Biological & Popular Culture, Inc.

Trademark Trial and Appeal Board

Aug 7, 2000

No. 75399471 (T.T.A.B. Aug. 7, 2000)

Paper No. 8
CEW
8/7/00
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Biological & Popular Culture, Inc.
___________
Serial No. 75/399,471
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William H. Murray and Robert E. Rosenthal of Duane, Morris
& Heckscher for applicant.
Gregory A. Fosdick, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
____________
Before Walters, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Biological & Popular Culture, Inc. has filed a
trademark application to register on the Principal Register
the mark HEALTHCARE INTELLECTUAL PROPERTY MANAGEMENT for
the following services:1
Procurement services, namely, purchasing supplies and
equipment for physicians and medical and clinical
laboratories; management of medical and clinical
laboratories for others; management of group
purchasing organizations and associations of health
care providers; pharmacy benefit plan management for
others; order fulfillment for pharmacies; automated
inventory control; inventory management; secretarial

1 Serial No. 75/399,471, filed December 3, 1997, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/399,471
2
and clerical services, namely, scheduling appointments
for health care professionals; business consultation
services for physicians, medical and clinical
laboratories, and health care preferred provider
organizations; billing and accounting services;
bookkeeping; personnel management; personnel placement
and recruitment; providing statistical information
regarding the effectiveness of particular medical
treatments; data processing services; market research
of health care, pharmaceutical and medical devices;
business marketing consulting and advertising agencies
for the health care, pharmaceutical, medical device,
medical laboratory and medical supply fields;
telemarketing; distributorship and mail order catalog
services featuring pharmaceuticals, injectables,
vaccines, medical equipment and medical disposables;
business records management services; business
information concerning sources of pharmaceutical
products; facilities management services for
physicians’ offices; data processing services;
business consultation services in the field of real
estate,2 in International Class 35; and
Design and provision for others of healthcare services
in the nature of patient wellness, behavior
modification and management, and compliance programs;
medical and clinical laboratories; medical examination
services rendered via telecommunications to
underwriters; clinical medical research; maintaining
files and records concerning the medical condition of
others; computer programming for others; association
services to promote the interests of physicians;
providing information pertaining to medicine and
medical practice for remote access by computer; design
of computer systems and computer software for medical
and clinical laboratories; consultation regarding
computer hardware, software and systems; consultation
in the field of medical records; medical consultation,
namely measuring and determining outcomes of patient
care; medical and clinical laboratory consultation
services; rental of medical and clinical laboratory
equipment, in International Class 42.

2 The recitation of services in the application as originally filed did
not contain “business consultation services in the field of real
estate.” Should applicant ultimately prevail in this appeal, the file
should be remanded to the Examining Attorney to consider this expansion
of the scope of the recitation of services.
Serial No. 75/399,471
3
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive in connection with its proposed
services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that “applicant’s
services are exactly the type of services a consumer would
expect from a healthcare intellectual property management
business”; that “applicant manages business information and
offers other services which are protected by or subject to
intellectual property law”; and that applicant “manages
this intellectual property for clients in the healthcare
industry.”
In support of his position, the Examining Attorney
submitted definitions of “intellectual property” from
McCarthy’s Desk Dictionary of Intellectual Property (2nd ed.
1995) as, inter alia, “[patent-trademark-unfair
competition-copyright-trade secret-moral rights] Certain
creations of the human mind that are given the legal
aspects of a property right”; and from The American
Heritage Dictionary of the English Language (3rd ed. 1992)
Serial No. 75/399,471
4
as “Law. Property that results from original creative
thought, as patents, copyright material, and trademarks.”
He submitted a definition of “trade secret,” also from
McCarthy’s, supra, as “business information that is the
subject of reasonable efforts to preserve confidentiality
and has value because it is not generally known in the
trade.” Additionally, the Examining Attorney submitted
excerpts of articles from the LEXIS/NEXIS database that
include uses of “intellectual property management” as a
term of art referring, across a variety of fields of
business, to the management of a company’s intellectual
property.3
Applicant, conceding that the terms HEALTHCARE and
MANAGEMENT are merely descriptive in connection with the
recited services,4 contends that the term INTELLECTUAL

3 A number of the excerpts are from either newswire services or from
foreign publications. Newswire stories are of minimal evidentiary
value because it is not clear that such stories have appeared in any
publication available to the consuming public. See, In re Manco Inc.,
24 USPQ2d 1938 (TTAB 1992); and In re Men’s International Professional
Tennis Council, 1 USPQ2d 1917 (TTAB 1986). Similarly, articles in
foreign publications are of minimal value, as we have no evidence
concerning possible circulation in the United States from which to
infer the possible impact on the perceptions of the relevant public in
this country. See, In re Men’s International Professional Tennis
Council, supra. However, there are sufficient excerpts in the record
from U.S. publications to support our conclusion regarding the
connotation of the term “intellectual property management.”
4 Applicant suggests that it may be willing to enter a disclaimer of
HEALTHCARE and MANAGEMENT; however, as no disclaimer has been required
by the Examining Attorney or submitted by applicant, that issue is not
before us.
Serial No. 75/399,471
5
PROPERTY is, at most, suggestive in connection therewith.5
Applicant states that “such items as improved purchasing of
supplies and equipment would not constitute property in the
literal sense, and certainly not intellectual property,
improvements in such areas improves operations and
therefore suggests an asset of a business.” Regarding the
mark HEALTHCARE INTELLECTUAL PROPERTY MANAGEMENT, applicant
states that “when linked to Applicant’s services [the mark]
suggests the ability of Applicant to harness knowledge
about the healthcare field to provide services in new and
innovative ways [and] hints at Applicant’s substantial
resources of current information, and access to new
information, regarding the health care field.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215 (CCPA 1978); In re Bright-Crest, Ltd., 204

5 We note applicant’s co-pending application Serial No. 75/399,472, for
the mark BIOPOP BIOLOGICAL & POPULAR CULTURE, INC. HEALTHCARE
INTELLECTUAL PROPERTY MANAGEMENT, for many of the same services
included herein, includes a disclaimer of the entire phrase HEALTHCARE
INTELLECTUAL PROPERTY MANAGEMENT. A notice of allowance has issued in
that case. While applicant appears to have admitted the
descriptiveness of that phrase in connection with the services recited
in that application, that record is not before us in this case.
Serial No. 75/399,471
6
USPQ 591 (TTAB 1979); In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality, feature, etc. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it
is well-established that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995);
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991);
and In re Recovery, 196 USPQ 830 (TTAB 1977).
Applicant’s recited services include such services as
“management of medical and clinical laboratories for
others,” “management of group purchasing organizations and
association of health care providers,” “market research of
health care, pharmaceutical and medical devices,” “business
marketing consulting and advertising agencies for the
health care, pharmaceutical, medical device, medical
laboratory and medical supply fields,” “design and
provision for others of healthcare services …,” and a
Serial No. 75/399,471
7
variety of consultation services for the medical field.
Clearly, applicant’s services pertain, principally, to the
healthcare field. Further, the recited services are so
broad as to encompass all aspects of management and
consultation to applicant’s relevant consumers, i.e.,
healthcare professionals and organizations, medical
laboratories and pharmaceutical and medical device
companies, including the development and management of
intellectual property, and related marketing and promotion.
The term “intellectual property,” as defined by the
dictionary definitions of record, and the term
“intellectual property management,” as evidenced by the
excerpted articles, would be clearly understood by
business, medical and healthcare professionals as these
terms have been defined and used in this record. We find
it highly unlikely that such terminology would be
perceived, rather, as suggestive of applicant’s knowledge,
resources and innovations in the healthcare field.
In the present case, it is our view that, when applied
to applicant’s services, the term HEALTHCARE INTELLECTUAL
PROPERTY MANAGEMENT immediately describes, without
conjecture or speculation, a significant feature or
function of applicant’s proposed services, as discussed
herein. Nothing requires the exercise of imagination,
Serial No. 75/399,471
8
cogitation, mental processing or gathering of further
information in order for purchasers of and prospective
customers for applicant’s services to readily perceive the
merely descriptive significance of the term HEALTHCARE
INTELLECTUAL PROPERTY MANAGEMENT as it pertains to
applicant’s recited services.
Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.
C. E. Walters
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board