American Fertility Society

Trademark Trial and Appeal Board

May 18, 1998

No. 74568765 (T.T.A.B. May. 18, 1998)

Hearing: Paper No. 17
June 24, 1997 PTH
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB MAY 18, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The American Fertility Society
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Serial No. 74/568,765
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Mark Sommers and Doug Rettew of Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P. for The American Fertility
Society.
Thomas Wellington, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
The American Fertility Society seeks to register the
term AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE on the
Supplemental Register for “association services, namely
promoting the interests of the reproductive medicine
Ser No. 74/568,765
2
industry.”1 Although registration was originally sought on
the Principal Register under Section 1(b) of the Trademark
Act, applicant amended the application to the Supplemental
Register on August 11, 1995. Use of the term since November
8, 1994 was alleged. Applicant amended the application to
the Supplemental Register in response to a refusal to
register under Section 2(e)(2) of the Act on the ground that
the matter sought to be registered was primarily
geographically descriptive of applicant’s services.
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), in view of
applicant’s failure to comply with the requirement to
disclaim SOCIETY FOR REPRODUCTIVE MEDICINE apart from the
mark as shown. The Examining Attorney maintains that
SOCIETY FOR REPRODUCTIVE MEDICINE is generic of applicant’s
services.
Both applicant and the Examining Attorney have filed
briefs and were present at the oral hearing.
At the outset, we note applicant’s objection to the
refusal on “procedural grounds.” (Brief, p. 2) Applicant
contends that the refusal is in contravention of TMEP
§1105.05(f)(ii) which provides, in relevant part, that:
The Office will not issue any requirements

1 Application Serial No. 74/568,765 filed September 1, 1994.
While it appears that applicant has changed its name to the
American Society for Reproductive Medicine, no formal change of
name has been submitted.
Ser No. 74/568,765
3
or refusals concerning matters which could
or should have been raised during initial
examination, unless the failure to do so
in initial examination constitutes a clear
error.
Whether applicant’s objection is well taken would
involve a determination of whether the Examining Attorney’s
failure to require a disclaimer during initial examination
was clear error. The Board recently stated that it will not
second guess the Trademark Examining Organization’s
application of the clear error standard. See In re Sambado
& Son, Inc., 45 USPQ2d 1312 (TTAB 1997). Thus, our inquiry
on appeal is limited to the underlying substantive refusal.
We turn then to the issue of whether SOCIETY FOR
REPRODUCTIVE MEDICINE is generic of applicant’s services and
must therefore be disclaimed. Our reviewing court in H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 792 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)
states a two-part test for determining whether a term is
generic and therefore incapable of distinguishing
applicant’s services. First, we must ask what is the genus,
or class of services to which applicant’s services belong.
Next, we must ask whether the public understands the term
sought to be registered to refer to that genus of class of
services. Evidence of the relevant public’s understanding
of a term may be obtained from any competent source,
including dictionaries, newspapers, magazines, trade
Ser No. 74/568,765
4
journals and other publications. See In re Northland
Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 962, 963
(Fed. Cir. 1985).
In support of the refusal, the Examining Attorney made
of record a copy of an entry from Webster’s Ninth New
Collegiate Dictionary which defines “society” at page 1119
as, inter alia, “a voluntary association of individuals for
common ends; esp: an organized group working together or
periodically meeting because of common interests, beliefs,
or profession.”
In addition, the Examining Attorney made of record
excerpts of stories retrieved from a search of the NEXIS
data base which show that reproductive medicine is a
recognized field of medicine. Examples of these excerpts,
with reproductive medicine highlighted, are set forth below:
. . . given all my life to helping people have
children and to work in an academic environment
to improve the field of reproductive medicine.
(The Los Angeles Times, February 27, 1997);
Midwest Reproductive Medicine, which has long
helped women with infertility problems, now is
turning some of its attention to menopause.
(The Indianapolis Star, February 19, 1996);
. . . it was babies that were booming as the
Center for Reproductive Medicine at Swedish
Medical Center in Englewood threw a party to
celebrate the 1,000th baby born to its
infertility program.
(Rocky Mountain News, February 17, 1996);
The NU Medical Center offered in vitro
fertilization during the 1980’s and resumed
Ser No. 74/568,765
5
the services when the Center for Reproductive
Medicine was organized about three years
ago.
(Omaha World News, February 14, 1996);
Lisa Angerame, spokeswoman with the American
Society for Reproductive Medicine (ASRM),
said 23 states have some kind of law
requiring sperm donor screening, but
Washington is not among them.
(AIDS Weekly, January 1996).
Also, the Examining Attorney submitted copies of over
twenty registrations wherein the word “society” is
disclaimed. With his appeal brief the Examining Attorney
submitted a copy of any entry from Roget’s II The New
Thesaurus which defines “association” at page 63 as, inter
alia, “a group of people united in a relationship and having
some interest, activity, or purpose in common.”2
Applicant, in urging reversal of the refusal to
register, argues that the evidence of record, which relates
to the individual terms, “society” and “reproductive
medicine,” does not establish that the unitary phrase
SOCIETY FOR REPRODUCTIVE MEDICINE is generic of applicant’s
services. According to applicant, no evidence has been
offered that the unitary term SOCIETY FOR REPRODUCTIVE

2Applicant, citing Trademark Rule 2.42(d), has objected thereto,
contending in its reply brief that the Examining Attorney has
introduced new evidence which was not of record during
prosecution. Applicant accordingly moves to strike the
definition as untimely. Applicant’s request, however, is not
well taken and is denied inasmuch as it is well settled that
Ser No. 74/568,765
6
MEDICINE would be understood by the relevant public to refer
to the kind of services offered by applicant. Also,
applicant maintains that the NEXIS excerpts, in particular,
support applicant’s position because the only references
which include the unitary phrase SOCIETY FOR REPRODUCTIVE
MEDICINE relate to applicant and the use of AMERICAN SOCIETY
FOR REPRODUCTIVE MEDICINE.
After careful consideration of the arguments herein, we
agree with the Examining Attorney that SOCIETY FOR
REPRODUCTIVE MEDICINE is indeed generic of applicant’s
services. It is evident from the NEXIS excerpts that
reproductive medicine is a medical specialty. Indeed,
applicant itself has used this expression generically in the
description of services in the application. Also, it is
clear from the recitation of services that applicant is an
association of individuals, i.e., a society, whose common
interest or profession is the field of reproductive
medicine. Therefore, the designation SOCIETY FOR
REPRODUCTIVE MEDICINE aptly names applicant’s association,
and as such is a generic name of applicant’s services. See
In re Association of Energy Engineers, 227 USPQ 76 (TTAB
1985) [ASSOCIATION OF ENERGY ENGINEERS is the generic
designation for an organization of engineers specializing in
the field of energy]; In re National Shooting Sports

judicial notice may be taken by the Board of any standard
Ser No. 74/568,765
7
Foundation, Inc., 219 USPQ 1018 (TTAB 1983) [SHOOTING,
HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE is apt
descriptive name for conducting and arranging trade shows in
hunting, shooting and outdoor sports products field]; and
In re Career Employment Services, Inc., 219 USPQ 951 (TTAB
1983) [THE PROFESSIONAL HEALTH CARE PEOPLE is generic for
providing temporary services for nurses, nurses aides, and
other medical personnel]. Here, the combination of the
terms “society” and “reproductive medicine” results in a
designation, SOCIETY FOR REPRODUCTIVE MEDICINE, which is
also generic. See In re Gould Paper Corp., 835 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987) [SCREENWIPE is generic for
wipes for cleaning computer and television screens] and In
re Associated Theater Clubs Co., 9 USPQ2d 1660 (1988) [GROUP
SALES BOX OFFICE is apt descriptive name for theater ticket
sales services].
As to applicant’s contention that the Examining
Attorney has not met his burden of establishing that SOCIETY
FOR REPRODUCTIVE MEDICINE is generic because the record does
not show that others have used the identical or even similar
designations, it is not necessary that the designation in
question be the only apt or common name of the goods or
services or that the name be universally recognized as such.
In re Sun Oil Company, 165 USPQ 718, 719 (Rich, J.,

reference works, including thesauruses.
Ser No. 74/568,765
8
concurring). Finally, the fact that applicant may be the
first and only user of this generic designation does not
justify registration if the term projects only generic
significance.3
Decision: The refusal to register is affirmed.
However, this decision will be set aside and the mark
published for opposition, if applicant, no later than thirty
days from the mailing date hereof, submits an appropriate
disclaimer of SOCIETY FOR REPRODUCTIVE MEDICINE.
R. L. Simms

3 Contrary to the dissent’s position that there must be evidence
of use of the designation--SOCIETY FOR REPRODUCTIVE MEDICINE--“in
a generic sense” by others, what the Court stated in Gould, at
1111 in response to a similar argument is instructive:
We agree with Gould that “to refuse registration
on the ground that an applicant seeks to register
the generic name of the goods, the PTO must show
that the word or expression inherently has such
meaning in ordinary language, or that the public
uses it to identify goods of other producers
as well.” (citations omitted) We hold, however,
that the PTO has satisfied its evidentiary
burden if, as it did in this case, it produces
evidence including dictionary definitions that
the separate words joined to form a compound have
a meaning identical to the meaning common usage
would ascribe to those words as a compound.
See also In re Associated Theater Club Co., supra, holding GROUP
SALES BOX OFFICE generic despite the lack of evidence that “group
sales” and “box office” were used together by others; and Turtle
Wax, Inc. v. Blue Coral Inc., 2 USPQ2d 1534 (TTAB 1987), holding
WASHWAX generic despite the fact that there was no evidence of
third-party use of this precise designation.
Ser No. 74/568,765
9
P. T. Hairston
Administrative Trademark
Judge, Trademark Trial and
Appeal Board