Health Decisions, Inc.

Trademark Trial and Appeal Board

Mar 19, 1998

No. 74497314 (T.T.A.B. Mar. 19, 1998)

Paper No. 17
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 19, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Health Decisions, Inc.
___________
Serial No. 74/497,314
___________
Felicia J. Boyd of Faegre & Benson, attorney for applicant.1
John E. Michos, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
____________
Before Hanak, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Health Decisions, Inc. has filed a service mark
application to register on the Supplemental Register the
mark DEMAND ANALYSIS for “investigation of health care
utilization.”2

1 Applicant’s attorney was appointed by power of attorney filed after
the filing of the briefs in this appeal.
2 Serial No. 74/497,314, in International Class 35, initially filed on
the Principal Register on March 7, 1994, based on use of the mark in
commerce, alleging dates of first use and first use in commerce of May
28, 1993. During the examination of this application, applicant
submitted substitute specimens in response to a requirement by the
Examining Attorney, but applicant did not submit a declaration in
support of the substitute specimens. While the Examining Attorney
issued a requirement for such a declaration and no declaration was filed
Serial No. 74/497,314
2
This application was originally filed on the Principal
Register. The Examining Attorney refused registration 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 of
the services identified in the application, contending that
DEMAND ANALYSIS is a type of marketing or business study.
Subsequently, applicant amended its application, on February
2, 1995, to seek registration on the Supplemental Register.
The Examining Attorney has finally refused
registration, under Section 23 of the Trademark Act, 15
U.S.C. 1091, on the ground that the subject matter of this
application, as used in connection with the identified
services, is generic and, thus, incapable of identifying
applicant’s services and distinguishing them from those of
others.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
The specimen of record in this case is a two-page
promotional letter that describes the company, its mission,
and the services it offers. This letter describes
applicant’s mission as follows:

prior to the issuance of a final refusal herein, the final refusal is
silent on this point. However, applicant has since submitted the
aforementioned declaration. Thus, we find no question regarding the
declaration in support of the substitute specimens to require remand to
the Examining Attorney or to be before us on this appeal.
Serial No. 74/497,314
3
[Applicant] provides organizations with demand
management products and services. Demand
management is a way to help individuals make
rational health and medical choices that balance
all the relevant factors, including benefits,
risks and costs. Demand management results in
better individual health and less costly medical
care.
In this letter, under the heading “Comprehensive Data
Analysis,” applicant states:
[Applicant] provides the only analytical
information package that can track both supply and
demand in health care. It analyzes the use of
medical care, workers’ compensation, disability,
sick leave, and factors in employee behavior
(e.g., work-life satisfaction), to provide a
complete profile of your organization’s health.
The letter then identifies the three components of its
“analytical information package” as DEMAND ANALYSIS™,
PREDICTOR™ and SUPPLY ANALYSIS™. The letter describes the
DEMAND ANALYSIS™ component as follows:
Demand Analysis™ identifies the sources of demand,
revealing patterns of use beyond cost categories.
Demand Analysis™ provides clear, understandable
indicators of each demand component and shows how
each can be modified by health promotion, self-
care, decision support, benefit plan redesign, and
other interventions. Demand Analysis™ tracks how
individuals use health care and the best
intervention strategies to change their usage.
In support of his contention that DEMAND ANALYSIS is
generic as used in connection with the identified services,
the Examining Attorney has submitted excerpts of articles
from the LEXIS/NEXIS Research Database.3

3 Applicant complained in its brief that the Examining Attorney had made
of record only some of the excerpts found during his search of the
Serial No. 74/497,314
4
Following are some excerpts from the LEXIS/NEXIS
evidence herein4:
Joint Committee on Taxation Staff Description on
Methodology and Issues in the Revenue-Estimating
Process - . . . If the Joint Committee staff were
to attempt to incorporate such cyclical demand
analysis in revenue estimates, it would present a
biased picture of the effects of budget
legislation on the Federal deficit . . . (BNA,
Daily Report for Executives, January 24, 1995)
Papers sought for special issue of Journal of
Business-to-Business Marketing - . . . may
include, but will not be limited to,
organizational buying behavior, buyer-seller dyad,
relationship marketing, segmentation, demand
analysis and forecasting, product, pricing, and
placement management, as well as advertising and
sales management. (Marketing News, January 16,
1995)
Consumer acceptance of a new experience good: a
case study of vacuum packed fresh beef - Scan data
are comparable to traditional data sets used in
applied demand analysis. That is, they represent
exchanges between suppliers and consumers.
(Journal of Consumer Affairs, December 22, 1994)
One giant step into development; Loudon shopping
center gives new prominence to grocery chain’s
realty subsidiary - “Based on our demand analysis,

LEXIS/NEXIS database and applicant requested that it be given the
complete results of the search. Upon remand by the Board, the Examining
Attorney sent a copy of the complete results of his search to applicant,
although he did not make these documents of record herein. Applicant
was given an opportunity to submit a supplemental brief, but did not do
so. Thus, while we do not have the additional excerpts before us, we
will assume the excerpts of record are a representative sample of the
results of the Examining Attorney’s search, especially in view of the
fact that applicant did not object or indicate otherwise after receiving
the complete results of the Examining Attorney’s search.
4 We note that a few of the excerpts made of record are duplicative, are
from non-U.S. publications, or are newswire stories. Those excerpts
from non-U.S. sources are of minimal persuasive value as they do not
necessarily show the use of the term as it would be viewed by U.S.
purchasers. Similarly, newswire stories are of minimal persuasive value
as they are directed primarily to editors and journalists, not to the
consuming public.
Serial No. 74/497,314
5
we have enough commercially zoned land to
accommodate us for at least 50 years,” Richmond
said.
Who’s hot in job market - . . . strong growth in
the business-service sectors, but lawyers, as
usual, remain out of luck, according to a job
demand analysis by the Colorado Department of
Labor. (Denver Business Journal, October 28,
1994)
The following demand analysis is based on a survey
of nearly 1,500 Canadian resort guests. (Cornell
Hotel & Restaurant Administration Quarterly,
October, 1994)
Any plan for short-term parking would have to be
accompanied by a demand analysis. (Business
Journal - Portland, September 30, 1994)
. . . presenting a variety of elements to be
addressed in system planning, but a “complete
understanding of the complex system in which
tiltrotor aircraft would operate is lacking,” the
summary says. Planning guidelines and demand
analysis need to be more specific and
standardized, it concluded. (Aviation Daily,
August 9, 1994)
Joint U.S.-Japanese study reveals difficulties of
selling U.S. cars in Japan - . . . study, obtained
by BNA, contains “major findings” in seven key
areas – automobile certification standards,
manufacturer-dealer relations, dealer behaviors
and attitudes, social factors, prices, competitor
analysis, and demand analysis. The Department of
Commerce and the Ministry of International Trade
and Industry are expected to release the full
executive summary of the study. (International
Trade Reporter, February 9, 1994)
The imperfect price-reversibility of world oil
demand - The use of double-log functions in energy
demand analysis has been criticized by Plourde and
Ryan (1985), but there is no clearly superior
alternative. (Energy Journal, October, 1993)
The following excerpt is the only credible excerpt in the
record pertaining specifically to the health care field:
Serial No. 74/497,314
6
The scouts are out: Hospitals are stepping up
physician recruitment because doctors bring
patients and patients fill beds - . . . a medical
staff development plan, a strategy for developing
services over time, which legitimizes their needs.
“We do supply and demand analysis by specialty,
using national and local standards, taking into
account how far people will travel to see a . . .”
(Executive Report, April, 1993)
With respect to genericness, the Office has the burden
of proving genericness by “clear evidence” thereof. In re
Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The critical issue in
genericness cases is whether members of the relevant public
primarily use or understand the term sought to be registered
to refer to the genus (category or class) of goods in
question. In re Women’s Publishing Co. Inc., 23 USPQ2d
1876, 1877 (TTAB 1992). Our primary reviewing court has set
forth a two-step inquiry to determine whether a mark is
generic: First, what is the genus (category or class) of
goods at issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to that
genus (category or class) of goods? H. Marvin Ginn
Corporation v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
The Examining Attorney contends that the evidence of
record establishes the following:
The genus or category of services at issue in this
case consist of studies, investigations or
analyses of the demand for or utilization of a
particular product, commodity, or service. This
Serial No. 74/497,314
7
genus of services, which is individually and
collectively referred to as demand analysis, is
the proper name for any type of study,
examination, or research on the sources or
components of the demand for a particular product,
resource, or service. These analyses share a
common purpose or function, i.e., to identify,
quantify, and/or specify the various components of
demand. Applicant’s investigation of health care
utilization is a type of demand analysis for the
health care industry.
The Examining Attorney contends that, although the area
which is the subject of study may differ, the nature of the
service known as DEMAND ANALYSIS is the same; that
organizations whose business is to conduct research and
analyze demand, regardless of the industry for whom they
perform this service, describe this activity as DEMAND
ANALYSIS; that health care is but one of the many fields in
which the research study commonly known as DEMAND ANALYSIS
is performed; and that the relevant public would understand
applicant’s identified services as falling within the genus
or category of services identified as DEMAND ANALYSIS.
On the other hand, applicant maintains that the genus
or category of services in question is “the investigation of
health care utilization.” In this regard, applicant
maintains that the Examining Attorney has not met his burden
of establishing either that DEMAND ANALYSIS is routinely or
generically applied to such services, or that the relevant
public would so understand the term.
Serial No. 74/497,314
8
We conclude from the record that the appropriate genus
or category of services at issue is, as the Examining
Attorney contends, a type of study that crosses industry
sectors and analyzes demand for, and/or use of, a particular
product or service. The record is replete with references
to such a study as a DEMAND ANALYSIS. The articles
excerpted by the Examining Attorney, which include both
academic journals and trade publications, indicate that the
relevant purchasing public for DEMAND ANALYSIS services
includes businesses and organizations in any field where a
business or organization needs information pertinent to
purchaser or user demand for, or use of, the product or
service offered.5 Further, in view of this evidence, we
believe that the relevant public understands the term DEMAND
ANALYSIS as identifying a type of study as described herein.
Further, specifically in connection with applicant’s
identified services, businesses and organizations in the
health care field, the relevant purchasers of applicant’s
services, will understand the term DEMAND ANALYSIS as
identifying an “investigation of health care utilization.”
Based on the record before us, we conclude that DEMAND
ANALYSIS is generic in connection with these services.
We are not convinced otherwise by applicant’s
contention that we should limit the genus or category of

5 As such, it is not significant that there is only one article using
Serial No. 74/497,314
9
services in this case to the health care industry. To be
found generic, a term does not have to specifically name a
narrow category as long as the goods or services are
encompassed within the broad term. For example, in In re
Analog Devices, 6 USPQ2d 1808 (TTAB 1988), aff’d.
unpublished, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989),
the Board held that the term ANALOG DEVICES named a category
or class of devices having analog capabilities and was
generic for a number of products such as operational
amplifiers, power supplies, converters, transducers,
switches, etc., some of which were in the nature of analog
devices. In response to applicant’s argument that the term
ANALOG DEVICES is a nebulous and vague one, the Board
responded, at 1810:
However, while we readily concede that the
category of products which the term “analog
devices” names encompasses a wide range of
products in a variety of fields, we do not believe
this fact enables such a term to be exclusively
appropriated by an entity for products, some of
which fall within that category of goods. For
example, while terms such as “digital devices,”
“computer hardware,” “computer software,” and
“electronic devices,” just to name a few, may be
broad and even nebulous terms, nevertheless, these
terms may not be exclusively appropriated but must
be left for all to use in their ordinary generic
sense.

the term DEMAND ANALYSIS in relation to the health care industry.
Serial No. 74/497,314
10
Decision: The refusal to register on the Supplemental
Register on the ground that the mark herein is generic in
connection with the identified services is affirmed.
E. W. Hanak
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board