The opinion
THIS OPINION IS A PRECEDENT
OF THE TTAB
Mailed: March 22, 2007
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Council on Certification of Nurse Anesthetists
________
Serial No. 75722091
_______
Julia M. Chester of Sidley Austin Brown & Wood LLP for The
Council on Certification of Nurse Anesthetists.
Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Hairston and Cataldo, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
The Council on Certification of Nurse Anesthetists seeks
registration on the Principal Register pursuant to Trademark
Act Section 2(f) of the designation CRNA as a certification
mark for the following services in International Class B:
The rendering and administering by certified
registered nurse anesthetists of anesthesia and
anesthesia-related care in performing and
documenting a preanesthetic assessment and
evaluation of the patient, namely requesting
consultations and diagnostic studies; selecting,
obtaining, ordering and administering preanesthetic
medications and fluids; obtaining informed consent
for anesthesia; developing and implementing an
Ser No. 75722091
anesthetic plan; initiating general, regional and
local anesthesia, and sedation; selecting, applying,
and inserting appropriate non-invasive and invasive
monitoring modalities for continuous evaluation of
the patient’s status; selecting, obtaining, and
administering the anesthetics, adjuvant and
accessory drugs, and fluids necessary to manage the
anesthetic; managing a patient’s airway and
pulmonary status using current practice modalities;
managing emergence and recovery from anesthesia by
selecting, obtaining, ordering, and administering
medications, fluids, and ventilatory support;
discharging the patient from a postanesthesia care
area and providing postanesthesia follow-up
evaluation and care; implementing acute and chronic
pain management, administration of emergency fluids
and drugs, and using basic or advanced cardiac life
support techniques; additional nurse anesthesia
responsibilities, namely, administration and
management, quality assessment, education and
teaching, research, committee appointments,
interdepartmental liaison and clinical
administration and oversight of other departments.1
Applicant’s certification statement reads as follows:
“The certification mark, as used by an authorized person,
certifies that the person is a registered nurse who has met
certain predetermined and objective standards and requirements
for providing such nurse anesthesia services.”
1
Application Serial No. 75722091, filed June 4, 1999, alleging
dates of first use of May 1957.
2
Ser No. 75722091
The trademark examining attorney refused registration on
the ground that applicant’s use of the designation CRNA on the
specimens of record conveys only the commercial impression of
a title or degree and, thus, does not function as a
certification mark. In addition, the examining attorney
refused registration on the ground that the designation CRNA
is either a generic term for the identified services, or in
the alternative, that the designation is at least merely
descriptive of such services and the showing of acquired
distinctiveness furnished by applicant is insufficient to
establish that CRNA has become distinctive of the services.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney have filed briefs;
applicant filed a reply appeal brief.
Refusal Based on Failure of CRNA to Function as a
Certification Mark
Summary of arguments
The examining attorney essentially contends that the
designation CRNA, as used on the specimens of record, is not
used as a certification mark, but only identifies a title or
degree conferred, and thus CRNA fails to function as a
certification mark, and is not registrable as a mark under
Sections 4 and 45 of the Trademark Act. The examining
attorney maintains that the question whether the designation
CRNA functions as a certification mark is determined by the
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Ser No. 75722091
specimens of use, and that none of the various items submitted
as specimens by applicant show use of CRNA as a certification
mark. Rather, according to the examining attorney, at most,
certain of the specimens show use of CRNA as the title of the
person whose name is followed by the designation.
Applicant, on the other hand, argues that it has
submitted many specimens that show use of CRNA as a
certification mark. According to applicant, the use of CRNA
on these specimens is not merely as a title or degree, but
rather an indication that the services set forth in the
application are rendered by a person certified by applicant.
Applicant argues that the specimens which it has submitted are
not unlike specimens which the USPTO found to be acceptable in
other certification mark applications. In this regard,
applicant has submitted copies of five third-party
certification mark registrations, along with copies of the
specimens submitted in connection with the respective
underlying applications for registration.
Discussion and Decision
A certification mark is defined in Section 45 of the
Trademark Act, 15 U.S.C. §1127, as follows:
The term “certification mark” means any word, name, symbol, or
device, or any combination thereof—
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a
person other than the owner to use in commerce and
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Ser No. 75722091
files an application to register on the principal
register established by this Act, to certify regional
or other origin, material, mode of manufacture,
quality, accuracy, or other characteristics of such
person’s goods or services or that the work or labor
on the goods or services was performed by members of a
union or other organization.
As explained in TMEP §1306.03 (Fourth Edition 2005) (case
citations omitted):
A certification mark may be used to certify that the
work or labor on the goods or services was performed
by a member of a union or other organization, or by
a person who meets certain standards and tests of
competency set by the certifier. 15 U.S.C. §1127.
The certifier does not certify the quality of the
work being performed, but only that the work was
performed by a member of the union or group, or by
someone who meets certain standards. Used in this
manner, the mark certifies a characteristic of the
goods or services. Whether or not specific matter
functions as a certification mark depends on whether
the matter is used in connection with the goods or
services in such a manner that the purchasing public
will recognize it, either consciously or
unconsciously as a certification mark.
Occasionally, it is not clear whether a term is
being used to certify that work or labor relating to
the goods or services was performed by someone
meeting certain standards or by members of a union
or other organization to indicate membership or
whether the term is merely being used as a title or
degree of the performer to indicate professional
qualifications. Matter that might appear to be
simply a title or degree may function as a
certification mark if used in the proper manner.
Professor J. Thomas McCarthy explains proper use of a
certification mark at 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §19.93 (4th ed. November
2006) as follows (footnotes omitted):
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Ser No. 75722091
For a symbol to be registrable as a certification
mark, that symbol must, by its nature and use,
function such that buyers are likely to recognize
the symbol as a symbol of guarantee or
certification. For example, a designation
indicating that a merchant is the recipient of a
title or degree must be used in such a way as to
indicate certification. But the use of such a
designation in a way that would not normally be
perceived by consumers as a certification mark will
not be registrable.
…..
The rationale of the Patent and Trademark Office is
that titles and degrees (such as Professor,
Professional Engineer, Certified Dietician, JD, CPA,
and MD) are not used to certify goods and services
when used only to convey “personal information about
the individual and certify some characteristic only
about the individual’s achievement” rather than
certifying the characteristics of services rendered
by that individual. The focus should be on the
manner of use of the alleged mark by persons whose
work is allegedly certified and the likely
perception of that use by customers of those
services.
A certification mark for goods must be used in a
manner analogous to that required for trademarks,
namely on the goods or their containers or on
displays associated therewith. Similarly, a
certification mark for services must be used in a
manner analogous to that of a service mark, namely
in the sale or advertising of the services rendered.
At the outset, we note that the examining attorney does
not dispute that applicant is engaged in certifying nurse
anesthetists in anesthesia and anesthesia-related care.
However, the question whether the designation applicant seeks
to register serves as a certification mark must be determined
on the basis of the manner and context in which the
designation is used, as revealed by the specimens and other
literature of record, and the significance which the
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Ser No. 75722091
designation is likely to have to members of the relevant
public because of the manner in which it is used. In order
for an applicant to obtain registration of a certification
mark, it should be clear from the record that the
circumstances surrounding the use and promotion of the mark
will give certification significance to the mark in the
marketplace. See In re National Association of Legal
Secretaries (International), 221 USPQ 50 (TTAB 1983). That
is, when an applicant seeks registration of a certification
mark, it is the use by persons other than the owner of the
mark, subject to the owner’s control, which is the primary
consideration in determining how members of the relevant
public will perceive the mark.
In this case, applicant offered many materials as
evidence of its use of CRNA as a certification mark. They
include copies of publications titled “Certification
Examination for Nurse Anesthetists 1999 Candidate Handbook;”
“Competency Assessment Models: Certified Registered Nurse
Anesthetist;” “Scope and Standards for Nurse Anesthetists;”
“Guidelines for Clinical Privileges;” and “Qualifications and
Capabilities of the Certified Registered Nurse Anesthetist.”
In addition, applicant submitted a photograph of a person
wearing both a baseball cap with the designation CRNA and an
apron with the wording “It’s in the bag with a CRNA”;
shoelaces with the designation CRNA in a repeating pattern; a
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Ser No. 75722091
badge with the wording “CRNAs ON THE MOVE”; a pin with the
wording “CRNA PAC SENATORIAL” superimposed over a
representation of the United States Capitol; and a copy of a
promotional sheet for the “CRNAs Caring for America Campaign”
accompanied by a campaign button with the slogan “CRNAS CARING
FOR AMERICA.”
Applicant also submitted a sample certificate of the type
it awards to certified registered nurse anesthetists.
This certificate reads, in pertinent part:
Council on Certification of Nurse Anesthetists
Be it known that
Jane Doe, CRNA
having satisfied the requirements for
Certification
as prescribed by The Council on Certification of Nurse
Anesthetist is now entitled to recognition as a
Certified Registered Nurse Anesthetist
In Witness thereof, I the Chairman of the Council on
Certification of Nurse Anesthetists have caused the official
seal of the Council on Certification of Nurse Anesthetists to
be hereto affixed.
According to applicant, certified registered nurse
anesthetists display these certificates at their places of
business. In addition, applicant submitted a sample
certification card of the type it awards to certified
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Ser No. 75722091
registered nurse anesthetists. This card reads, in pertinent
part:
Council on Certification of Nurse Anesthetists
Certification No. Date of Issue
000000 April 24, 2001
Eligible to apply for Recertification on: 7/31/2003
Jane M. Doe, CRNA
The CCNA verifies that the above individual has met the
requirements for Certification and may be known as a
Certified Registered Nurse Anesthetist.
Along with these items, applicant submitted a copy of a
brochure that includes questions and answers about anesthesia
and a health questionnaire for patients undergoing anesthesia.
According to applicant, certified registered nurse
anesthetists also display these brochures
at their places of business. The front of this brochure
features a picture of a medical professional and reads:
Anesthesia
Certified
Registered
Nurse
Anesthetists
answer your questions
One of the questions in the brochure is “Who administers
anesthesia?” and the response states, inter alia, that “CRNAs
are advanced practice nurses with specialized graduate-level
education in anesthesiology.”
In the case of In re National Association of Legal
Secretaries, supra, the applicant therein sought to register
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Ser No. 75722091
the designation PROFESSIONAL LEGAL SECRETARY as a
certification mark attesting to “the ability of a certificate
holder to perform as a professional legal secretary.” The
only specimen submitted was a business size card which read
“National Association of Legal Secretaries certifies that
[name of qualifying member] is a Professional Legal
Secretary,” accompanied by appropriate organizational
signatures. In finding that this specimen was unacceptable,
the Board stated at 221 USPQ 51:
Although applicant contends that the foregoing
language “advertises to the prospective employer the
quality of the secretary’s services,” we conclude
that it comes much closer to attesting that the
cardholder has been awarded the title of
“PROFESSIONAL LEGAL SECRETARY” by applicant with
little else assumable by fair inference; nor does
the record show, through other evidence or
documentation, that a message as to service
capability certification would be thereby
communicated to prospective employers or other
service purchasers. While it is true that the
“PROFESSIONAL LEGAL SECRETARY” designation does not
appear as a title or degree following the member’s
name on a letterhead [as was the case of “CERTIFIED
PROFESSIONAL PHOTOGRAPHER” in In re Professional
Photographers, supra], or on a business card [as
with “C.P.B.C.” in the recent case of In re
Institute of Certified Professional Business
Consultants, 216 USPQ 338, Serial No. 206,007 (slip
opinion, May 13, 1983)], the bare declaration that
the holder is a PROFESSIONAL LEGAL SECRETARY” fails,
in our view, to convey the impression that
PROFESSIONAL LEGAL SECRETARY is a certification
mark.
In the case of In re National Institute for Automotive
Service Excellence, 218 USPQ 744 (TTAB 1983), the applicant
therein sought to register a design mark as a certification
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Ser No. 75722091
mark for automotive repair services. The specimens submitted
with the application consisted of cloth insignia with the
design mark appearing thereon and the cloth insignia was said
to be worn by individuals certified by applicant. In finding
these specimens acceptable evidence of certification mark use,
the Board distinguished this case from those involving word
designations or a combination of letters used immediately
after the name of an individual in the manner of a title or
degree:
In the instant case, applicant’s mark sought to be
registered is obviously not a word designation, or a
combination of letters, shown by the specimens of
record to be used immediately after the name of an
individual in the manner of a title or degree. To
the contrary, the mark is a design mark which is not
used in conjunction with the name of an individual
at all.
Further, the record shows that in order to qualify
to use the mark, a mechanic must meet certain
standards set by applicant as to experience and
training and must pass a test conducted by applicant
for each area of automotive mechanics (e.g., engine
repair, brakes, electrical systems, etc.) in which
he desires to be certified as competent. In order
to maintain his certification, he must retake and
pass the test or tests every five years thereafter.
According to applicant’s literature, applicant’s
certification program, which is voluntary, tests “at
a high level of competency, based on difficult,
meaningful tests of mechanics’ skill and knowledge.”
In our opinion, applicant’s design mark, when used
by an automotive mechanic certified by applicant,
serves to certify a characteristic of the automotive
repair services performed by him, namely, that the
services are being performed by a person who meets
certain standards and tests of competency set by
applicant, an indication that the services may be of
better quality than automotive repair services
performed by a person who has not been certified by
applicant.
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Ser No. 75722091
Further, the Board’s decision in American Speech-
Language-Hearing Association v. National Hearing Aid Society,
224 USPQ 798 (TTAB 1984) is instructive. In that case, the
petitioner sought to cancel the registration of the collective
membership mark NATIONAL HEARING AID SOCIETY CERTIFIED HEARING
AID AUDIOLOGIST on the ground that, inter alia, the
registration was invalid because the mark was not being used
as a collective membership mark. In holding that the mark was
not being used as a collective membership mark, the Board
commented that the manner in which the mark was used might
qualify it to be a certification mark:
The specimens comprise a certificate with the mark
appearing on the lower right hand portion of the
certificate. Respondent’s name appears across the
top of the certificate and below respondent’s name
is the following verbiage:
”NATIONAL BOARD for CERTIFICATION
To all those who witness these presents, be it known
that: [Name of Individual]
having complied with the requirements of the
National Board for Certification of the National
Hearing Aid Society, an organization fostering,
stimulating, and maintaining high standards of
technical competence and ethical practices on the
part of those engaged in the fitting and servicing
of hearing aids, is hereby declared to be a
“CERTIIFIED HEARING AID AUDIOLOGIST”
An identical specimen certificate was filed in
connection with respondent’s Section 8 affidavit.
Article VIII of the respondent’s By Laws provides
for the establishment of the Board of Governors and
states that the duties of the Board shall be to
evaluate and pass on the qualifications of all
applicants for certification; and that all certified
members shall be furnished with an appropriate
certificate evidencing such certification. As for
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Ser No. 75722091
the requirements for certification, a pamphlet
entitled Certification by the National Hearing Aid
Society made of record indicates that certification
is granted only to those who have met strict
standards of education, experience, competence and
character. Under the heading “CERTIFICATION,” the
text reads: “The title, Certified Hearing Aid
Audiologist, is granted only to those hearing aid
dealers who have met exacting requirements
established by the National Hearing Aid Society.”
Requirements include completion of the respondent’s
course in hearing aid audiology or an equivalent
approved course; passage of respondent’s
comprehensive examination or an equivalent approved
examination; proof of two years experience in the
fitting of hearing aids; submission of three
references to the applicant’s competence in the
hearing aid field; submission of character and
financial references; agreeing to abide by
respondent’s Code of Ethics; and submission of all
advertising for 30 days prior to application, as
proof of ethical advertising procedures.
In our opinion, the specimens and exhibits referred
to above indicate that the mark may well be serving
as a certification mark as defined in Section 45 of
the Act.
Id. 224 USPQ 807.
In the case of In re National Association of Purchasing
Management, 228 USPQ 768 (TTAB 1986), the applicant therein
sought to register the acronym C.P.M. as a certification mark
for “management of purchasing and materials.” As evidence of
certification mark use, the applicant submitted the business
cards of two purchasing managers on which C.P.M. appeared, a
four-page brochure titled “Professional Certification for
Purchasing Managers – Application for Certification,” an
information booklet for applicants taking the qualifying
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Ser No. 75722091
examination for certified purchasing managers, and other
informational materials. The Board stated at 228 USPQ 769:
Whether subject matter functions as a title or
degree or as a certification mark for services must
be determined from the context in which it is used,
as revealed by the specimens of record, and how it
is perceived by prospective recipients of the
services, the characteristics of which are
certified. (case citation omitted) Since it is the
use by persons other than the owner (appellant),
subject to the owner’s control, which is the primary
consideration in determining prospective recipients’
perceptions, the issue whether the subject matter
functions as a certification mark turns largely on
the nature of its use on materials advertising the
services which are directed to recipients by the
authorized users.
Insofar as the business cards were concerned, the Board
held that the use of C.P.M. thereon “function[ed] solely as a
title or degree and not as a certification mark.” Id. p. 770.
As to the brochure, information booklet and other
informational materials, the Board stated at 228 USPQ 769, n.
7, “[such] evidence herein concerns applicant’s promotion of
the certification program to prospective users of the acronym.
This evidence has little bearing on how the ultimate
recipients perceive it.” (citation omitted).
Finally, in the recent case of In re Software Publishers
Association, 69 USPQ2d 2009 (TTAB 2003), the applicant therein
sought to register the term CERTIFIED SOFTWARE MANAGER as a
certification mark for “software asset and licensing
management.” Applicant submitted as a specimen a copy of a
certificate issued to a person who completed applicant’s
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Ser No. 75722091
course. The certificate read “This certificate is awarded to
Pamela Pankiewicz for successfully completing the requirements
to become a Certified Software Manager.” The Board stated, at
69 USPQ2d 2014-2015, that “the only information indicating use
of the designation CERTIFIED SOFTWARE MANAGER is the
certificate reproduced earlier herein” and “[t]he language on
applicant’s specimen and the context thereof merely indicates
that the holder has been awarded the title or degree of
“Certified Software Manager,” and is not likely to be
perceived by the relevant purchasers as a certification mark.”
Unlike the applicant in In re Software Publishers
Association, supra, the applicant herein has submitted many
specimens and other materials. Turning then to the various
specimens, the problem with the baseball cap, apron, badge,
pin, shoelaces, and material used in the CRNAS FOR AMERICA
campaign is that these items are evidence merely of
applicant’s promotion or use of the term CRNA, but without any
indication of what the term is identifying (other than the
actual goods on which CRNA is used). Further, even if we were
to view these items and materials as a promotion of
applicant’s certification program, they promote the term CRNA
to prospective authorized users of the designation CRNA, i.e.,
nurse anesthetists. These items/materials are similar in
nature to the information booklet and materials submitted by
the applicant in In re National Association Purchasing
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Ser No. 75722091
Management, supra. Such evidence is not persuasive of how the
designation CRNA is perceived by the ultimate recipients of
the services, i.e., surgical patients.
However, applicant has submitted a sample of the
certificate which it issues to certified registered nurse
anesthetists. The certificate indicates that the holder
thereof, a CRNA, has satisfied the requirements for
certification by applicant and is entitled to recognition as a
Certified Registered Nurse Anesthetist. Also, applicant has
submitted a copy of a brochure which includes a statement that
CRNAs are “advanced practice nurses with specialized graduate-
level education in anesthesiology.” Further, according to
applicant, these certificates and brochures are displayed by
certified registered nurse anesthetists at their places of
business. In addition, the record shows that in order to
qualify to use the CRNA designation, a nurse anesthetist must
meet certain eligibility requirements set by applicant and
pass a certification examination conducted by applicant. The
examination covers the areas of “Basic Sciences”, “Equipment,
instrumentation, and technology”, “Basic principles of
anesthesia”, “Advanced principles of anesthesia,” and
“Professional issues.” In order to maintain his/her
certification, a certified registered nurse anesthetist must
earn 40 continuing education credits within two years of
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Ser No. 75722091
initial certification. Further, applicant’s “Candidate
Handbook” states at page 3, that:
Credentialing provides assurances to the public that
certified individuals have met objective,
predetermined qualifications for providing nurse
anesthesia services. While state licensure provides
the legal credential for the practice of
professional nursing, private voluntary
certification indicates compliance with the
professional standards for practice in this clinical
nursing specialty. The certification credential for
nurse anesthetists has been institutionalized in
many position descriptions as a practice requirement
or as the standard for demonstrating equivalency.
It has been recognized through malpractice
litigation, selected State Nurse Practice Acts, and
state rules and regulations.
Also, we note that applicant states in a paper titled
“Qualifications and Capabilities of the Certified Registered
Nurse Anesthetist” that “[a]s one of the first nursing
specialty groups, CRNAs have a longstanding commitment to high
standards in a demanding field. As independently licensed
health professionals, CRNAs are responsible and accountable
for their practice.”
The sample certificate, brochure and above literature are
similar in nature to the items and material submitted by the
applicant in In re National Institute for Automotive Service
Excellence, supra. That is, in this case, applicant’s
literature shows that in order to qualify to use the CRNA
designation, a nurse anesthetist must meet certain standards
and take and pass a test. In addition, in order to maintain
17
Ser No. 75722091
certification, the nurse anesthetist must retake and pass a
test.
Further, as evidenced by the certificate, the CRNA
designation is used in conjunction with the wording “having
satisfied the requirements,” and the CRNA designation is
displayed in a manner that it would be viewed by the ultimate
recipients of the services.
We find that the sample certificate, brochure and above
literature indicate that the CRNA designation serves as a
certification mark. The CRNA designation, when used by a
nurse anesthetist certified by applicant, serves to certify a
characteristic of anesthesia services performed by him/her,
namely that the services are being performed by a person who
meets certain standards and tests of competency set by
applicant, an indication that the nurse anesthesia services
being performed are of the highest quality. Applicant has
stated that the certificate and brochure, in particular, are
displayed by certified registered nurse anesthetists at their
places of business. The certificate and brochure, along with
applicant’s literature concerning its standards and competency
tests, serve to demonstrate that the CRNA designation would be
perceived as a certification mark by the ultimate recipients
of the services, namely surgical patients, and doctors and
hospital administrators.
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Ser No. 75722091
Accordingly, we reverse the refusal on the ground that
the CRNA designation fails to function as a certification
mark.
Refusal Based on Genericness of CRNA or, in the alternative,
Mere Descriptiveness and Failure to Acquire Distinctiveness
Having found that the designation CRNA functions as a
certification mark, we turn then to the remaining issues in
this case, that is, whether CRNA is generic of the identified
services, and if not, whether the showing of acquired
distinctiveness furnished by applicant is sufficient to
establish that the designation has become distinctive of the
services.2
Summary of Arguments
It is the examining attorney’s position that the term
CRNA is “merely a generic designation for a certified
registered nurse anesthetist.” (Final office action,
6/21/03). According to the examining attorney, the record
evidences that applicant and third parties use the
designation CRNA in a generic manner in connection with the
identified services. With respect to applicant’s claim of
acquired distinctiveness, the examining attorney argues that,
even assuming that the designation CRNA is not generic,
applicant’s evidence fails to demonstrate that the
2
We note that mere descriptiveness is not an issue since applicant
seeks registration under the provisions of Section 2(f).
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Ser No. 75722091
designation CRNA has become distinctive of the identified
services.
Applicant, on the other hand, contends that the examining
attorney has not established by clear evidence that the
designation CRNA is a generic term for the identified
services. Applicant argues that the uses of CRNA in the
materials made of record by the examining attorney are
references to individuals who are authorized by applicant to
use the CRNA designation. Further, applicant argues that it
has presented substantial evidence to demonstrate that the
designation CRNA has become distinctive of the identified
services.
Discussion and decision
“A generic term is the common descriptive name of a class
of goods or services . . .” H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528, 530 (Fed. Cir. 1986). The critical issue in
genericness cases such as this one is whether members of the
relevant public primarily use or understand the term sought to
be registered to refer to the genus of goods or services in
question. Our primary reviewing court has set forth a two-
step inquiry to determine whether a mark is generic: First,
what is the genus (category or class) 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
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Ser No. 75722091
(category or class) of goods or services? 228 USPQ at 530.
The burden of proving genericness falls on the trademark
examining attorney, who must present “clear evidence of
generic use.” See In re Merrill Lynch, Pierce, Fenner, and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
With respect to the first part of the inquiry, the
services which applicant certifies are identified as the
rendering and administering by certified registered nurse
anesthetists of anesthesia and anesthesia-related care. Thus,
in this case, the genus or class of services is essentially
anesthesia services rendered and administered by certified
registered nurse anesthetists. Next, the relevant public for
these services consists primarily of the ultimate recipients
of the services, i.e., surgical patients, and doctors and
hospital administrators.
This brings us to the question whether the relevant
public, that is, surgical patients, doctors and hospital
administrators, would understand the designation CRNA
primarily to refer to anesthesia services rendered and
administered by certified registered nurse anesthetists.
Neither the examining attorney nor applicant specifically
addressed the question whether the term “certified registered
nurse anesthetist,” itself, is generic for the identified
services. Applicant uses the term “certified registered nurse
21
Ser No. 75722091
anesthetist” in a generic manner in its identification of
services. In addition, the term is used in a generic manner
in the brochure given to prospective surgical patients, e.g.,
a statement in the brochure reads “In the majority of cases,
anesthesia is administered by a certified registered nurse
anesthetist (CRNA).” In this case, the term “certified
registered nurse anesthetist” is generic in that it directly
names the services, i.e., “certified registered nurse
anesthetist services.” See In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1995)[BUNDT for
coffee cake held generic]; In re Central Sprinkler Co., 49
USPQ2d 1194 (TTAB 1998) [ATTIC for automatic sprinklers for
fire protection held generic]; and In re Reckitt & Colman,
North America Inc., 18 USPQ2d 1389 (TTAB 1991) [PERMA PRESS
for soil and stain removers held generic]. It would be
reasonable for a surgical patient, doctor or hospital
administrator to refer to such anesthesia and anesthesia-
related care as certified registered nurse anesthetist care.
In view of the foregoing, we find that the term
“certified registered nurse anesthetist” is generic. This
does not end our inquiry, however, because it is not
automatically the case that the initial letters of a generic
term are recognized as being substantially synonymous with
such term. Rather, as the Board discussed in Capital Project
Management Inc. v. IMDISI Inc., 70 USPQ2d 1172, 1179 involving
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Ser No. 75722091
the designation TIA for scheduling analysis services for
construction projects involving time impact analysis:
Whether the initials for this generic term [“time
impact analysis”] should also be deemed generic
presents a separate, yet related issue. In
determining this issue, we must examine whether the
letters “TIA” are generally recognized and used in
the construction field as an accepted abbreviation
for “time impact analysis.”
An abbreviation or initialism of a generic name
which still conveys to the relevant public the
original generic connotation of the abbreviated name
is still generic. Acronyms and initialisms are
often used interchangeably with the full generic
name and recognized as equivalent.
Nonetheless, as the Court of Customs and Patent Appeals,
the predecessor of our principal reviewing court, cautioned
when discussing the question of whether letters that
correspond to the initial letters of a descriptive combination
of words are similarly descriptive in Modern Optics, Inc. v.
Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA 1956):
The letters “CV” are, of course, the initial letters
of the words “continuous vision,” and it is possible
for initial letters to become so associated with
descriptive words as to become descriptive
themselves. (citations omitted) It does not
follow, however, that all initials or combinations
of descriptive words are ipso facto unregistrable.
While each case must be determined on the basis of
the particular facts involved, it would seem that,
as a general rule, initials cannot be considered
descriptive unless they have become so generally
understood as representing descriptive words as to
be accepted as substantially synonymous therewith.
We therefore must review the uses of CRNA in the record.
The examining attorney submitted the results of a search of
the “STANDS4.com” website (which identifies itself as “[t]he
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Ser No. 75722091
source for acronyms and abbreviations”) that indicates CRNA
“stands for” “Certified Registered Nurse Anesthetist;” and
excerpts from three online dictionaries, namely Stedman’s
Medical Dictionary and The American Heritage Dictionary of the
English Language, which show that CRNA is an abbreviation for
“certified registered nurse anesthetist”, and Dorland’s
Medical Dictionary, which shows that CRNA is an abbreviation
for “Certified Registered Nurse Anesthetist.”
The examining attorney also submitted examples from the
Internet regarding uses of the designation CRNA. These uses
of CRNA are from employment agency and medical provider
websites, examples of which are shown below:
GasWork.com – contains job postings for
anesthesiologists and CRNAs.
GasJobs.com – listings of anesthesiologists and
CRNAs.
Gooding Institute of Nurse Anesthesia – Panama City,
FL – RN and CRNA options from Bay Medical Center.
JLR Medical Group – anesthesiologist and CRNAs
providing anesthesia, pain medicine, and critical
care medicine services.
Florida Association of Nurse Anesthetists (FANA) –
represents and promotes CRNAs, nursing, medical
professionals, hospitals, and healthcare facilities
interested in the practice of anesthesia.
Sycamore Anesthesia Services, Ltd. is one of the
largest CRNA and anesthesiologist staffing agencies
in the Midwest. Although based in Illinois, we
specialize in both temporary and permanent
placements nationwide.
(http://www.sas-ltd.com)
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Ser No. 75722091
Our experienced professionals specialize in placing
physicians and CRNA’s nationwide.
(http://www.locumtenens.com)
Need an Anesthesiologist or CRNA to fill your
opportunity.
(http://www.gasjobs.com)
Company Name: J. Allen Health
Location: Not specified, VA USA
Summary: ID GC285 AN group employee position.
3 AN 6 CRNA’s. Call 1:6 Small Community in
Southern VA
(http://mdjobsite.com)
Hattiesburg Clinic
Certified Registered Nurse Anesthetists
Corrine Barbieri, C.R.N.A.
Janet P. Bills, C.R.N.A.
Rodney Brown, C.R.N.A
(no web address provided)
ANESTHESIA
Lauren Velk, CRNA
David Widdekind, CRNA
Michael Barts, CRNA
(http://www.mmhcare.org)
As additional evidence that CRNA is generic, the
examining attorney points to several of applicant’s own uses
of the designation. For example, in applicant’s paper titled
“Competency Assessment Models: Certified Registered Nurse
Anesthetists” (Exhibit A to Applicant’s Response Filed August
6, 2001), the introduction reads:
A profession has a responsibility to assure the
public that its members seek to maintain and improve
their knowledge and skills. With emphasis on the
goal of providing optimal care for patients, the
American Association of Nurse Anesthetists (AANA) is
committed to promoting the accountability and
competence of Certified Registered Nurse
Anesthetists (CRNAs). Setting, disseminating, and
applying standards of high-quality anesthesia
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Ser No. 75722091
education and practice assists CRNAs in providing
the best possible care to patients.
In applicant’s document titled “Qualifications and
Capabilities of the Certified Registered Nurse Anesthetist”
(Exhibit D to Applicant’s Response Filed August 6, 2001), the
introduction reads:
This document has been prepared by the American
Association of Nurse Anesthetists (AANA) to provide
information about the qualifications and
capabilities of Certified Registered Nurse
Anesthetists (CRNAs).
Further, the examining attorney points to a final rule
proposal of the Health Care Financing Administration published
in the Federal Register (Vol. 66, No. 12, January 18, 2001).
According to the examining attorney, CRNA is used in a generic
manner in the following excerpted material:
There have been no studies published within the last
10 years demonstrating any need for Federal
intervention in State professional practice laws
governing CRNA practice. Currently, there is no
reason to require a Federal rule in these conditions
of participation mandating that physicians supervise
the practice of another State-licensed health
professional where there is a statutory provision
authorizing direct Medicare payment for the services
of that health professional.
….
Congress has specified which non-physician health
professionals may receive separate payment for their
professional services (such as CRNAs and nurse
practitioners). In addition, Congress left the
function of licensing these health professionals to
the States. Medicare recognizes the scope of
practice established by the States for these health
professionals. Prior to this final rule, Medicare’s
hospital CoPs did not have Federal requirements for
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Ser No. 75722091
physicians to supervise the practice of another
State-licensed health professional where there is a
statutory provision authorizing direct Medicare
payment for the services of that health
professional, with the sole exception of the Federal
requirement for physician supervision of CRNAs. We
do not believe that there is evidence to support
maintaining a special Federal requirement for
physician supervision of CRNAs.
Applicant, in support of its position that the
designation CRNA is not generic and that the designation has
become distinctive, submitted literature which provides a
brief history of the organization. According to the
literature, the practice of anesthesia is a recognized
specialty within the profession of nursing. The AANA was
formed in 1931, and is the sole professional organization
representing certified registered nurse anesthetists in the
United States. The AANA developed and implemented the
certification program leading to the designation of Certified
Registered Nurse Anesthetist in 1945 and also established a
mechanism for accreditation of nurse anesthesia education
programs in 1952. In 1975, the certification program was
taken over by applicant which has been, since then, the sole
body recognized to certify registered nurse anesthetists in
the United States. Applicant is recognized by the U.S.
Department of Education as a recognized accrediting
association; by the Veterans Health Administration as one of
its accredited business associates; and by Access Group, a
private loan agency which provides loans only for schooling
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Ser No. 75722091
that has been accredited by certain institutions, including
nurse anesthesia programs accredited by applicant. Among the
nation’s medical research hospitals that recognize graduation
and certification of nurses by applicant are the Mayo Clinic
College of Medicine; the Columbia University School of
Nursing; the University of Texas Health Sciences Center; and
the Tufts-New England Medical Center.
In addition, applicant submitted the declaration of its
Director of Certification, Susan S. Caulk. Ms. Caulk states
that the designation CRNA has been used continuously by
applicant since as early as May 1957 in connection with the
certification of nurse anesthetists for the services specified
in the application; that applicant is the only certifying body
in the United States for the nursing specialty of nurse
anesthesia services rendered by certified registered nurse
anesthetists; that applicant has continuously administered
exams under the CRNA mark annually from 1957 and to date
approximately 40,000 persons have been certified; that
applicant uses the mark on stationery, brochures,
announcements for exams, actual exams and certificates issued
to qualifying persons; and that the mark is a primary and
critically important means by which the medical and nursing
profession identifies and distinguishes those capable of
licensure and practice of nurse anesthesia services in a
clinical setting.
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Ser No. 75722091
Also, applicant submitted the declaration of Wade Delk,
executive director of the National Organization for Competency
Assurance (NOCA). This organization develops criteria and
standards for health certifying agencies. According to Mr.
Delk, applicant is a member of and fully accredited by NOCA as
a health certifying agency. Mr. Delk states that NOCA does
not have any other nurse anesthetist agencies as members and
that it has not accredited any other nurse anesthetist
program.
Applicant also submitted copies of ten state codes or
statutes that regulate professions and occupations within the
states. A review of these codes and statutes shows that
applicant is the only organization recognized by these states
to issue certification in the field of nurse anesthesia.
Upon careful consideration of the record herein, we find
that it has not been shown by clear evidence that the
designation CRNA has become so generally understood as an
initialism for “certified registered nurse anesthetist” as to
be substantially synonymous therewith. The definitions show
that CRNA stands for or is an abbreviation of “certified
registered nurse anesthetist.” However, two of the
definitions show “certified registered nurse anesthetist” used
in a proprietary manner (as a mark) in that it is depicted
with each word in initial capital letters. Thus, in these two
definitions, CRNA may well be understood as a mark rather than
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Ser No. 75722091
a generic term. Further, while CRNA is used at the employment
agency websites in a generic manner in that it is used as a
job title, e.g., “job postings for anesthesiologists and
CRNAs”; and “ . . . specialize in placing physicians and
CRNA’s nationwide,” this evidence does not demonstrate that
CRNA is used interchangeably with certified registered nurse
anesthetist or that it is an alternative form of the term. In
other words, we are unable to determine from the website
evidence whether CRNA would be perceived as an abbreviation
for a certified registered nurse anesthetist generally or as a
registered nurse anesthetist certified by applicant.
Also, there is no evidence in this case of third-party
use of CRNA. Indeed, the record indicates that applicant is
the sole body recognized to certify registered nurse
anesthetists in the United States, and that applicant’s
certification program is recognized by research hospitals and
state agencies which govern nursing practice. In view
thereof, and because applicant also uses “certified registered
nurse anesthetist” in its own materials as a mark, in that it
is depicted with each word being capitalized, we are not
persuaded that CRNA, as used in these materials, would be
regarded as a generic term to refer to a certified registered
nurse anesthetist generally, rather than a mark to refer to a
registered nurse anesthetist certified by applicant.
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Ser No. 75722091
In sum, given the fact that in two of the definitions
relied upon by the examining attorney, CRNA may well be
understood as a mark; the fact that the evidence relied upon
by the examining attorney does not demonstrate interchangeable
use of CRNA and “certified registered nurse anesthetist”; and
the fact that there is no third-party use of CRNA, but rather,
the evidence points to the uniqueness of applicant and its
certification program in the field, we find that the examining
attorney has not established by clear evidence that CRNA has
come to be understood as substantially synonymous with
“certified registered nurse anesthetist.” In other words, we
are not convinced, on this record, that surgical patients,
doctors, and hospital administrators would understand that
CRNA stands for or is an alternative term for a certified
registered nurse anesthetist generally, rather than as
referring to a registered nurse anesthetist certified by
applicant. We readily admit that we have doubt as to the
character of CRNA, but we believe such doubt should be
resolved in applicant’s favor. In re Waverly Inc., 27 USPQ2d
1620 (TTAB 1993).
We turn next to the issue of the sufficiency of
applicant’s claim of acquired distinctiveness. Applicant has
the burden of proof to establish a prima facie case of
acquired distinctiveness. Yamaha International Corp. v.
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Ser No. 75722091
Hoshino Gakki Co., Ltd. 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988).
In this case, applicant has claimed continuous use of the
designation CRNA as a certification mark for close to fifty
years. The record shows that applicant has used the
designation CRNA in brochures and promotional campaigns
directed to nurse anesthetists. Also, applicant is the
national certifying organization in the nurse anesthesia field
and there is no evidence of use of the designation CRNA or
similar designation by other certifying organizations.
Further, applicant states that it has certified approximately
40,000 nurse anesthetists. The record would suggest that
applicant has enjoyed a good degree of success in promoting
its certification program in the nurse anesthesia field as
evidenced by the number of nurse anesthetists it has
certified. Nonetheless, this evidence does not demonstrate
that the relevant public has come to view the designation CRNA
as applicant’s source-identifying certification mark. In
particular, with respect to applicant’s use of the designation
CRNA in promotional brochures and on pins, shoelaces, etc.
directed to nurse anesthetists, this evidence is not
particularly probative of how surgical patients, doctors, and
hospital administrators have come to view CRNA. Moreover,
noticeably absent from this record is direct evidence
regarding how surgical patients, doctors and hospital
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Ser No. 75722091
administrators have come to view the designation CRNA. More
evidence than that which has been offered here would be
necessary to establish acquired distinctiveness of the
designation. We find this to be especially the case where, as
here, the designation is highly descriptive. That is to say,
the greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. Yamaha International Corp. v. Hoshino Gakki
Co., supra; and In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., supra.
Decision: The refusals to register on the grounds that
CRNA does not function as a certification mark and is generic
are reversed; the refusal to register on the ground that CRNA
is merely descriptive and applicant’s showing of acquired
distinctiveness is insufficient is affirmed.
33