Diapulse Corporation of America

Trademark Trial and Appeal Board

Dec 6, 2006

No. 76592393 (T.T.A.B. Dec. 6, 2006)

Mailed: December 6, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Diapulse Corporation of America
________

Serial No. 76592393
_______

Myron Amer of Myron Amer, P.C. for Diapulse Corporation of
America.

Elizabeth M. Winter, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______

Before Grendel, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Diapulse Corporation of America has appealed from the
Trademark Examining Attorney’s refusal to register its mark
WIRELESS MEDICAL TECHNOLOGY for “electromagnetic energy
treatment of a patient” in Class 44.1 The Examining
Attorney refused registration on the ground that the mark
does not function as a service mark. Specifically, the
Examining Attorney argued that the specimen of use does not

1 Application Serial No. 76592393, filed May 14, 2004. On June
10, 2005, applicant filed an amendment alleging use claiming June
3, 2005 as its dates of first use anywhere and first use in
interstate commerce.
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Serial No. 76592393
2
show the mark used in connection with the sale or
advertising of electromagnetic energy treatment of a
patient. The refusal has been appealed and both applicant
and the Examining Attorney have filed briefs.
We affirm.
The specimen submitted with the amendment alleging use
is a four page brochure for applicant’s DIAPULSE Wound
Treatment System.2 The mark sought to be registered is
displayed on the last page of the brochure in the following
manner:
Diapulse® Wireless Medical Technology™

The proprietary Diapulse® System produces non-
thermal pulsed high frequency, high peak power
electromagnetic energy.

There are no wires to attach on a patient and
operating parameters are the same as all previous
models of Diapulse®.

Diapulse® can be used safely over any area of the
body with no danger of hyperpyrexia or tissue
damage.

The body is as much electrical as it is chemical.
Through decades of research published in medical
journals around the world, Diapulse® is proven to
be a safe, effective adjunct for patient recovery
and comfort.

Diapulse® is indicated for the palliative
treatment of postoperative edema and pain in
superficial soft tissues.

2 On March 9, 2006, applicant filed a substitute specimen
consisting of the last page of the previously filed brochure.
Serial No. 76592393
3
Applicant filed a copy of U.S. Patent 6,652,444 B1
entitled “Supplemental Diabetic Treatment Method” with its
appeal brief. The Examining Attorney lodged an objection
to the patent on the ground that the evidence was not
timely filed. The objection is well taken. 37 C.F.R.
§2.142(d); TMEP §710.01(c); TMBP §1207.01. Accordingly,
the copy of the patent will be given no consideration.
Nevertheless, even if we considered the patent, it would
not change our decision on the merits because the patent is
irrelevant to the issue sub judice.
Applicant argues, in essence, that the reference in
the specimen to applicant’s product does not prohibit the
mark sought to be registered from also acting as a service
mark.
The sole issue on appeal is the acceptability of the
brochure specimen as evidence of service mark use. The
Examining Attorney has not challenged applicant’s statement
that it renders electromagnetic energy treatment services,
that electromagnetic energy treatment services are
registrable services, or that a mark may function as both a
trademark and a service mark.
The problem that the Examining Attorney has with the
brochure specimen is that it makes absolutely no reference
to the applicant’s services. It is the Examining
Serial No. 76592393
4
Attorney’s position that a service mark specimen must make
some reference to the services or be used in the rendering
of the services, otherwise there will be no association
between the mark sought to be registered and the services
specified in the application.
A service mark specimen must show use of the mark in a
manner that will be perceived by potential purchasers as
identifying applicant’s services and indicating their
source. In re Universal Oil Products, Co., 476 F.2d 653,
177 U.S.P.Q. 456 (C.C.P.A. 1973); In re A La Vielle Russie,
Inc., 60 U.S.P.Q.2d 1895 (T.T.A.B. 2001); In re Moody’s
Investors Service Inc., 13 U.S.P.Q.2d 2043 (T.T.A.B. 1989);
TMEP §1301.04(a).
“Where the mark is used in advertising the services,
the specimen must show an association between the mark and
the services for which registration is sought. A specimen
that shows only the mark, with no reference to the
services, does not show service mark usage.” TMEP
§1301.04(b), citing, In re Adair, 45 U.S.P.Q.2d 1211
(T.T.A.B. 1997); In re Johnson Controls, Inc. 33 U.S.P.Q.2d
1318 (T.T.A.B. 1994); In re Duratech Industries Inc., 13
U.S.P.Q.2d 2052 (T.T.A.B. 1989); and others.

Serial No. 76592393
5
“A specimen that shows the mark as used in the course
of performing the services is generally acceptable. Where
the record shows that the mark is used in performing (as
opposed to advertising) the services, a reference to the
services on the specimen itself may not be necessary.”
TMEP §1301.04(b); In re Metriplex Inc., 23 U.S.P.Q.2d 1315
(T.T.A.B. 1992); In re Eagle Fence Rentals, Inc., 231
U.S.P.Q. 228 (T.T.A.B. 1986); In Red Robin Enterprises,
Inc., 222 U.S.P.Q. 911 (T.T.A.B. 1984). However, in
determining whether a specimen is acceptable, the Examining
Attorney must consider applicant’s explanation of how the
specimen is used along with any other available evidence
that shows how the mark is used. TMEP §1301.04(b); In re
International Environmental Corp., 230 U.S.P.Q. 688 (1986).
In the case sub judice, the specimen makes absolutely
no reference, not even an indirect reference, to the
service of providing electromagnetic energy treatment to a
patient. Moreover, there is no evidence that the mark
sought to be registered is used in connection with
advertising electromagnetic energy treatment services or
that it is used in connection with the rendering of those
Serial No. 76592393
6
services.3 The crux of our analysis is that a purchaser or
prospective purchaser of applicant’s services (either
electromagnetic energy treatment services or the rental of
applicant’s product) would view the mark in the brochure as
referring to applicant’s product, the Diapulse®
electromagnetic medical treatment system. We have no basis
upon which to conclude that purchasers would regard the
mark as anything other than a trademark.
Because the specimen does not show the mark used to
identify and to distinguish applicant’s electromagnetic
energy treatment of a patient, the refusal to register
under Sections 1, 2, 3, and 45 of the Lanham Act is
affirmed.
Decision: The refusal to register is affirmed.

3 In its appeal brief, applicant explains that it leases its
device to patients who use the product for an electromagnetic
energy treatment and then return it.