Sommers, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for the appellant. With him on the brief was Douglas A. Rettew.

Joseph G. Piccolo, Associate Solicitor, Office of the Solicitor, U.S. Patent and Trademark Office, of Arlington, Virginia, argued for the appellee. With him on the brief were Albin F. Drost, Acting Solicitor, and Michael J. Donnelly, Associate Solicitor. Of counsel was Nancy C. Slutter, Associate Solicitor.

Before MICHEL and GAJARSA, Circuit Judges, and CUDAHY, Senior Circuit Judge.^*

MICHEL, Circuit Judge.

The American Fertility Society, now known as the American Society for Reproductive Medicine ("Society"), appeals the May 18, 1998, decision of the Trademark Trial and Appeal Board ("Board") upholding the United States Patent and Trademark Office's ("PTO's") requirement that the Society disclaim the phrase SOCIETY FOR REPRODUCTIVE MEDICINE in order to register its mark, AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE, on the supplemental register. See In re The Am. Fertility Soc'y, No. 74/568,765 (TTAB May 18, 1998). The appeal was submitted for our decision following oral argument on June 8, 1999. We vacate the Board's ruling that the PTO met its burden of proving that the phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic as based on the application of an incorrect legal test that assumed the genericness of a phrase as a whole based solely on proof of the genericness of its individual terms. We remand for a decision of the Board under the correct legal test as detailed below.

BACKGROUND

The Society is an association whose primary purpose is to advance the interests of the reproductive medicine field by providing what it describes as "association services," apparently similar to those of other professional associations. Nearly all of its members are doctors working as specialists in reproductive medicine, and most of the rest are professors. The Society filed an application on September 1, 1994 with the PTO to register the mark, AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE.¹ On February 13, 1995, the Examining Attorney refused registration on the primary register because she concluded, the desired mark was chiefly geographically descriptive in violation of section 2(e)(2) of the Lanham Act, 15 U.S.C. § 1052(e)(2) (1994). In addition, the Examining Attorney refused registration on the grounds that a portion of the mark SOCIETY FOR REPRODUCTIVE MEDICINE was so highly descriptive that "no thought, imagination or perception is required to understand the exact nature of the applicant's services when confronted with [the term]."

The Society responded by amending its application on August 11, 1995 to seek registration of its mark on the supplemental register, which does not proscribe geographically descriptive marks. See 15 U.S.C. § 1091 (1994). A mark may be registered on the supplemental register if it is capable of distinguishing the applicant's goods or services. Supplemental registration, however, confers considerably fewer advantages than principal registration. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:36 (4th ed. 1999) ("Supplemental registration confers no substantive trademark rights beyond those under common law.").

On September 26, 1995, the Examining Attorney issued a second office action refusing registration of the mark in its entirety on the supplemental register unless the Society disclaimed the phrase SOCIETY FOR REPRODUCTIVE MEDICINE. The Examining Attorney wrote:

[t]he applicant must disclaim the unitary phrase SOCIETY FOR REPRODUCTIVE MEDICINE apart from the mark as shown. SOCIETY is defined in the attached dictionary definition as "a voluntary association of individuals for common ends; esp: an organized group working together or periodically meeting because of common interests, beliefs, or profession." REPRODUCTION [sic] MEDICINE is the area of common interest for the applicant association. This is the apt or common name of the association services. The applicant will note the attached trademark registrations and pending applications wherein the term SOCIETY is disclaimed apart from the trademark as generic matter. Many of the attached registrations show disclaimers of SOCIETY together with the name of the area of common interest of the particular association.

(emphases added). The Examining Attorney appended copies of other PTO applications in which the term SOCIETY and/or SOCIETY plus the name of the "area of common interest of the particular association" had been disclaimed by associations.

The Society answered the second office action on January 17, 1996, arguing that the requested disclaimer was inappropriate. The Society reasoned that mere descriptiveness is insufficient to bar registration on the supplemental register; rather, a disclaimer was appropriate in this case only if the entire phrase was generic for a "collection, group, organization, association, and/or even society of individuals, companies, or other entities with the interests in reproductive medicine, fertility, sterility, or other related branches of medicine." The Society pointed out that the dictionary definition of "society" did not "include within its parameters 'Society of Reproductive Medicine' as a noun or generic term for a body of individuals with a collective interest in this particular branch of medicine."

The Examining Attorney issued a third office action on March 15, 1996, making final the requirement that to register its mark, the Society must disclaim the phrase SOCIETY FOR REPRODUCTIVE MEDICINE because the phrase "is the generic name for the identified services." In the office action the Examining Attorney stated that the Society had disclaimed the term "society"² leaving the phrase "reproductive medicine," which she considered generic. She appended ninety-nine pages of references to "reproductive medicine" from Lexis-Nexis and cited In re Gould Paper Corp., 835 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987), for the proposition that a composite term can be generic without being defined in the dictionary or used as a composite term, if the term, as a whole, has no more meaning than the sum of the meanings of each of its constituent parts.

The Society appealed the Examining Attorney's decision to the Board, and a hearing was held on June 24, 1997. In a decision issued almost eleven months later on May 18, 1998 the Board upheld the Examining Attorney's requirement that the Society disclaim the phrase SOCIETY FOR REPRODUCTIVE MEDICINE, pursuant to 15 U.S.C. § 1056(a) (1994), which allows the "Commissioner [to] . . . require the applicant to disclaim an unregistrable component of a mark otherwise registrable."

In its opinion, the Board examined the genericness of a component, SOCIETY FOR REPRODUCTIVE MEDICINE, of the mark, AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE, under the test articulated by this court in H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d. 987, 228 USPQ 528 (Fed. Cir. 1986). See Am. Fertility, No. 74/568,765. In Marvin Ginn, as the Board observed, we held that:

Determining whether a mark is generic [and thus not capable of distinguishing an applicant's services] . . . involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?

782 F.2d at 990, 228 USPQ at 530.

The Board cited In re Northland Aluminum Prods., Inc.,³ 777 F.2d 1556, 1559, 227 USPQ 961, 963 (Fed. Cir. 1985), for the proposition that evidence of the relevant public's understanding could be obtained from dictionaries, newspapers, magazines, trade journals and other publications. In the instant case, the Board found the relevant component generic based on numerous articles found by the Examining Attorney through a Lexis-Nexis search for the meaning of "reproductive medicine" and on the Society's recitation of its services in its application to characterize the word "society." No evidence of the relevant public's understanding of the phrase as a whole was provided.⁴ Despite the lack of evidence of the public's understanding of the phrase as a whole, the Board held that the "combination of the terms 'society' and 'reproductive medicine' results in a designation, SOCIETY FOR REPRODUCTIVE MEDICINE, which is also generic." Am. Fertility, slip op. at 7 (citing Gould and In re Associated Theater Clubs Co., 9 USPQ2d 1660 (TTAB 1988)).

The Board justified this holding, despite the lack of evidence regarding the combination, by stating that "the fact that [the] applicant may be the first and only user of this generic designation does not justify registration if the term projects only generic significance." Am. Fertility, slip op. at 7. In a footnote to this last statement, the Board quoted Gould to rebut the dissent's position that the PTO must show evidence of generic use of the composite term by others as follows:

We agree with Gould that "to refuse registration on the ground that an applicant seeks to register the generic name of the goods, the PTO must show that the word or expression inherently has such meaning in ordinary language, or that the public uses it to identify goods of other producers as well." (citations omitted) We hold, however, that the PTO has satisfied its evidentiary burden if, as it did in this case, it produces evidence including dictionary definitions that the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound.

Id. at 8 n.3 (quotin...