Doctors Making Housecalls, LLC

Trademark Trial and Appeal Board

May 2, 2013

No. 85324528 (T.T.A.B. May. 2, 2013)

Mailed:
May 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Doctors Making Housecalls, LLC
________

Serial No. 85324528
_______

Eric P. Stevens, Esq. of Poyner Spruil LLP for Doctors
Making Housecalls, LLC.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Zervas, Wellington, and Gorowitz,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Doctors Making Housecalls, LLC (applicant) applied to
register DOCTORS MAKING HOUSECALLS, in standard character
form, on the Principal Register as a mark for “providing
on-site medical services to patients at their homes,
apartments, senior communities, offices, or other
designated locations” in International Class 44.1 The
application is based on Section 1(a) of the Trademark Act
(use in commerce) with a claim of first use anywhere and in
This Opinion Is Not a
Precedent of the TTAB
Serial No. 85324528
2
commerce on January 1, 2004. The application also contains
a claim that the mark has acquired distinctiveness under
Section 2(f) of the Trademark Act.
The examining attorney ultimately refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), because the proposed mark is generic for the
identified services. In the event that the mark is not
found to be generic, the examining attorney alternatively
refused registration because applicant has not demonstrated
that the proposed mark has acquired distinctiveness.
Genericness
“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.” In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2011) (citations omitted).
The ultimate test for determining whether a term is
generic is the primary significance of the term to the
relevant public. See Section 14(3) of the Act. As
explained by the Court of Appeals for the Federal Circuit
in H. Marvin Ginn Corp. v. International Ass’n of Fire

1 Application Serial No. 85324528 was filed on May 19, 2011.
Serial No. 85324528
3
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986), “[T]he 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.” 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Deciding this issue
essentially involves a two-step analysis:
First, what is the genus of goods or services at
issue? Second, is the term sought to be registered or
retained on the register understood by the relevant
public primarily to refer to that genus of goods or
services?

Id. 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).
Finally, in making our determination, we keep in mind that
the burden rests with the examining attorney to prove
genericness by "clear evidence." In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987); see also In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
The Genus of Services
Applicant and the examining attorney disagree with
respect to the relevant genus of services.
Applicant asserts that the genus of services should be
simply and broadly construed as “medical services.”
Serial No. 85324528
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Applicant’s brief, p. 6. Applicant contends that while it
does indeed perform services in the nature of medical
visits to homes and offices of patients, this is not the
‘genus’ because its services also “consist of numerous
procedures, including, but not limited to, X-rays, medical
imaging studies, electrocardiograms, and blood drawing, and
they also extend to clerical services, such as the filing
of private insurance claims and Medicare claims.” Id. at
7. In other words, applicant believes that “the entire
breadth of [its] services extends far beyond a mere ‘visit’
to a home or office, the genus of [its] services is
[therefore] properly defined as ‘medical services.’” Id.
The examining attorney, on the other hand, argues the
relevant genus of services is adequately set forth in the
application, namely, “providing on-site medical services to
patients at their homes, apartments ...” and sees no merit
in utilizing a different genus merely because applicant’s
medical services are more varied in scope. He rebuts that
“[t]he fact that the applicant provides other services has
no bearing [on] the issue of genericness, since that
determination is based on the services in question.”
Brief, p. 4.
Here, we agree with the examining attorney and find
that the genus of services is adequately defined by the
Serial No. 85324528
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application’s recitation of services, again, “providing on-
site medical services to patients at their homes,
apartments ... .” See Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
proper genericness inquiry focuses on the description of
services set forth in the [application or] certificate of
registration.”); see also, Reed Elsevier Properties Inc.,
482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007). This is
not to say we have ignored or somehow discounted the
holding in In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420 (Fed. Cir. 2005). In Steelbuilding.com, the
Court of Appeals for the Federal Circuit found the Board
misunderstood the proper genus by limiting the recited
services (“computerized on-line retail services in the
field of pre-engineered metal buildings and roofing
systems”) and not taking into consideration evidence of
applicant’s website. The Federal Circuit found that
applicant’s website were “more than an on-line catalogue”
and the Board failed to appreciate evidence displaying the
“interactive design feature of the applicant’s goods and
services.” Id. at 1298. Indeed, the reasoning in
Steelbuilding.com may be viewed as supporting, or
validating, that the genus is appropriately set forth in
the application’s recitation of services. That is, the
Serial No. 85324528
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evidence of record reflects that applicant renders primary
care medical services to patients “aged 5 to 105” and
“across the entire socioeconomic spectrum,” and that these
services are provided as “We Come to You!” or “We Do It All
– In Your Own Environment” and “Never Wait In a Doctor’s
Office Again.” See specimen of use (a brochure) submitted
with application. Based on the evidence, “providing on-
site medical services to patients at their homes,
apartments, senior communities, offices, or other
designated locations” is the apt genus of services for
purposes of our genericness analysis.
Is the Proposed Mark Understood by the Relevant Consumer
to Refer to That Genus of Services?

“Next, we must determine the relevant public for
applicant's [services].” In re Active Ankle Systems Inc.,
83 USPQ2d 1532, 1536 (TTAB 2007). In this case and, again,
as exemplified by the specimen of use in the application,
applicant’s medical services are offered on-site to
patients of nearly all ages and all socio-economic levels.
In other words, the relevant public is the general public
or, more specifically, anyone in need of medical care. The
question now is whether members of the relevant public
would understand the term DOCTORS MAKING HOUSECALLS to
refer to the recited services. Marvin Ginn, 228 USPQ at
Serial No. 85324528
7
530. “Evidence of the public's understanding of the term
may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Fenner and Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
The record created by the examining attorney in this
case clearly and convincingly shows that the public would
understand DOCTORS MAKING HOUSECALLS to be the name used
for the recited services. The dictionary definitions for
the terms “doctor” and “housecall” were attached to the
first Office action.2 The latter term is defined as “[a]
professional visit made to a home, especially by a
physician.” Thus, for purposes of showing the plain
meaning of the combination of terms comprising the proposed
mark, the mark clearly means physicians (or “doctors”)
making professional visits to a home.
We are well aware that when a proposed mark is a
phrase, as in this proceeding with DOCTORS MAKING
HOUSECALLS, it is not enough to “simply cite definitions
and generic uses of the constituent terms” of the proposed
mark “in lieu of conducting an inquiry into the meaning of
the disputed phrase as a whole.” In re American Fertility,
Serial No. 85324528
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188 F.3d at 1347, 51 USPQ2d at 1836. The evidence must
show “that the phrase as whole...has acquired no additional
meaning to the relevant public than the terms...have
individually.” Id. at 1349.
With this in mind, we note the examining attorney
submitted, inter alia, the following evidence:
1. Copy of a New York Times Article “Retro Medicine:
Doctors Making House Calls (for a Price).” The
article contains the following relevant excerpts:

“some of the doctors are in private practice or work
in hospitals, and they make house calls during their
time off”

“But most health maintenance organizations would not
typically cover any out-of-network house calls”

“When making house calls, ‘you get paid,’ said Dr.
Steven Meed, one of eight New York physicians
working for Sickday Medical House Calls, which
started last year and serves patients in Manhattan.”

2. Twelve (12) LEXIS-NEXIS articles, each containing the
phrase “doctors making housecalls” in the text of the
article. Excerpts include:

“Many in town remember the Smith doctors making
housecalls to deliver babies...” (from Times Record
Arkansas, July 10, 2011);

“...this personalization of health care hearkens to
days of doctors making housecalls ‘when they became
part of your family’ and could be a key component to
the primary care preventive approach to medicine”
(from Targeted News Service, November 15, 2010);

“There are clear healthcare benefits here – doctors
making housecalls in remote areas can transmit images

2 Issued September 16, 2011.
Serial No. 85324528
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to their laptops via Bluetooth...” (from Newstex Web
Blogs, March 21, 2008);

“In Paris, Moore rides shotgun with a doctor making
housecalls for emergencies and not-quite
emergencies...” (from The Denver Post, June 29, 2007);

“It’s not quite the same as doctors making housecalls,
but it is community outreach of the best kind” (from
Fort Wayne News Sentinel, June 27, 2003);

“The days of the family doctor making housecalls to a
patient who has been in his care since childhood are
long gone” (from The Boston Globe, September 22,
2002);

“There’s a swing back to personal care, like home
visits, only instead of doctors making housecalls, the
norm is for community and private health-care
providers like nurses to pay visits to the
incapacitated.” (from The Leader-Post, January 1,
2000); and

“Why Doctors are Making Housecalls. ...house calls
are making a modest comeback, driven not by nostalgia,
but by the desire to cut hospital bills over the long
term...Dr. Joe Rossini is making a house call to a
critically ill 59-year-old woman...Caremore Medical
started sending doctors on house calls three months
ago… (from transcript of CNN Moneyline News Hour with
Lou Dobbs, May 14, 1999).

3. Printout of article “UW Family Medicine Doctors
Making House Calls” from University of Wisconsin
Department of Family Medicine website
(www.fammed.wisc.edu), an excerpt from the article
provides:

“Dr. Melissa Stiles includes house calls as part of
her practice at the University of Wisconsin Belleville
Clinic. ‘I think it’s important, especially in a
rural community, to offer this service,’ said Stiles,
a family physician. Stiles said a typical visit can
feel cold, sterile and impersonal, while house calls
are a service moving toward more personalized health
care.”

Serial No. 85324528
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4. Printout of article “Local Doctors Making House
Calls” (from local Cleveland television news channel
website, www.newsnet5.com)

5. A printout from the York Daily Record/ York Sunday
News article “Remember: Doctors making house calls”
(November 19, 2010, www.ydr.com); and

6. A printout from the TribLIVE News (Pittsburgh
Tribune-Review) website article “Doctors making house
calls are making a comeback” (July 29, 2010,
www.pittsburghlive.com).

Based on the entire record, we find the examining
attorney has shown by clear and compelling evidence that
the phrase “doctors making housecalls” is used by the
general public, including those seeking medical attention,
and would thus be readily understood by the relevant
consumer, to refer to medical services rendered on-site in
the patient’s home, office, etc. While it is also evident
that the term “housecalls” may nostalgically conjure a
once-common service offered by doctors, this does not
detract from the primary significance of the proposed mark
to the relevant public. As the evidence clearly shows, the
practice of doctors visiting patients in their home
continues and the phrase “doctors making housecalls” is
used and understood as a common reference for this type of
service.
Applicant’s arguments are unpersuasive in the face of
the record we have before us. In particular, going back to
Serial No. 85324528
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applicant’s assertion that the genus of services is more
appropriately construed as “medical services,” this would
not change matters. That is, even if we were to accept
such a construction of the relevant genus of services, and
we do not, it would simply mean that applicant’s proposed
mark identifies a subgenus, namely, providing medical
services on-site. It is settled law that registration will
be refused for a term that is generic of a category or
class of products (or services) where some but not all of
the goods (or services) identified fall within that
category. See In re Analog Devices Inc., 6 USPQ2d 1808,
1810 (TTAB 1988); affirmed unpublished at 10 USPQ2d 1879
(Fed. Cir. 1989).
Further, it would be nonsensical to construe
Steelbuilding.com or any other decision as permitting a
party to obtain a registration of generic term for one type
of service simply based on evidence showing that said
applicant renders a broader range of services than those it
seeks to register. Simply put, the fact that applicant may
render a wide-range of medical services, including related
clerical services, is irrelevant to our determination that
DOCTORS MAKING HOUSECALLS is a term that will be primarily
understood by the relevant purchasing public as the common
name for the services recited in the application.
Serial No. 85324528
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In conclusion, there is ample evidence of record and
the examining attorney has sufficiently made out a prima
facie case that DOCTORS MAKING HOUSECALLS is generic for
the recited services. We have no doubt that consumers,
upon viewing this term in connection with the recited
services, will clearly understand this term as a generic
reference to a doctors visiting patients in their homes.
The term is thus incapable of functioning as a registrable
trademark denoting the source of the recited services.
Applicant also cites to third party registrations for
marks containing the term HOUSECALLS or HOUSE CALL(S) and
argues these support its position that DOCTORS MAKING
HOUSECALLS is not generic. In particular, it points to the
following:
1. CORPORATE HOUSE CALLS (the term HOUSE CALLS is
disclaimed) for “physician services, medical testing,
and medical counseling” services;3

2. THE PHARMACY THAT MAKES HOUSE CALLS (the term
PHARMACY is disclaimed) for “home delivery of pharmacy
products and medicines” services;4

3. HOUSE CALL RADIOLOGY (the term RADIOLOGY is
disclaimed)5 for “medical radiology services”; and

4. AM/PM HOUSE CALLS for “medical services.”6

3 Registration No. 3064439 issued February 28, 2006.
4 Registration No. 3530334 issue November 11, 2008.
5 Registration No. 3902611 issued on July 11, 2011.
6 Registration No. 3429826 issued on May 20, 2008.
Serial No. 85324528
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We do not ignore these four registrations and, as
applicant points out, the Office should strive for
consistency in examination. However, we see little
significance in the existence of these third-party
registrations vis-à-vis the issue of whether applicant’s
proposed mark is generic. In all but one of these
registrations, the term “house call(s)” was held to be at
least descriptive for the recited services. Presumably the
wording of the mark HOUSE CALL RADIOLOGY, as a whole, was
decided not to be merely descriptive in connection with
“medical radiology services.” We note all four
registrations feature marks that are quite different from
what applicant proposes, especially when considered in the
context of the respective services. Moreover, we are not
privy to the evidence of record that may have supported a
finding that the entire mark is not merely descriptive or
even generic. In any event, we can hardly base a decision
of genericness on these four registrations nor are we bound
by the prior decisions of examining attorneys. In re
Boulevard Entm't Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480
(Fed. Cir. 2003) (“the PTO must decide each application on
its own merits, and decisions regarding other registrations
do not bind either the agency or this court,”) citing In re
Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Serial No. 85324528
14
Cir. 2001). Rather, focusing on this proceeding and the
record before us, we find the examining attorney has
presented clear and convincing evidence that DOCTORS MAKING
HOUSECALLS would be primarily understood by as a generic
reference to the services recited in the application.
If a term is generic, no amount of evidence of
acquired distinctiveness can establish that the mark is
registrable. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961, 964 (Fed. Cir. 1985). On the
other hand, if applicant’s term is ultimately determined to
not be generic, we now consider the alternative ground for
refusal registration involving acquired distinctiveness.
Acquired Distinctiveness
Inasmuch as applicant is seeking registration under
Section 2(f), there is no issue that its mark is merely
descriptive. The Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed.
Cir. 2009) (“where an applicant seeks registration on the
basis of Section 2(f), the mark’s descriptiveness is a
nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”);
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988). In order to register
its mark under Section 2(f), applicant bears the burden of
Serial No. 85324528
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proving that its mark has acquired distinctiveness. In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). The amount and character of such
evidence depends on the facts of each case, Roux
Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ
34 (CCPA 1970), and more evidence is required where a mark
is so highly descriptive that purchasers seeing the matter
in relation to the goods or services would be less likely
to believe that it indicates source in any one party.
“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha Int’l, 6 USPQ2d
at 1008. See also, In re Bongrain, 13 USPQ2d 1727 (Fed.
Cir. 1990). This evidence can include the length of use of
the mark, advertising expenditures, sales, survey evidence,
and affidavits asserting source-indicating recognition.
As far as evidence, applicant relies heavily on an
affidavit signed by its president, Dr. Alan Kronhaus, who
avers that, inter alia, applicant has:
• Used the proposed mark for nearly ten years;

• Spent between $100,000 to $200,000 annually during
these years advertising its services using the mark in
print and radio advertising, listings in white pages
and display advertisements in yellow pages, online
Serial No. 85324528
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Google advertisements, its own website and “hundreds
of thousands of pieces of direct mail.”

• Received “extensive” unsolicited coverage, including
“numerous” newspaper and magazine articles regarding
applicant’s business and a forty-five minute radio
interview on a local National Public Radio (NPR)
station; and

• Offered numerous presentations, given by Dr. Kronhaus,
in which the proposed mark is used “to indicate to
[Dr. Kronhaus’] professional peers the name in which
[applicant] provides services to consumers.”

Applicant also submitted exhibits with the affidavit
that includes copies of approximately nine newspaper and
magazine articles featuring applicant and its services,
including reference to “Doctors Making Housecalls” being
the name of the service. Applicant also submitted a CD-ROM
(and MP3 files) containing portions of the NPR “State of
Things” segment interview.
Based on the entire record, we find that applicant has
not made a showing that its mark has acquired
distinctiveness. We do not hesitate to point out that
applicant’s burden is great in light of our finding that
the mark is, at a minimum, highly descriptive. In other
words, should the mark be found not to be generic, it is at
least so highly descriptive thus necessitating a greater
amount of evidence establishing acquired distinctiveness.
With respect to applicant’s length of use, it is true
that evidence of substantially exclusive use for a number
Serial No. 85324528
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of years may be considered as evidence of acquired
distinctiveness. However, the weight to be accorded this
kind of evidence depends on the facts and circumstances of
the particular case. See Yamaha, 840 F.2d at 1576, 6
USPQ2d at 1004. Here, we find applicant’s ten years of use
to be simply insufficient, in itself or in conjunction with
the other evidence of record, to show that DOCTORS MAKING
HOUSECALLS has acquired distinctiveness. In addition, the
examining attorney has shown that the phrase “doctors
making housecalls” being used to reference the type of
services described in the application without any clear
reference to applicant.
As far as advertising, applicant’s stated expenditures
in this regard are not insubstantial. Nevertheless, as
often stated, a fruitful or robust advertising campaign is
not in itself necessarily enough to prove secondary
meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual sales
under the mark of approximately eighty-five million
dollars, and annual advertising expenditures in excess of
ten million dollars, not sufficient to establish acquired
distinctiveness in view of highly descriptive nature of
mark). Here, the advertising figures fail to reflect
consumer or public reaction to applicant’s use of DOCTORS
Serial No. 85324528
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MAKING HOUSECALLS. Moreover, it is telling that in the
State of the Nation radio segment submitted by applicant,
the phrase “doctors making housecalls” is used by the radio
host repeatedly to merely describe the type of practice of
doctors visiting patients in their homes and not as a
specific reference to applicant’s business.
Finally, while the Board does not require any specific
type of evidence to show acquired distinctiveness, we would
be remiss if we did not point out the lack of evidence
reflecting how many consumers have actually been exposed to
applicant’s use of this phrase in connection with the
services being rendered, e.g., the number of patients who
have received on-site medical services from applicant in
their homes. In a similar vein, the record does not
include declarations from persons stating that they
actually view the term “doctors making housecalls” as a
specific reference to applicant in lieu of any highly
descriptive meaning that can be attributed to this phrase.
Accordingly, based upon consideration of all the
evidence in the record, we find that applicant has failed
to establish that the DOCTORS MAKING HOUSECALLS has
acquired distinctiveness. Thus, even if the mark were
ultimately determined to not be generic, the alternative
Serial No. 85324528
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ground that the mark is merely descriptive and has not
acquired distinctiveness is likewise affirmed.
Conclusion
Applicant’s term is generic in connection with the
services recited in the application and thus incapable of
distinguishing the services. In the event that the term is
ultimately decided on appeal to not be generic for the
recited services, applicant has not demonstrated that its
mark has acquired distinctiveness.
Decision: The refusals to register is affirmed.