Anesthesiologist Cannot Be Trademarked
From John M. Wilke, Examining Attorney for the U.S. Patent and Trademark Office (USPTO), the federal agency for granting U.S. patents and registering trademarks
The following supports the argument that “anesthesiologist” is descriptive and not beholden to the medical, nursing, or dental professions.
Merely Descriptive Refusal
Registration is refused because the applied-for mark merely describes the provider of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir.
2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc.
v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one
significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
Applicant has applied for registration of the term NURSE ANESTHESIOLOGIST for “Medical services, namely, anesthesia” in Class
44. Applicant’s proposed mark is merely a combination of merely descriptive terms. The term “NURSE” is defined as “A person trained to care for the sick or infirm, especially in a hospital.” (See attached definition found
at https://en.oxforddictionaries.com/definition/us/nurse ). The term ANESTHESIOLOGIST is defined as “A physician specializing in anesthesiology.” (See attached definition found
at: https://www.ahdictionary.com/word/search.html?q=anesthesiologist). The term ANESTHESIOLOGY is defined as “The branch of medicine concerned with anesthesia and anesthetics.” (See attached definition found on the Internet
at: https://en.oxforddictionaries.com/definition/us/anesthesiology#anesthesiology ). Taken together, the term NURSE ANESTHESIOLOGIST merely describes a nurse trained in providing anesthesia services
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see,
e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies.) In the present case, both terms retain their descriptive meaning in connection with the services.
“As noted in the attached evidence and previously cited definitions, an “anesthesiologist” is ordinarily a physician and an “anesthetist” is ordinarily a nurse. However, since anesthesiologists and anesthetist both provide anesthesia services, this distinction does not diminish the descriptive or generic meaning of the term NURSE ANESTHESIOLOGIST used in connection with medical personnel providing anesthesia services, regardless of whether they are nurses or physicians.”
Terms that describe the provider of a product or service may also be merely descriptive of the product and/or service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q). Attached is evidence found on the Internet of descriptive uses of the terms “anesthesiologist” and “nurse anesthestist” in connection with providers of anesthesia services. See:
https://en.wikipedia.org/wiki/Anesthesiologist https://www.allnursingschools.com/articles/become-nurse-anesthetist/ https://www.google.com/?gws_rd=ssl
As noted in the attached evidence and previously cited definitions, an “anesthesiologist” is ordinarily a physician and an “anesthetist” is ordinarily a nurse. However, since anesthesiologists and anesthetist both provide anesthesia services, this distinction does not diminish the descriptive or generic meaning of the term NURSE ANESTHESIOLOGIST used in connection with medical personnel providing anesthesia services, regardless of whether they are nurses or physicians.
Accordingly, since the proposed mark merely describes the provider of applicant’s services, registration must be refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.