Westchester Women's Bar Association

Evidence Examining Attorneys Use to Prove Merely Descriptiveness

In a recent precedential case, the Examining Attorney proved that the mark DXPORTAL was merely descriptive of the services, “providing an Internet website portal in the healthcare field to provide a patient and caregivers with the patient's drug prescription information”, see In re NextGen Management, LLC, 203 USPQ2d 14 (TTAB 2023) [precedential]. The Trademark Trial and Appeal Board (the “Board” or “TTAB”) presented a substantial amount of evidence to show that consumers would understand that the mark DXPORTAL is a website portal providing diagnostic information.

Information used on the Applicant’s website is the most compelling evidence of mere descriptiveness. The Board held that the web pages introduced into the record by the Examining Attorney would be considered even though the application was filed on an intent to use basis, and Applicant’s attorney argues (without corroboration from a declaration or affidavit of a fact witness) the web pages are only mock-ups and still in development. The Board points out the website was public facing, and the Applicant did not submit a current version of the website.

Descriptiveness and the meaning of the mark is considered in relation to the goods or services. See, In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007). Applicant’s mark DXPORTAL must be analyzed for each component. The pushing together of the two terms without a space does not avoid this principle. The compound term DXPORTAL will be held to be merely descriptive if the individual elements retain their descriptive meaning in relation to the goods or services identified in the trademark application. Here, the mark DXPORTAL does not convey a different commercial impression other than the sum of its individually descriptive parts.

DX is commonly used as an abbreviation for diagnostics or diagnosis. Applicant did not deny this fact. Moreover, Applicant identified its services in part as “an Internet website portal…” Use of a trademark term in the identification of goods or services is evidence that the term is “merely descriptive”. In re Taylor & Francis (Publishers) Inc., 55 USPQ2d 1213 (TTAB 2000). In addition, the Examining Attorney submitted online dictionary definitions for the terms “DX” and Portal” and the Board took judicial notice of medical definitions of the two terms. Applicant’s website stated in part that, “[w]ithin DXPortal, patient’s [sic] can keep track of current prescriptions, prescription history, allergies, and diagnoses….” Further, Applicant admitted that it does intend to include a limited amount of diagnostic information on the portal. The Examining Attorney also submitted evidence from four medical websites to show there is an integral relationship between diagnostic information and prescription drugs.

In summary, the Examining Attorney presented strong evidence to support its refusal of registration under Section 2(e)1 of the Trademark Act. The persuasive evidence included submissions of dictionary definitions of the trademark terms, webpages from the Applicant’s website, third party website uses of the trademark terms, and admissions and/or acknowledgments from the Applicant that it intended to provide diagnostic services in connection with the trademark. This case is an example of a well-supported descriptiveness refusal.

However, keep in mind not all descriptiveness refusals will be affirmed by the Board if appealed, although affirmance is quite high. See our web page entitled, Overcoming a Merely Descriptiveness Refusal, for tips on how to submit successful Responses to Office Actions, so you can persuade the Examining Attorney the mark is not merely descriptive and avoid an appeal to the Board. In addition, a descriptive mark may over time through use in commerce, acquire unique significance or distinctiveness. If this occurs, an Applicant can submit evidence of acquired distinctiveness or secondary meaning and if successful be entitled to register the mark on the Principal Register even though the mark is not inherently distinctive. See our web page, What Is Acquired Distinctiveness and Secondary Meaning, for more on this topic. If you have questions as to whether your trademark may be refused as merely descriptive of the goods and/or services, please feel free to contact the firm for a courtesy consultation.

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