Chronix Biomedical, Inc.

Trademark Trial and Appeal Board

Jul 10, 2018

No. 86612457 (T.T.A.B. Jul. 10, 2018)

Mailed: July 10, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Chronix Biomedical, Inc.
_____

Serial No. 86612457
_____

Karen Frank of Coblentz Patch Duffy & Bass LLP
for Chronix Biomedical, Inc.

Thomas Young, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____
Before Kuczma, Adlin and Lynch,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Chronix Biomedical, Inc. seeks a Supplemental Register registration
for the term SECOND OPINION, in standard characters, for “medical testing for
diagnostic or treatment purposes in the field of cancer.”1 The Examining Attorney
finally refused registration under Section 23(c) of the Trademark Act on the ground
that the proposed mark is a generic term for the identified services, and thus
incapable of distinguishing them from those of others. Applicant then appealed and
filed a request for reconsideration which was denied. The appeal is fully briefed.

1 Application Serial No. 86612457, filed April 28, 2015 under Section 1(a) of the Trademark
Act.
This Opinion is Not a
Precedent of the TTAB
Serial No. 86612457
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I. The Evidence
The Examining Attorney relies on two dictionary definitions of the exact term for
which Applicant seeks registration. The first is from the Collins Dictionary:
SECOND OPINION—“an opinion from a second qualified
person on something such as a health or legal problem”2

The second is from the Free Dictionary’s Medical Dictionary:

SECOND OPINION—“a patient privilege of requesting
an examination and evaluation of a health condition by a
second physician to verify or challenge the diagnosis by a
first physician. The situation is most likely to arise when
an examination by a first physician results in a
recommendation for surgery or experimental treatment”3

Office Action of August 11, 2015.
The record also establishes that healthcare providers commonly offer “second
opinion” services, often in connection with cancer diagnoses, which typically include
a review of a first doctor’s conclusions. The following examples are typical:

2 http://www.collinsdictionary.com/dictionary/english/second-opinion.
3 http://medical-dictionary.thefreedictionary.com/second+opinion.
Serial No. 86612457
3

Serial No. 86612457
4

Id. (printouts from “cancercenter.com,” “patientadvocate.org” and “cancer.net”);
Office Action of October 16, 2015 (printouts from “rush.edu,” “choa.org,” “moffitt.org”
and “columbiasurgery.org”). According to these websites, second opinion services
focus on verifying, challenging or supplementing a first diagnosis or recommendation,
including assessing whether the first doctor’s evaluation was complete or accurate,
and reviewing and perhaps revising treatment recommendations. Id. These uses of
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“second opinion” are entirely consistent with the term’s dictionary definitions
(including both the general and medical care-focused definitions), and reveal that a
number of “second opinion” services or programs focus on cancer specifically. As the
website printouts reproduced above and additional evidence of record also make clear,
many health care providers use “second opinion” generically, in that they use “Second
Opinion Services” or similar designations to refer to a class or type of healthcare
services.
There is substantial evidence of record that “second opinions” focus in large part
on, or involve, medical tests. Most commonly, “second opinion” services involve a
review of medical tests performed by the patient’s first doctor. For example:
University of Florida Health’s Breast Center provides “a
second opinion service to review original pathology slides
or mammography films. Our team helps patients
understand their diagnosis and treatment options to
ensure they are making the best possible decisions for their
care.”

The “cancer.net” webpage entitled “Seeking a Second
Opinion” (a portion of which is reproduced above) states
that patients should “[g]ather all of your relevant medical
records – including test results, such as blood work or
imaging tests – to bring to the appointment. Often, the
doctor providing a second opinion will request the results
of any tests or procedures you have already undergone,
eliminating repeat testing.”

The Johns Hopkins Medicine “Medical Second Opinion
Program” webpage states “[a]fter completing required
forms, you will mail us copies of pertinent diagnostic
imaging tests.”

The Rush University Medical Center “Second Opinion
Services” webpage states “You’ll want to bring your lab
results, test results, and scans (such as original X-rays or
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MRI or CT scans) with you to your appointment.”

Penn Global Medicine’s “Remote Medical Second Opinion
Service” webpage states that “Penn Medicine offers second
opinion services for referring physicians and insurers
which include: Review patients’ medical records and health
history.”

Massachusetts General Hospital Imaging’s “Second
Opinion Service” website states that the hospital’s
“specialty-trained radiologists provide a written second
opinion on your diagnostic imaging tests, including X-ray,
CT, MRI, PET, and ultrasound examinations.”

Oncology Hematology Associates of Southwest Indiana’s
“Newly Diagnosed—Second Opinion” webpage states “[i]t
is best to involve your doctor in the process of getting a
second opinion, because your doctor will need to make your
medical records (such as your test results and x-rays)
available to the specialist.”

The American Thyroid Clinic’s “Second Opinion” webpage
states “[i]f you have any testing done, be sure to have those
test results with you when you call.”

An article in Fierce Healthcare entitled “Hospitals offer
second opinions to enhance cancer care” states “Edward
Hospital & Health Services in Illinois is referring cancer
patients who want a second look at their tests and
diagnosis to the system’s Second Opinion Clinic.”

The Children’s Oncology Group’s “Second Opinions”
webpage states “… most consider second opinions a part of
this difficult journey. The ideal way to do this is with the
full cooperation of your child’s primary oncologist. This
assures that any consulting doctor gains quick and full
access [sic] your child’s latest tests, scans and prior medical
history, and helps your child avoid unnecessary second
scans and tests (and more radiation exposure, possible
sedation and procedures).”

Office Action of October 16, 2015 (printouts from “cancer.net,” “ufhealthjax.org,”
“hopkinsmedicine.org,” “rush.edu,” “pennmedicine.org,” “massgeneral.org,”
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“ohaev.com,” “thyroidcancer.com,” “fiercehealthcare” and
“childrensoncologygroup.org”).
While “second opinions” appear to most often focus on tests performed in
connection with the patient’s original diagnosis by a first doctor, it is not uncommon
for “second opinions” to be based on new or follow-up tests conducted or ordered by a
second doctor in connection with providing a “second opinion.” For example:
The Patient Advocate Foundation website (a portion of
which is reproduced above) states: “Call your insurance
provider before going for any treatment or second opinion
to prevent any confusion or denial of the bill … Diagnostic
tests can by very costly and many insurance providers will
not pay for them if they were completed for the initial
diagnosis.”

The Cancer Treatment Centers of America “Why to Get a
Second Opinion” webpage states “During a second opinion,
a physician will perform a comprehensive evaluation of
your current and past medical history, your type and stage
of cancer and make treatment recommendation. A
physician may also recommend additional diagnostic
testing to confirm the type and stage of your cancer.”

The “Second Opinion” section of Moffitt Cancer Center’s
website, a subcategory of the “Tests” section, states: “Our
multispecialty team will review your records and
diagnostic work, and then order any additional tests that
might be necessary to achieve a better understanding of
your situation. From there, we’ll be able to confirm – or rule
out – your initial diagnosis, and make a tailored
recommendation for your treatment.”

The “Getting a Second Opinion” section of the Living
Beyond Breast Cancer website states “[t]he second opinion
doctor will review your medical records, examine you and
may suggest additional testing.”

The “Second Opinions” page of the Children’s Oncology
Group website indicates that the first step is a review of
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“your child’s latest tests, scans and prior medical history,”
but “[a]dditional tests may be necessary in the long run if
tests have been inconclusive or subject to interpretation
….”

Office Actions of August 11, 2015 (printouts from “patientadvocate.org” and
“cancercenter.com”) and October 16, 2015 (printout from “moffitt.org,” “lbbc.org” and
“childrensoncologygroup.org”).
In fact, Applicant’s medical testing services are among those offered in connection
with “second opinions.” In a July 15, 2015 press release, Applicant cites its “Second
Opinion™ test to help doctors decide whether to send men with elevated PSAs or
women with suspicious M3 or M4 screening mammograms for a biopsy based on a
Chronix [Applicant’s] blood test.” Office Action October 16, 2015 (printout from
“reuters.com”). Applicant’s website includes this page about Applicant’s Second
Opinion tests:

Id. (printout from “chronixbiomedical.com”). As the webpage indicates, Applicant’s
Second Opinion test is “supplementary,” conducted after a patient has a “positive
cancer screening test,” and intended to reduce errors from prior tests (“false
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positives”).
II. Analysis
The proposed mark is eligible for the Supplemental Register only if it is capable
of distinguishing Applicant’s services from those of others. 15 U.S.C. § 1091(c);
Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017). Here, the
Examining Attorney contends that the term “second opinion” is incapable of
distinguishing Applicant’s services because it is generic. See In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2011) (“Generic
terms are common names that the relevant purchasing public understands primarily
as describing the genus of goods or services being sold. They are by definition
incapable of indicating a particular source of the goods or services, and cannot be
registered as trademarks.”) (citations omitted).
The ultimate test for determining whether a term is generic is its primary
significance to the relevant public. See Section 14(3) of the Act. See also, In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic
Wand Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). The
Examining Attorney bears the burden of making a “strong” showing, with “clear
evidence,” that Applicant’s mark is generic. In re Merrill Lynch, Pierce, Fenner and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). See In re K-T Zoe
Furniture, Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994). “[D]oubt on the
issue of genericness is resolved in favor of the applicant.” In re DNI Holdings Ltd., 77
USPQ2d 1435, 1437 (TTAB 2005).
Serial No. 86612457
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We must make a two-step inquiry to determine whether “second opinion” is
generic: First, what is the genus of goods and services at issue? Second, is the term
sought to be registered understood by the relevant public primarily to refer to that
genus of goods or services? H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
A. The Appropriate Genus
As for the first question, in this case there is no dispute that the genus is
essentially as described in Applicant’s identification of services: “medical testing
services for diagnostic or treatment purposes.” 7 TTABVUE 7 (Applicant’s Appeal
Brief at 6); 9 TTABVUE 4 (Examining Attorney’s Appeal Brief at 3); In re Cordua
Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016); Magic Wand, 19
USPQ2d at 1551.4
B. The Relevant Public
With respect to the second part of the genericness inquiry, the record establishes
that the relevant purchasing public consists of both patients seeking medical testing
for diagnostic or treatment purposes, and the doctors or other health care providers
who order or purchase the tests.5 Applicant’s argument that the relevant public

4 The agreed-upon genus does not include the limitation “in the field of cancer,” which is how
Applicant identifies its services in the involved application. Our analysis would be no differ-
ent if this limitation was included in the agreed-upon genus, and in any event most of the
evidence of record specifically relates to medical testing in the field of cancer.
5 While the record makes clear that medical tests are often covered by insurance, and that
insurers may pre-approve (or pre-disapprove) coverage for recommended tests, there is no
evidence that insurers choose specific tests for specific conditions or purposes, or whether to
conduct medical tests in the first instance. That is, doctors and patients choose which tests
to conduct.
Serial No. 86612457
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consists only of “medical professionals,” 7 TTABVUE 7, is not well taken. As the
Examining Attorney points out, Applicant’s identification of services is not so limited
and the evidence of record reveals that medical testing services are directly marketed
to patients as well as medical professionals. In any event, the record would not yield
a different ultimate conclusion on genericness if the relevant public were limited to
medical professionals, especially given the essential congruence of the lay and
medical definitions (and uses) of “second opinion.”
C. The Relevant Public’s Understanding of the Term
Evidence of this relevant public’s understanding of SECOND OPINION may be
obtained from any competent source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). “[E]vidence of competitors’
use of particular words as the name of their goods or services is, of course, persuasive
evidence that those words would be perceived by purchasers as a generic designation
for the goods and services.” Continental Airlines, Inc. v. United Air Lines, Inc., 53
USPQ2d 1385, 1395 (TTAB 1999).6
We start with the dictionary definitions of “second opinion” and Applicant’s own
use of the term, and find that Applicant’s use of “second opinion” in its July 15, 2015

6 Because the dictionary and other evidence establishes that “second opinion” is a known,
defined and commonly-used term in the healthcare field, we consider it in its entirety and
there is no reason to evaluate the words “second” or “opinion” individually. See In re Shiva
Corp., 48 USPQ2d 1957, 1958 (TTAB 1998) (finding, in descriptiveness case, that “because
the NEXIS evidence clearly demonstrates that the phrase ‘tariff management’ has been fre-
quently used to identify a key feature or function of the computer hardware and computer
programs set forth in applicant’s application, we simply need not dwell on considering the
individual meanings of the words ‘tariff’ and ‘management’”).
Serial No. 86612457
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press release and its website is consistent with both the lay and medical definitions
of “second opinion.” See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110,
1112 (Fed. Cir. 1987) (“Gould’s own submissions provided the most damaging
evidence that its alleged mark is generic and would be perceived by the purchasing
public as merely a common name for its goods rather than a mark identifying the
good’s source.”); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 218
(CCPA 1978) (“Evidence of the context in which a mark is used on labels, packages,
or in advertising material directed to the goods is probative of the reaction of
prospective purchasers to the mark.”). In fact, Applicant’s press release promotes the
fact that its Second Opinion test is intended to “help doctors” (or, as the website states
“clinicians”) decide what to do in response to prior medical tests or examinations.
Applicant’s website cites the “supplementary” nature of the test and its goal of
reducing potential errors, specifically those arising out of “false positives.” In other
words, these materials reveal that Applicant’s “second opinion” test is conducted by
or at the direction of a physician/clinician in order to provide an opinion, examination
or evaluation to verify or challenge another physician’s diagnosis or recommendation,
or to better understand the results of a first medical test.
While most of the third-party evidence of record reflects use of “second opinion” in
connection with a collection of healthcare services, as opposed to Applicant’s use of
the term in connection with “medical testing” specifically, this does not make the term
less generic for Applicant’s testing services, which are an integral part of providing
“second opinions.” In re Reed Elsevier Properties Inc., 77 USPQ2d 1649, 1656 (TTAB
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2005) (“ … the likelihood that some members of the relevant public would think of a
web site providing online access to lawyers while others might think of a web site
providing online information about lawyers does not render LAWYERS.COM non-
generic. Either understanding of the term would be generic …”), aff’d 482 F.2d 1376,
82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (“However, as Reed and Martindale-Hubbard
should know, for better or worse, lawyers are necessarily an integral part of the
information exchange about legal services.”). In fact, a term “is generic if the relevant
public understands the term to refer to part of the claimed genus of goods or services,
even if the public does not understand the term to refer to the broad genus as a
whole.” Royal Crown Co., Inc. v. The Coca-Cola Co., ___ F.3d __, 127 USPQ2d 1041
(Fed. Cir. 2018) (term is generic if it refers to a “key aspect” or part of a genus); In re
Cordua Rests., 118 USPQ2d at 1638. See also; In re DNI Holdings Ltd., 77 USPQ2d
1435, 1438 (TTAB 2005) (“the class or category of services described in the application
still clearly includes that of providing information regarding sports and betting”).
Indeed, the record reveals that medical testing is not only an integral part of making
original diagnoses or recommendations, but also of evaluating prior diagnoses or
recommendations, whether the “second opinion” is based on medical tests ordered by
the first doctor or the second. The primary significance of “second opinion” to those
seeking medical tests for themselves or their patients thus encompasses medical
testing for the purpose of verifying or challenging a first diagnosis or
recommendation, i.e. providing a “second opinion.”
While Applicant is correct that there is no evidence showing use of “second
Serial No. 86612457
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opinion” solely for medical testing services (other than by Applicant), that does not
mean that the term is not generic for Applicant’s services. For example, ATTIC was
found generic for automatic sprinklers for fire protection despite the lack of evidence
that the public refers to these types of sprinklers as “attic,” and even though
“applicant’s sprinklers may be used in other locations of a structure.” In re Central
Sprinkler Co., 49 USPQ2d 1194, 1197 (TTAB 1998). In that case the term ATTIC was
found to be “more in the nature of a type of sprinkler than of a source identifier,” just
as here the evidence reveals that “second opinion” is a type or purpose of medical
testing: “second opinion medical testing.” Id. at 1198. In another analogous case,
BUNDT was found generic for a “ring cake mix,” even though the record showed that
the term was generic for a type of cake. In re Northland Aluminum Prods., 777 F.2d
1556, 227 USPQ 961 (Fed. Cir. 1985). In that case, the Court agreed with the Board
that “it is not of trademark significance to differentiate a cake made from a cake mix
from a cake made from a recipe.” Id. at 964. Similarly, here there is no trademark
basis upon which to differentiate a “second opinion” deriving from a physical
examination from a “second opinion” deriving from a medical test.
In this case, Applicant’s own materials establish that its medical testing services
are used and intended for healthcare providers seeking to provide, or patients seeking
to receive, “second opinions,” and the genus “medical testing services for diagnostic
or treatment purposes” encompasses medical testing services that are part of
providing a “second opinion.” In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
(TTAB 2002) (finding BONDS.COM generic for providing information regarding
Serial No. 86612457
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financial products and services via a global computer network and providing
electronic commerce services via a global computer network). See also, In re A La
Vielle Russie Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for art
dealership services); In re Web Commc’ns., 49 USPQ2d 1478, 1479 (TTAB 1998)
(finding WEB COMMUNICATIONS generic for consulting services to businesses and
individuals who want to establish a site on a global computing network, because “[t]he
services are consulting services in the field of ‘Web communications’”); In re Ricci-
Italian Silversmiths Inc., 16 USPQ2d 1727 (ART DECO generic for silver and silver
coated flatware namely, knives, forks and spoons); In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988) (ANALOG DEVICES generic for electronic devices with
analog capabilities); In re Harcourt Brace Jovanovich, Inc., 222 USPQ 821 (TTAB
1984) (LAW & BUSINESS generic for arranging and conducting seminars in the field
of business).
III. Conclusion
The record as a whole leaves no doubt that SECOND OPINION is generic for a
type of medical testing, especially because “the determination of whether a proposed
mark is capable of achieving significance as a source identifier must be made in
relation to the goods and services for which registration is sought, not in the abstract.”
In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1587 (TTAB 2014). Here, medical
testing is commonly used to verify, challenge or shed additional light on a medical
diagnosis, recommendation or finding. Moreover, the record reveals that others have
a competitive need to, and do, use the term “second opinion” in connection with
Serial No. 86612457
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reviewing or providing medical testing. Therefore, “second opinion” is generic and
incapable of functioning as a mark.

Decision: The refusal to register is affirmed.

Kuczma, dissent
The majority affirmed the refusal of registration from which I respectfully dissent.
With respect to the first step of the two-step genericness test, identifying the genus
of the services, H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782
F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986), I agree with the majority that the
genus described in Applicant’s identification of services is “medical testing services
for diagnostic or treatment purposes.” Turning to the second step, I also agree that
the relevant public includes patients as well as medical professionals.1 Where I reach
a different outcome is the second-half of the second step, i.e., is SECOND OPINION
understood by the relevant public primarily to refer to that genus of services. Id.
While SECOND OPINION may be merely descriptive of the end purpose for which
the testing is used, i.e., to render “second opinions,” it does not refer to any class or
type of medical tests and is not generic for “medical testing services for diagnostic or
treatment purposes.”
Although the case law recognizes that a term which is the generic name of a

1 Applicant’s Appeal Brief p. 6 (7 TTABVUE 7); Examining Attorney’s Appeal Brief p. 3 (9
TTABVUE 4).
Serial No. 86612457
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particular category of goods is likewise generic for any services which are directed to
or focused on that class of goods,2 that is not the situation present in this case. Rather,
the issue is whether the generic name for a type of medical service, i.e., a “second
opinion,” is also generic for medical testing for diagnostic or treatment purposes. “The
critical issue in genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d

2 See also, e.g., In re 1800Mattress.com, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009)
(MATTRESS.COM generic and unregistrable under § 23(c) for “online retail store services in
the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d
1532, 1537 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others
about temporary lodging; … making reservations and bookings for temporary lodging for
others by means of … global computer network”); In re Reed Elsevier Prop. Inc., 482 F.3d
1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (LAWYERS.COM generic where lawyers were
an “integral, if not the paramount, aspect” of the information services provided on the
website); In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009) (“Because the
term ‘tires’ identifies a key aspect of applicant’s services, i.e., the goods sold in applicant’s
retail store, and the recitation of services specifically uses the term ‘tires’ to name the subject
matter of applicant’s retail services, the term is generic for the retail sales of tires.”); In re
Lens.com Inc., 83 USPQ2d 1444, 1447 (TTAB 2007) (“Because ‘lens’ is a name for the contact
eyewear which comprises the subject matter of applicant’s services, the term is likewise a
generic name for the retail Internet store services themselves.”); In re Eddie Z’s Blinds and
Drapery Inc., 74 USPQ2d 1037, 1041 (TTAB 2005) (generic terms for products equally generic
for a retailer of such products); In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883, 1888 (TTAB
2004) (because CANDY BOUQUET is generic for gift packages of candy, it also is generic for
applicant’s retail, mail and computer ordering services therefor); In re A La Vieille Russie
Inc., 60 USPQ2d 1895, 1900 (TTAB 2001) (RUSSIANART generic for particular field or type
of art and also for dealership services directed to that field); In re Log Cabin Homes Ltd., 52
USPQ2d 1206, 1210 (TTAB 1999) (because LOG CABIN HOMES is generic for a particular
type of building, it is also generic for architectural design services directed to that type of
building, and for retail outlets featuring log cabin construction kits); In re Web
Communications, 49 USPQ2d 1478, 1479 (TTAB 1998) (because WEB COMMUNICATIONS
is generic for publication and communication via the World Wide Web, it is also generic for
consulting services directed to assisting customers in setting up their own websites for such
publication and communication); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1630
(TTAB 1998) (because the term MASSFLO directly names the most important or central
aspect or purpose of applicant’s goods, that is that the meters are mass flowmeters (meters
that measure mass flow), this term is generic).
Serial No. 86612457
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1632, 1634 (Fed. Cir. 2016) citing Marvin Ginn, 228 USPQ2d at 530.
As noted in the majority opinion, Applicant’s press release materials and website
“…reveal that Applicant’s ‘second opinion’ test is conducted by or at the direction of
a physician/clinician in order to provide an opinion, examination or evaluation to
verify or challenge another physician’s diagnosis or recommendation, or to better
understand the results of a first medical test.”3 Inasmuch as Applicant’s services are
medical testing for diagnostic or treatment purposes, Applicant’s mark SECOND
OPINION is not generic for such services even if such services are used in connection
with providing second opinions on a patient’s medical condition.
The cases cited above establish that matter which names a central focus of a
service or the goods to be sold in connection with a service are regarded as “generic.”
In re Wm. B. Coleman Co., 93 USPQ2d 2019 2027 n.2 (TTAB 2010). In other words,
a term that names the central focus or subject matter of the services is generic for the
services themselves. However, that is not what we have here. According to the
definition of “second opinion” cited in the majority opinion, SECOND OPINION is
“an opinion from a second qualified person . . . on a health . . . problem.”4 Under this
definition, Applicant’s applied-for mark does not identify, nor is it generic for, medical
testing services.5 At most, Applicant’s applied-for mark SECOND OPINION is merely

3 Decision p. 12.
4 Decision p. 2.
5 This is consistent with Applicant’s observation that other than its use of SECOND
OPINION there is no evidence showing third-party uses of “second opinion” for medical test-
ing services. Applicant’s Appeal Brief p. 7 (7 TTABVUE 8); Applicant’s Reply Brief p. 2 (10
TTABVUE 3).
Serial No. 86612457
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descriptive of the medical testing services for diagnostic or treatment purposes which
may be considered by doctors when providing a “second opinion.” “A term is merely
descriptive if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used.” In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007) citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)).
Marks, such as Applicant’s mark, that are merely descriptive may be entitled to
registration on the Supplemental Register. In re Future Ads LLC, 103 USPQ2d 1571,
1574 (TTAB 2012); see also In re Central Soya Co., Inc., 220 USPQ 914, 917 (TTAB
1984) (citing In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975) (registration
on the Supplemental Register is prima facie evidence that, at least at the time of
registration, the registered mark was merely descriptive)).
The burden of showing that a proposed trademark is generic is with the USPTO.
It is incumbent upon the examining attorney to make a “substantial showing . . . that
the matter is in fact generic” which “must be based on clear evidence of generic use.”
In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987). Thus, “a strong showing is required when the Office seeks to
establish that a [mark] is generic.” In re K-T Zoe Furniture Inc., 16 F.3d 390, 29
USPQ2d 1787, 1788 (Fed. Cir. 1994). As explained by Judge Rich, “a term that
immediately and unequivocally describes the purpose and function of appellant’s
goods is a name for those goods, for ‘[t]hat is what names do. They tell you what the
Serial No. 86612457
20
thing is.’” In re Merrill Lynch, 4 USPQ2d at 1144 (citing In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring) (emphasis
in original)). Based on the evidence presented, there has not been a substantial
showing of the genericness of the applied-for mark.
Accordingly, I would reverse the refusal to register and allow the mark to proceed
to registration on the Supplemental Register.