The American Academy of Facial Plastic and Re-constructive Surgery

THIS DISPOSITION IS

May 30, 2002

CITABLE AS

PRECEDENT OF THE TTAB Paper No. 19

csl

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re The American Academy of Facial Plastic and

Reconstructive Surgery

Serial No. 75/215,519

_____

Elisabeth G. Lowry of Smith, Gambrell & Russell for applicant.

Wanda Kay Price, Trademark Examining Attorney, Law Office 111

(Craig D. Taylor, Managing Attorney).

_______

Before Simms, Hanak and Bucher, Administrative Trademark

Judges.

Opinion by Simms, Administrative Trademark Judge:

The American Academy of Facial Plastic and Reconstructive

Surgery (applicant), a non-profit Illinois corporation, has

appealed from the final refusal of the Trademark Examining

Attorney to register on the Principal Register the mark shown

below:

for the following services:

Serial No. 75/215,519

training in plastic facial and reconstructive

surgery techniques and practices and distributing

course material in connection therewith, in

International Class 41;

association services, namely, promoting the

interests of facial plastic surgeons and

reconstructive surgeons, research in the field of

plastic surgery and reconstructive surgery and

related basic sciences, namely, anatomy,

pathology, biology, chemistry, physiology, and

wound healing, in International Class 42; and

indicating membership in an association of facial

plastic and reconstructive surgeons, in

International Class 200.1

The Examining Attorney has refused registration of

applicant’s mark under Section 2(e)(1) of the Act, 15 USC

§1052(e)(1), on the ground that applicant’s mark is generic

for its services, or, if not generic, merely descriptive and

lacking in acquired distinctiveness under Section 2(f) of the

Act, 15 USC §1052(f).

We affirm.

1

Application Serial No. 75/215,519, filed December 19, 1996,

claiming use in the first two classes as early as 1988 and in the

last class as early as 1991. In the application, applicant

indicates that it is exercising legitimate control over use of the

collective membership mark. Applicant has disclaimed exclusive

rights in the words “FACIAL PLASTIC SURGERY” apart from the mark as

shown. Although applicant has disclaimed these words in its

asserted mark, because an applicant may disclaim, among other

matter, merely descriptive as well as generic matter, and because

applicant has not otherwise conceded that these words are generic

for its services, this disclaimer does not constitute an admission

that the words themselves are generic. Accordingly, we make an

independent determination of the issue of genericness of the words

which comprise almost the entirety of applicant’s asserted mark.

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Serial No. 75/215,519

It is the Examining Attorney’s position that “facial

plastic surgery” is a common phrase within the medical field

used to denote the medical procedure of cosmetic and

reconstructive surgery of the face, neck and head; that is, it

is a specialized field of plastic surgery. As such, she

argues that it is incapable of identifying applicant’s

services and distinguishing these services from those of

others. Moreover, the Trademark Examining Attorney contends

that applicant’s display of these generic or descriptive words

is a common arrangement of the words having an indistinctive

font style featuring minimal design “underlining.” In other

words, the Examining Attorney argues that the asserted mark is

not a distinctive display of generic or descriptive matter

creating a commercial impression in and of itself.

While the Examining Attorney argues that applicant’s

asserted mark is generic and that no amount of use and

promotion can make it a registrable mark, in other words, that

it is not capable of acquiring distinctiveness, it is also her

position that, because applicant’s asserted mark is highly

descriptive of its services, even if it were capable of

identifying applicant’s services, the evidence of acquired

distinctiveness is insufficient. The Examining Attorney notes

that applicant has recognized that the words in its mark

describe certain surgical procedures and has disclaimed these

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Serial No. 75/215,519

words. The Examining Attorney contends that where there is a

high degree of descriptiveness, purchasers are less apt to

discern the source of the services identified by that asserted

mark as emanating from any one entity. Although applicant’s

members are sought after because of their specialty in facial

plastic surgery, this does not mean that applicant’s asserted

mark is distinctive, according to the Examining Attorney. The

Examining Attorney also criticized applicant’s evidence as

from a relatively small number of physicians and that some of

this evidence is subject to bias. In conclusion, the

Examining Attorney argues that applicant’s asserted mark is

unregistrable for its services of training facial plastic

surgeons, promoting the interests of those surgeons and

indicating membership in applicant’s association.

The Examining Attorney has made of record the following

excerpts, among other stories retrieved, from the Nexis

computer database showing the words “facial plastic surgery”

used generically:

The Center for Sight also specializes in retina

surgery, laser vision correction, and facial

plastic surgery procedures to remove bags under

eyes and to correct droopy eyelids.

Sarasota Herald-Tribune, March 20, 1999

* * * * * * * * * *

The center also offers facial plastic surgery

by local physicians who specialize in cosmetic

and reconstructive surgery.

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Serial No. 75/215,519

Chattanooga Times and Free Press, March 14, 1999

* * * * * * * * * *

If men are chicken, they have good reason to

be. Aesthetically, facial plastic surgery is

trickier on men.

The New York Times, February 17, 1999

* * * * * * * * * *

Nachlas is a past president of the Palm Beach

County Medical Society, and specializes in

facial plastic surgery and surgery of the nose.

Sun-Sentinel, January 8, 1999

* * * * * * * * * *

… Success to transform and rejuvenate damaged

aging skin, has made laser resurfacing one of

the most requested cosmetic procedures in

facial plastic surgery.

Plastic Surgical Nursing, December 22, 1998

* * * * * * * * * *

Parents should consider the following

guidelines when their child needs or desires

facial plastic surgery …

Indianapolis Star, December 9, 1998

* * * * * * * * * *

The surgeries “have restored his voice and his

abilities to eat,” Dr. Mark Shikowitz,

associate chairman of Otolaryngology and facial

plastic surgery said yesterday.

New York Post, December 3, 1998

The specimens and other material of record show that

applicant has sponsored numerous conferences and educational

seminars on facial plastic surgery, such as the “Fifth Annual

Winter Symposium on the Advances of Facial Plastic Surgery”

held in September 1997, and the “Seventh International

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Serial No. 75/215,519

Symposium of Facial Plastic Surgery” in June 1998. Another of

applicant’s brochures indicates that applicant is the world’s

largest association of facial plastic and reconstructive

surgeons.

Applicant, on the other hand, maintains that the

Examining Attorney has failed to meet her burden of showing

that its mark is generic for applicant’s services. In this

regard, applicant argues that the Examining Attorney must

demonstrate, under existing precedent, that its mark is

understood by the relevant public to refer primarily to the

genus of applicant’s services. Applicant contends that the

articles of record do not show the words “facial plastic

surgery” are generic for applicant’s training, association and

collective membership services. Moreover, if descriptive

words are displayed with a distinctive design, they may be

registered with a disclaimer of the literal components. Here,

it is applicant’s position that the words FACIAL PLASTIC

SURGERY are displayed flush with the left margin in a

“cascading stairstep design” with the word “SURGERY”

underscored by a line. Applicant argues that there are many

ways to arrange these words and that its mark presents “a more

complicated and distinctive design element” (brief, 8) and “a

far more ornate and distinctive design than exists in other

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Serial No. 75/215,519

marks which have been approved by the TTAB.” (Response, filed

January 9, 1998, 6).

In addition, while applicant admits that the words in its

mark are descriptive of surgical procedures provided by

medical practitioners, it is applicant’s position that due to

the acquired distinctiveness of the presentation of its mark,

including the design elements, there is significant public

recognition of this composite mark. Applicant notes that

there has been continuous and substantially exclusive use of

its asserted mark for at least ten years in the case of its

collective membership mark and at least thirteen years in

connection with its training and association services.

According to applicant, this use constitutes prima facie

evidence of acquired distinctiveness. Applicant points to the

evidence of record including letters from member doctors, from

patients and from exhibitors at applicant’s educational

seminars and conferences attesting to their recognition of

applicant’s mark as an indication of origin of applicant’s

educational and promotional activities as well as its member

surgeons.2

2

For example, the similarly worded letters from patients indicate

that their selection of doctors was influenced by the surgeon’s

membership in applicant, identified by the mark sought to be

registered, and that they have come to view applicant’s mark as a

symbol which identifies member surgeons as well as applicant’s

educational and promotional activities. One patient indicates that

her selection of a facial plastic surgeon was made easier by the use

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Serial No. 75/215,519

Applicant has also made of record a letter from its

executive vice president indicating: that applicant has 2,700

member surgeons; that applicant distributes over 300,000

newsletters (Facial Plastic Times) and brochures bearing the

mark each year; that applicant distributes an exhibitor

prospectus bearing the mark to 350 surgical equipment and

supply companies; and that an annual membership directory

bearing the mark is sent to all its member surgeons. The

annual expenditures for these promotional and educational

materials, and its advertisements in medical journals and

trade publications, average around $175,000, which is about

45% of applicant’s entire budget. According to applicant,

of applicant’s mark. Another letter states that applicant’s Yellow

Pages listing of facial plastic surgeons helped select a surgeon who

specialized in plastic surgery of the face. This writer asked

applicant to “keep your logo visible in all your endorsements so

others like myself will be able to quickly and appropriately select

a qualified facial plastic surgeon.” (Exhibit 4) A facial plastic

surgeon indicates that use of applicant’s logo has informed patients

of his specialty training in facial plastic and reconstructive

surgery and that he does not perform other types of plastic surgery.

(Exhibit 5) Another doctor states that applicant’s mark has proven

to be an effective tool in providing him an identity as a surgical

specialist. Another says that applicant’s mark has brought more

patients into his office because the public seeks out facial plastic

surgeons for their specialty in facial plastic surgery. He states

that applicant’s “material [bearing the mark] tremendously adds to

my patients’ knowledge of Facial Plastic Surgery and they are

strongly ardent in identifying me as a specialist in facial plastic

surgery.” Similarly worded exhibitors’ letters state that they have

become familiar with applicant’s mark to identify applicant’s member

surgeons and its educational services, and that in their opinion

applicant’s mark has acquired distinctiveness indicating membership

in applicant and identifying its educational and promotional

services.

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Serial No. 75/215,519

this extremely high percentage of its overall budget devoted

to advertising should be given great weight in reaching our

decision.3 Applicant has also made of record Yellow Pages

advertisements of member surgeons who use applicant’s mark.

Applicant contends that these advertisements are exposed to

millions of patients and potential patients. Accordingly,

applicant argues that its mark is well known throughout the

industry and is recognized by medical practitioners, patients,

non-members and medical equipment and supply companies who

attend applicant’s conferences, as well as the general public.

Applicant argues that the use of its mark assists the general

public in selecting qualified facial plastic surgeons.

Accordingly, applicant asks us to reverse the Examining

Attorney’s refusal. However, if the Board finds that

applicant’s Section 2(f) evidence is unpersuasive, applicant

asks us to remand this case to the Examining Attorney so that

applicant can be afforded an opportunity to consider an

amendment to register this mark on the Supplemental Register.

3

However, we note that even according to the author of the article

that applicant cites, the specific nature of a particular market

sector makes such far-ranging comparisons meaningless (e.g., general

percentages of sales devoted to advertising for a national

manufacturing concern are hardly instructive when one is considering

the activities of a narrow and specialized trade association such as

applicant’s).

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Serial No. 75/215,519

Upon careful consideration of this record, we conclude

that applicant’s asserted mark is generic for its training,

association and collective membership services.

As the attorneys have noted, generic terms are terms that

the relevant public understands primarily to refer to the

class (or genus) of applicant’s goods or services. In re

Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d

1807, 1811 (Fed. Cir. 2001); and In re American Fertility

Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).

Such terms are incapable of functioning as trademarks denoting

origin or any specific source, and are not registrable on the

Principal Register under Section 2(f), or on the Supplemental

Register. See, for example, H. Marvin Ginn Corp. v.

International Association of Fire Chiefs, 782 F.2d 987,

228 USPQ 528, 530 (Fed. Cir. 1986)(“A generic term … can never

be registered as a trademark because such a term is ‘merely

descriptive’ within the meaning of §2(e)(1) and is incapable

of acquiring de jure distinctiveness under §2(f)”) and cases

cited therein.

The two-part test used to determine whether a designation

is generic asks: (1) What is the class of goods or services,

and (2) Does the relevant public understand the designation

primarily to refer to that class of goods or services? See

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Serial No. 75/215,519

Ginn, supra. The test turns upon the primary significance

that the term would have to the relevant public.

The Examining Attorney has the burden of proving that a

term is generic by clear evidence. In re American Fertility

Society, supra, 51 USPQ2d at 1835; and In re Merrill Lynch,

Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141

(Fed. Cir. 1987). Evidence of the public’s understanding of a

term can be obtained from any competent source, including

dictionary definitions, research databases, newspapers and

other publications. In re Northland Aluminum Products, Inc.,

777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985)(BUNDT designates

a type of cake, held generic for ring cake mix).

Where the mark is a phrase, the Examining Attorney cannot

simply cite definitions and generic uses of the individual

components of the mark, but must provide evidence of the

meaning of the composite mark as a whole. Here, the Examining

Attorney has made of record evidence that the phrase “facial

plastic surgery” is a recognized field of surgical

specialization. As such, it may be regarded as a name of a

class or category of surgery. The record also shows that this

term has been widely used and that the relevant public would

understand this phrase as designating a type of plastic

surgery. As used in connection with training in the field of

facial plastic surgery, promoting the interests of facial

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Serial No. 75/215,519

plastic surgeons and research in this field, as well as

indicating membership of facial plastic surgeons, the words

FACIAL PLASTIC SURGERY are generic, indicating only the field

of specialty in which these services are rendered. See, for

example, In re A La Vieille Russie, Inc. , 60 USPQ2d 1895 (TTAB

2001)(RUSSIANART generic for dealership services in the field

of fine art, antiques, furniture and jewelry); In re Log Cabin

Homes Ltd., 52 USPQ2d 1206 (TTAB 1999)(LOG CABIN HOMES generic

for architectural design of buildings and retail outlets

selling kits for building log homes); In re Web

Communications, 49 USPQ2d 1478 (TTAB 1998)(WEB COMMUNICATIONS

generic for consulting services to businesses seeking to

establish sites on a global computer network).

However, even if we were to find this phrase not to be a

generic one for applicant’s services, we would hold that, in

view of the very highly descriptive nature of these words,

applicant’s evidence of acquired distinctiveness is

insufficient to show that these words have come to be

recognized as an indication of origin of the services in

applicant. See Yamaha International Corp. v. Hoshino Gakki

Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)(the

greater the degree of descriptiveness a term has, the heavier

the burden of proof of acquired distinctiveness). The words

FACIAL PLASTIC SURGERY for training, association, research and

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Serial No. 75/215,519

collective membership services in the field of facial plastic

surgery are clearly very highly descriptive of the nature and

subject matter of applicant’s services rendered to facial

plastic surgeons, and applicant’s evidence of acquired

distinctiveness fails to demonstrate that these words alone

have become associated with any one entity. See, for example,

In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff’d 20

USPQ2d 1319 (Fed. Cir. 1991)(ICE PAK for reusable ice

substitute for use in food and beverage coolers held generic;

even assuming a contrary holding, evidence submitted by

applicant deemed insufficient to establish acquired

distinctiveness); and In re Paint Products Co., 8 USPQ2d 1863

(TTAB 1988)(PAINT PRODUCTS CO. for “interior and exterior

paints and coatings, namely, alkyd, oil, latex, urethane and

epoxy based paints and coatings” held incapable of becoming

distinctive; even assuming the term could function as a mark,

applicant’s evidence deemed insufficient to establish acquired

distinctiveness). Cf. In re American Fertility Society, supra

(SOCIETY FOR REPRODUCTIVE MEDICINE held not generic for

association services in the field of reproductive medicine).

Finally, we turn to the question of whether applicant is

entitled to registration because its asserted mark is a

distinctive display of unregistrable and disclaimed matter.

In this regard, it is possible to register a composite word

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Serial No. 75/215,519

and design mark even if the literal portion consists of a

generic name, if the wording is displayed in very distinctive

lettering or is accompanied by a distinctive design. J.

Thomas McCarthy, McCarthy on Trademarks and Unfair Competition

§12:40 (Fourth Edition Dec. 2001 Release). In other words, a

display of descriptive, generic or otherwise unregistrable

matter is not registrable on the Principal Register unless the

stylization of the words or the accompanying design features

of the asserted mark create an impression on purchasers

separate and apart from the impression made by the words

themselves, or unless it can be shown by evidence that the

particular display which applicant uses has acquired

distinctiveness. See, for example, In re Benetton Group

S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998)(green background tag

for clothing); In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381

(TTAB 1988) (parallelogram used as background design for

applicant’s housemark, the words ANTON/BAUER); and In re

Miller Brewing Company, 226 USPQ 666, 668 (TTAB 1985)(display

of “Lite” for beer held registrable on the basis of acquired

distinctiveness). If the background or other design elements

of the mark are inherently distinctive, the mark may be

registered without evidence of acquired distinctiveness.

However, ordinary geometric shapes such as circles, ovals,

squares, stars, etc., are generally regarded as nondistinctive

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Serial No. 75/215,519

and protectable only upon proof of acquired distinctiveness.

In re Anton/Bauer, supra. Also, subject matter that is merely

a decorative feature generally does not identify and

distinguish applicant’s goods and, thus, does not function as

a trademark.

We compare the distinctiveness of the presentation herein

with earlier cases where this question has been considered.

For example, the Board held that the display of the generic

word “Lite” for cheese was not

registrable because “there is nothing

unusual or even different in the

formation of the letters” which would

make them distinctive. See In re

Pollio Dairy Products Corp., 8 USPQ2d 2012 (TTAB 1988).

Similarly, the style of lettering used in the generic name

“bundt” was held not to be a

distinctive display. See In re

Northland Aluminum Products, Inc.,

supra. Likewise, when the generic term “MICROWAVE TURNTABLE”

was presented in plain block lettering

with “MICROWAVE” in smaller letters

appearing over the left-hand side of

the word “TURNTABLE,” the resulting composite was held not to

be registrable on the Supplemental Register. In re Anchor

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Serial No. 75/215,519

Hocking Corp., 223 USPQ 85 (TTAB 1984). When an earlier

applicant had filled in the portions of some of the letters in

the descriptive term

“designers/fabric,” this

particular display was

found not to be sufficiently distinctive to create a separate

commercial impression. In re S.D. Fabrics, Inc., 223 USPQ 54

(TTAB 1984). Despite the slightly slanted letters and the

capitalized letters “C” and “A,” the

descriptive term “COURIAIRE” was found

not to be sufficiently distinctive to create a separate

commercial impression. See In re Couriaire Express

International, Inc., 222 USPQ 365 (TTAB 1984). This Board

found the generic term “BODY SOAP” shown in

ordinary and undistinguished typeface not

registrable on the Supplemental Register.

In re Cosmetic Factory, Inc., 220 USPQ 1103 (TTAB 1983).

Where the goods were described as made of microdenier,

even the interlocking letters "o" and "d" and the fine font

making up the letters were deemed not to

create a commercial impression separate

and apart from the descriptive term MICRODENIER. See In re

Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994).

Finally, a display of the generic term “ 24 K Gold” for

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Serial No. 75/215,519

jewelry was found not to be registrable. See In re Project

Five, Inc., 209 USPQ 423 (TTAB 1980). In each of these

reported cases, the features of the display could not overcome

the inherent incapacity of the literal terms to serve as a

source indicator.

On the other hand, on occasion, the features of the

display are of such a nature that they inherently serve to

distinguish the mark in its entirety, or it has been shown by

competent evidence that what is sought to be registered does

in fact function as a trademark to identify and distinguish

applicant's goods in commerce. These composites contain

presentations of the wording that are so inventive, striking,

unique or distinctive in character as to make the composite

registrable, or there is evidence that the particular display

of unregistrable matter has become distinctive.

For example, given the play on the “fun” aspects of

applicant’s food products, the distinctive display of MUFFUNS

for muffins was held registrable

on the Principal Register. See

In re Grand Metro. Foodservice,

30 USPQ2d 1974 (TTAB 1994).

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Serial No. 75/215,519

Similarly, a distinctive

display of THE PIPE was held

registrable for smokers’

pipes. See In re Venturi, Inc., 197 USPQ 714 (TTAB 1977).

It should be remembered, however, that the inherent

distinctiveness being asserted in cases of this nature is

almost always in connection with the specific display of the

descriptive or generic words, not the descriptive or generic

words themselves, and if there is acquired distinctiveness or

secondary meaning being claimed, that showing pertains to the

specific display or design aspect of the asserted mark and not

in the words themselves. See, for example, In re K-T Zoe

Furniture, 16 F.3d 390, 29 USPQ2d

1787 (Fed. Cir. 1994)(“ … only the

script design of the words [The

Sofa & Chair Company] was shown to

have acquired secondary meaning”).

In Dena Corp. v. Belvedere International, Inc., 950 F.2d

1555, 21 USPQ2d 1047 (Fed. Cir. 1991), the Court stated that,

if a mark is dominated by a descriptive and disclaimed

element, that part of the mark imparts non-registrable meaning

to the entire mark. The Court explained that where a mark

containing insignificant elements is dominated by descriptive

and unregistrable matter, the entire mark remains

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Serial No. 75/215,519

unregistrable because the nonregistrable meaning is imparted

to the entire mark. The Court stated, 21 USPQ2d at 1051:

Such a mark, in effect, has no “unregistrable

component” because the dominant feature of the

mark extends a nonregistrable meaning to the

whole. The entire mark becomes nonregistrable.

Here, the display of the generic words FACIAL PLASTIC

SURGERY is clearly nondistinctive with the words shown one

above the other in ordinary capital letters with an

insignificant underscoring. The display is nothing but

ordinary in nature and does not create a commercial impression

separate and apart from the unregistrable components. The

only “design” component of applicant’s asserted mark is the

underlining, and there is no evidence of record that

specifically points to recognition of this common and prosaic

feature in applicant’s asserted mark as the element which

potential purchasers or users of applicant’s services have

come to recognize as the distinctive aspect indicating origin

in applicant.4

4

The dissent draws on the mark of “the ASPRS, the other national

organization of plastic surgeons” (see pp. 35 and 36, infra), and

then presumes to know how the majority would characterize that mark.

However, given that the nature of the ASPRS mark contrasts sharply

with the one at issue herein, the lessons to be learned from this

third-party mark are unclear. The instant mark is dominated by

literal elements that we have found to be generic. By contrast, the

mark of ASPRS appears to be a non-representational design feature

without a single literal element. Accordingly, any general

principles of distinctiveness as a source-indicator that one might

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Serial No. 75/215,519

Applicant makes much of the fact that its mark is

displayed in a “cascading stairstep” manner. However, we note

that such a display is the natural result of displaying these

words one above the other with a left justification. In other

words, with variable spaced letters, the seven-letter word

“PLASTIC” extends right beyond the end of the six-letter word

“FACIAL”; and, even though the word “SURGERY,” like the word

“PLASTIC,” has seven letters, because some of the letters

(e.g., the letter “G”) are wider than the letters of the word

“PLASTIC” (e.g., the letter “I”), the word “SURGERY” in turn

extends right beyond the end of the word “PLASTIC”. See

resulting display below, in Arial font:

FACIAL

PLASTIC

SURGERY

and in a Times New Roman font:

FACIAL

PLASTIC

SURGERY

In view of the very minimal stylization (underlining of

the word SURGERY) of applicant’s asserted mark, applicant’s

evidence of the exposure of this mark to the public and its

derive from that particular mark seem totally irrelevant to the

instant dispute.

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Serial No. 75/215,519

advertising expenditures of around $175,000 per year are

simply insufficient to demonstrate acquired distinctiveness.

In this regard, one should also remember that the association

by the relevant public of a generic term in a nondistinctive

display “sets a much higher and different standard of proof

and persuasion than is required for descriptive terms.”

McCarthy, supra, §12:40. This standard of acquired

distinctiveness cannot be said to have been met by applicant

in its very nondistinctive display of generic matter.

Indeed, we agree with the Examining Attorney that

applicant’s asserted mark is incapable of acquiring

distinctiveness. The evidence of purported association of a

generic term with an applicant is often viewed as “de facto

secondary meaning.” McCarthy, supra, §12:47. See also, for

example, Abercrombie & Fitch Co. v. Hunting World, Inc., 537

F.2d 4, 189 USPQ 759, 764 (2d Cir. 1976)(“[E]ven proof of

secondary meaning, by virtue of which some “merely

descriptive” terms may be registered, cannot transform a

generic term into a subject for trademark ….[N]o matter how

much money and effort the user of a generic term has poured

into promoting the sale of its merchandise and what success it

has achieved in securing public identification, it cannot

deprive competing manufacturers of the product the right to

call an article by its name.”); A.J. Canfield Co. v.

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Serial No. 75/215,519

Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3d Cir. 1986)(evidence

that a generic term is identified with one producer proves

only de facto secondary meaning); Christian Science Board of

Directors v. Evans, 105 N.J. 297, 520 A.2d 1347, 2 USPQ2d 1093

(N.J.S.Ct. 1987); Continental Airlines Inc. v. United Air

Lines Inc., 53 USPQ2d 1385 (TTAB 2000)(“Even if one has

achieved de facto acquired distinctiveness in a generic term

through promotion and advertising, the generic term is still

not entitled to protection because to allow protection would

‘deprive competing manufacturers of the product of the right

to call an article by its name.’”); and In re BOC Group, Inc.,

223 USPQ 462 (TTAB 1984)(No amount of secondary meaning

evidence can “rescue” a generic term. Customer letters

“evidence only de facto secondary meaning, that is some

association between the name and applicant. However, to this

type of secondary meaning the law does not accord legal

significance.”). As Professor McCarthy indicates, supra, at

§12:40:

The potential competitive danger of such logo

registrations of generic names is that the

owners of such registrations sometimes have an

inflated notion of the scope of their

exclusive rights and assert them against

competitors as if they owned the generic name

displayed in the registration. Faced with

such a registration, the businessperson who

fails to seek competent legal advice may agree

to cease use of the generic name, causing a

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Serial No. 75/215,519

significant and unnecessary impairment of the

competitive process.

Applicant’s alternative request for remand for

consideration on the Supplemental Register if its mark is

found unregistrable on the Principal Register is denied.

Trademark Rule 2.142(g) provides that an application which has

been considered and decided on appeal will not be reopened

except for the entry of a disclaimer, or upon order of the

Commissioner, but a petition to the Commissioner to reopen an

application will be considered only upon a showing of

sufficient cause for consideration of any matter not already

adjudicated.

Decision: The refusal of registration on the basis that

applicant’s mark is generic is affirmed; in the alternative,

the refusal that applicant’s mark is merely descriptive

without acquired distinctiveness is affirmed; finally, the

display of the generic words is neither inherently

distinctive, nor has it acquired distinctiveness.5

5

The dissenting opinion assumes that all of the nearly $175,000 in

advertising and promotional expenditures is directed to promoting

the asserted mark to plastic surgeons. However, this may not be the

case. Over 30 percent of this figure is spent on brochures which

are purchased from applicant. But the statement of applicant’s

executive vice president does not indicate who purchases these

brochures from applicant. They may not be plastic surgeons. Some

of applicant’s brochures in the record are specifically identified

as patient information brochures, and these would undoubtedly be

purchased by surgeons to be distributed to the general public.

Also, an unspecified part of applicant’s budget is spent on

exhibitor prospectuses (whose cost to prepare and to mail is not

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Serial No. 75/215,519

- o O o -

Hanak, Administrative Trademark Judge, dissenting:

It is beyond dispute that “the burden of showing that a

proposed trademark [or service mark] is generic remains with

the Patent and Trademark Office.” In re Merrill Lynch, 828

F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). Moreover, it

is incumbent upon the Examining Attorney to make a

“substantial showing … that the matter is in fact generic.”

Merrill Lynch, 4 USPQ2d at 1143. Indeed, this substantial

showing “must be based on clear evidence of generic use.”

Merrill Lynch, 4 USPQ2d at 1143. Thus, “a strong showing is

required when the Office seeks to establish that a [mark] is

generic.” In re K-T Zoe Furniture Inc., 16 F.3d 390, 29

indicated) mailed to 350 companies (who exhibit at applicant’s

meetings) four times a year. It may be, therefore, that

significantly less than the $175,000 figure may be spent on

materials directed to plastic surgeons. However, even if all of the

advertising and promotional expenses were directed to plastic

surgeons (and applicant does not so contend), the annual amount

spent per plastic surgeon would still be only about $10 or less.

Moreover, as indicated in footnote 2, the general public looking

for surgeons specializing in facial plastic surgery as well as

plastic surgeons who limit their practice to this field, may well be

drawn to members of applicant’s organization and to applicant’s

training and research services by the intrinsic information conveyed

in applicant’s asserted mark. Such people may choose applicant’s

specialized members and applicant’s specialized services as opposed

to general plastic surgeons and the services of other organizations

which do not specialize in plastic surgery of the face. In fact, we

believe that it is this recognition that the general public and

others are attesting to when they indicate that applicant’s asserted

mark identifies members of applicant’s association and applicant’s

services.

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Serial No. 75/215,519

USPQ2d 1787, 1788 (Fed. Cir. 1994). Moreover, any doubt

whatsoever on the issue of genericness must be resolved in

favor of the applicant. In re Waverly Inc., 27 USPQ2d 1620,

1624 (TTAB 1993).

Even if the USPTO makes a strong, substantial showing

that a mark is perceived as generic by a majority of the

American public, that strong, substantial showing is, by

itself, insufficient unless the USPTO likewise makes a strong,

substantial showing that the mark is perceived as generic by

the relevant purchasing public of the services for which

applicant seeks to register its mark. Magic Wand Inc. v. RDB

Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991)

(“Thus, a proper genericness inquiry focuses on the

description of services set forth in the [application] … The

precedents of this court both before and after the 1984 Act

have consistently applied the traditional purchaser

understanding test. For example, this court has stated that

whether a term is entitled to trademark status turns on how

the mark is understood by the purchasing public.”)(emphasis

added); In re Montrachet S.A., 878 F.2d 375, 11 USPQ2d 1393,

1394 (Fed. Cir. 1989) (“Whether a term is entitled to

trademark status turns on how the mark is understood by the

purchasing public.”) (emphasis added); In re Northland

Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963

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Serial No. 75/215,519

(Fed. Cir. 1985) (“The descriptiveness of the term is

determined from the viewpoint of the relevant purchasing

public.”) (emphasis added).

Applicant does not seek to register the mark shown below

for the rendering of plastic surgery services, facial or

otherwise. If it did, then the relevant purchasing public

would be those ordinary Americans who have had plastic surgery

or who are contemplating having plastic surgery. Rather,

applicant seeks to register the mark shown below for training

in plastic facial surgery; promoting the interests of facial

plastic surgeons; and indicating membership in an association

of facial plastic surgeons.

The majority totally fails to acknowledge that the

relevant purchasing public of the services for which applicant

seeks to register the above mark are plastic surgeons. All of

the evidence cited by the majority relates to how ordinary

Americans perceive not applicant’s mark, but rather the term

“facial plastic surgery” per se. The USPTO has presented no

evidence, much less clear and substantial evidence, showing

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Serial No. 75/215,519

that plastic surgeons perceive the above mark as anything

other than applicant’s source identifier.

Moreover, even with regard to its extremely specialized

services directed solely to facial plastic surgeons, applicant

does not seek any rights whatsoever in the words “facial

plastic surgery” per se. Indeed, applicant has explicitly

disclaimed all rights in these words.

The number of plastic surgeons in general is extremely

limited, and the number of facial plastic surgeons is even

more limited. The American Academy of Facial Plastic and

Reconstructive Surgery (applicant) has just 2,700 physician

members. The other national organization of plastic surgeons,

who do not limit their practice to the face, is the American

Society of Plastic and Reconstructive Surgeons, Inc. (ASPRS).

The ASPRS has approximately 5,000 members. The extremely

limited numbers of plastic surgeons in general (including

facial plastic surgeons) is further reflected in a survey

commissioned by the ASPRS which showed that in 1997, there

were fewer than 530,000 plastic surgeries performed in the

United States.

The record reflects that applicant has used the mark

which it seeks to register continuously for 14 years. More

importantly, in recent years applicant has spent on an annual

basis approximately $175,000 in advertising and promoting the

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Serial No. 75/215,519

mark which it seeks to register. These advertising and

promotion dollars have been aimed at an extremely tiny target,

namely, applicant’s mere 2,700 members and an additional

14,000 physicians who practice in the field of plastic

surgery. While the record does not reflect the total number

of physicians who are engaged primarily or exclusively in

plastic surgery, a reasonable assumption is that said number

is decidedly less than 25,000. This assumption is based on

the fact that applicant has 2,700 members; that the other

national association of plastic surgeons (ASPRS) has

approximately 5,000 members; and on the fact that applicant

targets its advertising and promotion dollars to but a mere

16,700 physicians. In addition, the previously mentioned

study commissioned by the ASPRS demonstrated that in 1997,

there were fewer than 530,000 plastic surgeries performed in

the United States. Thus, it is quite reasonable to assume

that there are decidedly fewer than 25,000 plastic surgeons in

the United States. If there were as many as 25,000 plastic

surgeons, then this would mean that a typical plastic surgeon

would perform on average but 21 plastic surgeries per year.

However, even if we were to assume that there are 25,000

plastic surgeons in the United States, this is but a tiny

fraction of 1% of the overall United States population, which

is well in excess of 250 million. In other words, the overall

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Serial No. 75/215,519

United States population is well over 10,000 times the size of

the largest conceivable number of plastic surgeons in the

United States. This is quite significant in putting into

proper perspective the $175,000 which applicant spends

annually to promote the mark which it seeks to register.

Multiplying 10,000 by $175,000 makes for an advertising and

promotion budget of $1.75 billion. Stated somewhat

differently, applicant’s annual $175,000 advertising and

promotion budget targeted to a very narrow group of

individuals (plastic surgeons) is the equivalent of an annual

$1.75 billion advertising and promotion budget for a popular

consumer product utilized by most Americans. Of course, such

extrapolations are not to be taken as precise or a reflection

of exactly what happens in the real world marketplace.

However, they do put into some perspective the magnitude of

applicant’s annual advertising and promotion budget of

$175,000 directed to plastic surgeons.

In footnote 5, the majority argues that it might be

possible that “significantly less” than the $175,000

advertising and promotional budget is directed to plastic

surgeons. The majority bases this assertion on two factors.

First, the majority states that over 30% of the $175,000 is

spent on a brochure bearing the mark, copies of which are

purchased from applicant. The majority then notes that

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Serial No. 75/215,519

applicant’s Executive Vice President did not indicate who

purchased the brochures, the implication being that the

brochures were not purchased by applicant’s member facial

plastic surgeons. A review of applicant’s short seven-page

brochure titled Understanding Facial Plastic Surgery makes it

readily apparent that this brochure is a sales tool which is

used by applicant’s member facial plastic surgeons in

attempting to promote their services to existing and

prospective patients. Indeed, the first sentence in the

brochure reads as follows: “Appearance plays a big role in the

lives of most people.” The brochure then goes on to tout the

benefits of facial plastic surgery. It is utterly ludicrous

to think that patients contemplating facial plastic surgery

would, or even could, purchase from applicant (an organization

located solely in Alexandria, Virginia) a sales tool promoting

the benefits of facial plastic surgery. Rather, it is obvious

that applicant sells these sales tools to its members (facial

plastic surgeons) to assist them in marketing their services.

Thus, these brochures (sales tools) are sold by applicant to

its members who in turn distribute them to patients and

prospective patients. The important point to remember is that

these sales tools prominently display applicant’s mark which

is seen by applicant’s member facial plastic surgeons.

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Serial No. 75/215,519

Second, in a further effort to minimize applicant’s

$175,000 advertising and promotion budget directed to plastic

surgeons, the majority in footnote 5 states that “an

unspecified part of applicant’s budget [$175,000] is spent on

exhibitor prospectuses (whose cost to prepare and to mail is

not indicated) mailed to 350 companies (who exhibit at

applicant’s meetings) four times a year.” In his statement,

applicant’s Executive Vice President carefully breaks down

applicant’s $175,000 advertising and promotion budget. The

$175,000 advertising and promotion budget does not include any

amount spent on exhibitor prospectuses, which total but a mere

1,500 copies per year. Rather, the $175,000 advertising and

promotion budget is devoted to over 325,000 pieces of

literature which prominently feature applicant’s mark and

which are distributed or sold solely to applicant’s members or

prospective members, all of whom are plastic surgeons.

In view of the magnitude of applicant’s advertising and

promotion budget and the fact that applicant has continuously

used its mark for 14 years, it comes as no surprise that

applicant was able to make of record literally dozens of

letters from plastic surgeons stating that they recognize the

mark which applicant seeks to register as indicating applicant

and the services it provides. More importantly, applicant’s

2,700 members have spoken not just with words, but with

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Serial No. 75/215,519

actions. To be more precise, the record is replete with

hundreds of Yellow Page advertisements placed by applicant’s

members which prominently feature the mark applicant seeks to

register followed by the TM symbol. Applicant’s members,

through their actions, have demonstrated that they truly

believe that the mark which applicant seeks to register is a

vital source identifier which distinguishes them as having met

certain minimum qualifications in facial plastic surgery.

Indeed, applicant has also made of record dozens of letters

from patients who indicate that they selected one of

applicant’s members based upon the presence of applicant’s

mark in a Yellow Page advertisement as an indication that the

member was indeed affiliated with applicant.

These Yellow Page advertisements placed by applicant’s

members containing the mark applicant seeks to register are

quite powerful evidence showing that applicant’s members view

this mark as a source identifier for two reasons. First,

unlike a newspaper advertisement which may have life of only

one or two days, a Yellow Page advertisement has a life of

approximately one year. Second, applicant has submitted a

survey demonstrating that 82% of those individuals who have

had or are likely to have plastic surgery consult the Yellow

Pages in seeking a plastic surgeon.

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Serial No. 75/215,519

Based on this record in its totality, applicant has

clearly established that at least among plastic surgeons, the

mark depicted below has become recognized as indicating

applicant and the services which it provides to plastic

surgeons.

The majority characterizes the above mark as being

“clearly nondistinctive.” In this regard, it is interesting

to view the mark of the ASPRS, the other national organization

of plastic surgeons. This mark is reproduced below. Given

the fact that the mark of the ASPRS consists of the most basic

of geometric designs (a circle) with but two breaks, I presume

that the majority would likewise characterize said mark as

“clearly nondistinctive.” However, a review of the Yellow

Page advertisements made of record by applicant demonstrate

that members of the ASPRS, like members of applicant, have

“put their money where their mouth is” in that both marks

appear prominently in literally hundreds of Yellow Page

advertisements.

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Serial No. 75/215,519

As stated earlier in this opinion, the relevant

purchasing public of the services for which applicant seeks to

register its mark are plastic surgeons. The predecessor to

our primary reviewing Court has held that physicians are “a

highly intelligent and discriminating public.” Warner Hudnut,

Inc. v. Wander Co., 280 F.2d 435, 126 USPQ 411, 412 (CCPA

1960). I am of the firm belief that highly intelligent and

discriminating plastic surgeons have during the past 14 years

come to recognize the mark which applicant seeks to register

as indicating applicant and the services which applicant

provides to plastic surgeons. The majority cites numerous

cases where generic terms depicted in various stylized manners

were denied registration. However, all of these cases

involved consumer products purchased by ordinary Americans who

are not as astute and discriminating as are plastic surgeons.

Moreover, the purchase of consumer products does not involve

nearly the degree of care which plastic surgeons would

exercise before joining applicant and partaking of its

training and membership services.

As an aside, I also believe, based on this record, that

ordinary Americans who have had plastic surgery or are

contemplating having plastic surgery have also come to

recognize applicant’s mark as indicating applicant and as

indicating that a particular plastic surgeon is a member of

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Serial No. 75/215,519

applicant. However, whether this latter contention is correct

or not is totally irrelevant. The views of ordinary consumers

who have had plastic surgery or who are contemplating having

plastic surgery are of no consequence when applicant is

seeking to register its mark solely for services directed to

plastic surgeons. Plastic surgeons are the only relevant

purchasing public in determining whether applicant’s mark

functions as a source identifier. For plastic surgeons,

applicant’s mark clearly functions as a source identifier for

training in plastic facial surgery; promoting the interests of

facial plastic surgeons; and indicating membership in an

association of facial plastic surgeons.

One final comment is in order. The majority correctly

quotes Professor McCarthy when he states the following: “The

potential competitive danger of such logo registrations of

generic names is that the owners of such registrations

sometimes have an inflated notion of the scope of their

exclusive rights and assert them against competitors as if

they owned the generic name displayed in the registration.” 2

J. McCarthy, McCarthy on Trademarks and Unfair Competition

Section 12:40 at page 12-82 (4 th ed. 2001) (emphasis added).

As Professor McCarthy’s statement suggests, to every general

rule, there are a few exceptions, and this case presents one

of them. The number of organizations offering training in

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Serial No. 75/215,519

facial plastic surgery, promoting the interests of facial

plastic surgeons and indicating membership in an association

of facial plastic surgeons is extremely limited. Indeed, this

very voluminous record indicates that there is but one other

organization which provides somewhat similar services. This

is the ASPRS whose 5,000 member plastic surgeons do not limit

their practice to the face. Should applicant obtain a

registration for its mark, I find it absolutely ludicrous to

think that applicant could use this registration to frighten

the ASPRS or other professional organizations into refraining

from using the words “facial plastic surgery,” especially when

applicant has explicitly disclaimed all rights in these words,

and this disclaimer would appear on any registration obtained

by applicant. The number of “competitors” of applicant

offering the same or similar services for which applicant

seeks registration is extremely limited, and by their very

nature, these services would be offered only by and to “a

highly intelligent and discriminating public.” Warner Hudnut,

126 USPQ at 412.

The issue before this Board is not whether some 14 years

ago applicant’s mark was perceived by the relevant purchasing

public (plastic surgeons) as a source identifier. Rather, the

issue before this Board is whether applicant’s mark, in its

entirety, now functions as a source identifier to the relevant

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Serial No. 75/215,519

purchasing public (plastic surgeons). In re Montrachet S.A.,

878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989). As

previously noted, I am of the firm belief that highly

intelligent and discriminating plastic surgeons now view

applicant’s mark in its entirety as a source identifier

identifying applicant and its highly specialized services

directed solely to plastic surgeons.

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