James Haden, M.D., P.A.

Trademark Trial and Appeal Board

Dec 4, 2019

87169404 (T.T.A.B. Dec. 4, 2019)

This Opinion is a Precedent
of the TTAB

Mailed: December 4, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re James Haden, M.D., P.A.
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Serial No. 87169404
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Lisa R. Hemphill of Foley & Lardner LLP, for James Haden, M.D., P.A.
Andrew Rhim, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Wellington, Shaw and Kuczma,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
I. Background
James Haden, M.D., P.A. (“Applicant”) seeks registration on the Supplemental
Register of the mark for “Medical and health care services, namely,
medical treatment of allergies, asthma, immune disorders, and shortness of breath,”
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in International Class 44.1 The description of the mark reads: “The mark consists of
a red, horizontal oval with a white and blue border. Inside the oval in stacked
formation are the words ‘ALLERGY CARE’ in stylized capital letters in white with
blue outline.” The colors red, blue and white are claimed as features of the mark.
The Examining Attorney initially refused registration on the Principal Register
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
the mark is merely descriptive of Applicant’s services, because it “immediately and
directly conveys some information about the services – namely, the services provide
care for allergies.”2 When the refusal was made final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration, and the appeal resumed on the issue of mere descriptiveness.
Applicant then filed an amendment to allege use and a request for remand, which
included an amendment seeking registration on the Supplemental Register. On
remand, the Examining Attorney accepted the amendment to allege use but, upon
further consideration pursuant to the procedure outlined in Trademark Manual of
Examining Procedure (TMEP) § 1209.02(a)(i), refused registration on the
Supplemental Register under Trademark Act Sections 23(c) and 45, 15 U.S.C.
§§ 1091(c) and 1127, on the ground that the mark is generic and thus incapable of
distinguishing Applicant’s services. After the Examining Attorney made final the

1 Application Serial No. 87169404 was filed on September 13, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 Office Action of July 11, 2017, TSDR p. 1. Citations to the examination record refer to the
Trademark Status & Document Retrieval System (TSDR), by page number, in the
downloadable .pdf format.
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genericness refusal, the appeal resumed on the issue of genericness. We affirm in part
and reverse in part.
II. Genericness
The sole issue before us is whether Applicant’s mark as a whole is generic.
Inasmuch as Applicant has amended the application to seek registration on the
Supplemental Register, the mark is at best merely descriptive. Quaker State Oil
Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972)
(“We also agree with the observation of the board that, when appellant sought
registration of SUPER BLEND on the Supplemental Register, it admitted that the
term was merely descriptive of its goods[.]”). See also In re Consol. Foods Corp., 200
USPQ 477, 478 n.2 (TTAB 1978) (“Registration of the same mark on the
Supplemental Register is not prima facie evidence of distinctiveness; in fact, such a
registration is an admission of descriptiveness.”).
A mark is eligible for registration on the Supplemental Register only if it is
capable of distinguishing an applicant’s goods or services from those of others. 15
U.S.C. § 1091(c); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089
(TTAB 2017). Here, the Examining Attorney contends that Applicant’s mark is
incapable of distinguishing Applicant’s services because it is generic. “A generic term
is the common descriptive name of a class of goods or services.” In re Cordua Rests.,
Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting Princeton
Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed.
Cir. 2015) (internal punctuation omitted)). The generic name by which a [service] is
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known is not a mark which can be registered on the Supplemental Register under
section 23 because such a name is incapable of distinguishing applicant’s [services]
from [services] of the same name . . . by others.” Clairol, Inc. v. Roux Distrib. Co., 280
F.2d 863, 126 USPQ 397, 398 (CCPA 1960).
Whether a proposed mark is generic rests on its primary significance to the
relevant public. In re Am. Fertility Soc’y, 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).
Making this determination “involves a two-step inquiry: First, what is the genus of
goods or 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. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). A term also can be considered generic if the public understands it to refer
to a part of the genus, “even if the public does not understand the term to refer to the
broad genus as a whole.” Cordua Rests., 118 USPQ2d at 1637-38. The Examining
Attorney must establish by clear evidence that a mark is generic. In re Hotels.com,
L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill Lynch,
Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
A. The Genus
Because the identification of goods or services in an application defines the scope
of rights that will be accorded the owner of any resulting registration under Section
7(b) of the Trademark Act, 15 U.S.C. § 1057(b), generally “a proper genericness
inquiry focuses on the description of [goods or] services set forth in the [application
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or] certificate of registration.” Cordua Rests., 118 USPQ2d at 1636 (quoting Magic
Wand, 19 USPQ2d at 1552). We find Applicant’s recitation of services, “medical and
health care services, namely, medical treatment of allergies, asthma, immune
disorders, and shortness of breath,” adequately defines the genus at issue.
B. The Relevant Public’s Understanding of the Mark
We begin with the public’s understanding of the wording in the mark, ALLERGY
CARE. “Evidence of the public’s understanding of [a] term may be obtained from any
competent source, such as consumer surveys, dictionaries, newspapers and other
publications.” In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961,
963 (Fed. Cir. 1985). The relevant public for a genericness determination refers to the
purchasing or consuming public for the identified goods or services. Sheetz of Del.,
Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic
Wand, 19 USPQ2d at 1553). Thus, the relevant public is consumers seeking medical
and health care services regarding allergies, asthma, immune disorders, and
shortness of breath.
The term “allergy” is defined as “[a] damaging immune response by the body to a
substance, especially pollen, fur, a particular food, or dust, to which it has become
hypersensitive.”3 The term “care” is defined as “[t]he provision of what is necessary
for the health, welfare, maintenance, and protection of someone or something.”4

3 Oxford English Dictionary, Office Action of July 11, 2017, TSDR p. 2.
4 Id. at 3.
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The Examining Attorney introduced approximately forty excerpts from Internet
web pages in which third-party medical professionals also use the term ALLERGY
CARE to refer to their medical and health care services. The following examples are
representative:5
1. “For thorough allergy care services, contact the team at Westside Allergy for
assistance” from the Westside Allergy Care webpage.6
2. “Banner Health Clinic, specializing in allergy care, has nationally recognized
allergy physicians who have been caring for allergic adults and children in
Colorado since 1988” from the Banner Health webpage.7
3. “Our goal is to deliver compassionate cutting-edge allergy care for the whole
family” from www.familyallergycare.com.8
4. “Choose UCHealth for allergy care and you’ve got on your side a team of
allergists, immunologists, and ear/nose/throat (ENT) specialists with deep
expertise in allergy diagnosis and treatment” from www.uchealth.org.9

5 Some of the Examining Attorney’s Internet excerpts do not include the URL or the date the
pages were accessed as required under Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039
(TTAB 2010). However, Applicant did not object to these excerpts so we have considered them
for whatever probative value they may have. In re Mueller Sports Med., Inc., 126 USPQ2d
1584, 1586 (TTAB 2018) (by failing to object to Internet excerpts submitted by the examining
attorney that did not include URLs and access dates, applicant waived its objections to the
submission of those websites).
6 Office Action dated April 30, 2018, TSDR p. 4.
7 Id. at 12.
8 Office Action dated July 11, 2017, TSDR p. 5.
9 Office Action dated November 20, 2018, TSDR pp. 8-9.
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5. “Select from a list of doctors who know the latest allergy care treatments”
from www.livehealthonline.com.10
6. “Allergy care is our specialty!” from www.centralmassallergy.com.11
7. “Allergy Care Turf Battle Hits the Courts. Who should treat allergies? The
turf battle between primary care physicians and allergists has escalated into
a lawsuit charging anti-competitive practices” from www.medpagetoday.com.12
8. “That’s why John A. Wade, MD, and the asthma and allergy care team make
it a priority to see patients as soon as possible – to help patients and their
families return to normal life in a timely manner” from www.pvalley.org.13
9. “Although symptoms can be similar, colds and allergies require different
treatment, and Rekha Raveendran, MD, explains how to tell the difference and
why you should choose Ohio State for your allergy care” from
www.wexnermedical.osu.edu.14
10. “Our pediatric specialists in allergy care combine state-of-the-art evaluation,
diagnosis and treatment with the most advanced allergy and immunology
pediatric care available” from www.tulanelakeside.com.15

10 Id. at 12-13.
11 Id. at 14-15.
12 Id. at 18.
13 Id. at 19-20.
14 Id. at 21-24.
15 Id. at 25-27.
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The foregoing evidence shows that ALLERGY CARE is a phrase commonly used
by medical professionals in their advertising to refer to their practices that care for
patients with allergies. Use by others in the field is strong evidence of genericness.
See, e.g., Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041,
1048 (Fed. Cir. 2018); BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 1570, 35
USPQ2d 1554, 1558 (Fed. Cir. 1995). We find that prospective consumers would
therefore understand the phrase ALLERGY CARE to refer to the provision of health
care services related to the diagnosis and treatment of allergies. Simply put,
prospective consumers seeking treatment for allergies will look for doctors and other
medical professionals who provide “allergy care.” We have no doubt that relevant
consumers would readily understand the term ALLERGY CARE to refer to the genus
of services defined by Applicant’s recitation of services. Based on the Examining
Attorney’s evidence we find that the phrase ALLERGY CARE is generic for the
identified services.
Applicant nevertheless argues that ALLERGY CARE as a whole is not generic
because “the term CARE can have different meanings and interpretations and does
not solely relate to medical/health care for treating allergies.”16 This argument is
unpersuasive. The fact that the term CARE has other meanings in other contexts
does not rebut the above-discussed evidence establishing that the entire phrase,
ALLERGY CARE, is used by consumers to refer to the provision of health care

16 Applicant’s Br., p. 5, 17 TTABVUE 8. References to the briefs on appeal refer to the Board’s
TTABVUE docket system. Coming before the designation TTABVUE is the docket entry
number; and coming after this designation are the page references, if applicable.
Serial No. 87169404
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services related to the diagnosis and treatment of allergies. In other words, analysis
of the individual terms is not necessary or relevant in light of the evidence
establishing that the entire phrase is understood to refer to the genus.
Applicant also argues that ALLERGY CARE is not generic because Applicant does
not provide all of the services encompassed by the term:
“[A]llergy care” can encompass a variety of treatments for
various allergies. . . . The services provided under
Applicant’s mark for medical and health care services,
namely, medical treatment of allergies, asthma, immune
disorders, and shortness of breath are only some of the
treatments that may be provided, but does not describe the
whole of the genus of services.17
This argument is unpersuasive as well. Applicant cites to no authority for its
apparent position that ALLERGY CARE cannot be found generic in this case because
it is too broad a term and Applicant’s services identify only some of the treatments
available to treat allergies.18 Applicant’s services are identified as “medical treatment
of allergies,” which must be read broadly to include all of the medical treatments
referenced in the evidence. And, to the extent that Applicant is attempting to
improperly narrow the scope of the identification by asserting it does not offer certain
services, such an argument is unpersuasive because registration must be refused if,
as here, the wording is generic for any of Applicant’s identified services. Cordua
Rests., 118 USPQ2d at 1638 (“A registration is properly refused if the word is the

17 Id. at 5, 17 TTABVUE 8.
18 If that were the case, an applicant could avoid a finding of genericness merely by crafting
an identification of goods or services strategically omitting some of the products or activities
for which the term would otherwise be generic.
Serial No. 87169404
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generic name of any of the goods or services for which registration is sought.” (quoting
2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12:57 (4th ed. 2016))). Here,
the record establishes that the phrase ALLERGY CARE would be understood by the
relevant public as the generic name for medical services for treating allergies, that
is, Applicant’s services.
In further support of registration, Applicant submitted third-party registrations
comprising marks including the terms ALLERGY or CARE for various goods and
services. But many of the registrations disclaim those words, do not contain both as
in Applicant’s mark, or do not use them in connection with medical or health care
services. It is well settled that we must assess each application on its own record and
we are not bound by the decisions of examining attorneys in other cases. Cordua
Rests., 118 USPQ2d at 1635; In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics
similar to [Applicant’s] application, the PTO’s allowance of such prior registrations
does not bind the Board[.]”). Thus, the fact that the terms ALLERGY or CARE have
been registered in other marks does not “bind the Board” in this case. Nett Designs,
57 USPQ2d at 1566. Besides, because of the significant differences between
Applicant’s mark and the third-party marks, we find that the third-party
registrations submitted by Applicant are easily outweighed by the Examining
Attorney’s evidence that the phrase ALLERGY CARE is generic when used in
connection with the identified medical and health care services.
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In sum, we find that the phrase ALLERGY CARE is generic for the identified
services. This does not end our inquiry, however, because Applicant’s mark includes
design and color elements and the phrase ALLERGY CARE in a stylized typeface.
We thus turn to whether, given the background design, color, and stylization, the
entire mark is capable of distinguishing Applicant’s services, and whether the mark
is entitled to registration on the Supplemental Register. In the event the mark is
entitled to registration on the Supplemental Register, Applicant nevertheless must
disclaim ALLERGY CARE. Generic matter must be disclaimed to permit registration
on the Supplemental Register. See In re Wella Corp., 565 F.2d 143, 196 USPQ 7
(CCPA 1977) (Section 6 of the Trademark Act is equally applicable to the
Supplemental Register.); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB
1980) (“Section 6 of the Trademark Act of 1946, which provides for the disclaimer of
‘unregistrable matter’, does not limit the disclaimer practice to marks upon the
Principal Register.”).
Applicant argues that the combination of elements in the mark makes it
registrable on the Supplemental Register:
[T]he distinct commercial impression and presentation of
Applicant’s mark shows it is suitable for registration on the
Supplemental Register. Applicant’s mark appears in a red,
horizontal oval with a blue and white border outlining the
oval. Inside the oval in stacked formation appear the words
“ALLERGY CARE” in stylized capital letters in white with
a blue outline. All of these distinctive features make
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Applicant’s mark a unique source identifier capable of
becoming distinctive.19
The Examining Attorney disagrees, arguing that the background design,
stylization, and color features of the mark are insufficient to support registration.
Regarding the stylization of the wording, the Examining Attorney argues that
“[s]tylized descriptive or generic wording is registrable only if the stylization creates
a commercial impression separate and apart from the impression made by the
wording itself.”20 Regarding the red, white, and blue oval design, the Examining
Attorney argues that “[b]ackground designs in composite marks consisting of common
geometric shapes, such as circles, ovals, squares, triangles, diamonds, and other
geometric designs, are generally not regarded as marks for services absent a showing
of distinctiveness in the design alone.”21
The Examining Attorney’s arguments relate only to registrability on the Principal
Register, that is, whether the design is inherently distinctive or has acquired
distinctiveness, not whether the design is capable of being a source indicator. It is
well settled that stylized non-distinctive wording, common geometric shapes, and
background designs are not regarded as indicators of origin unless they create a
commercial impression separate from the other matter with which they are used, or
if they are shown to have acquired distinctiveness.
It is settled that a display of descriptive or otherwise
unregistrable matter is not registrable on the Principal

19 Applicant’s Br., p. 7, 17 TTABVUE 10.
20 Examining Attorney’s Br., p. 10, 19 TTABVUE 10.
21 Id. at 11.
Serial No. 87169404
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Register unless the design features of the asserted mark
create an impression on the purchasers separate and apart
from the impression made by the words themselves, or if it
can be shown by evidence that the particular display which
applicant has adopted has acquired distinctiveness.
In re Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994). See also Cordua , 118
USPQ2d at 1639; In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998)
(evidence of distinctiveness insufficient to establish a green rectangle background
design is recognized as a trademark for clothing); In re Anton/Bauer, Inc., 7 USPQ2d
1380, 1381 (TTAB 1988) (evidence of distinctiveness insufficient to establish
parallelogram background designs are recognized as trademarks); In re Sadoru
Group, Ltd., 105 USPQ2d 1484, (TTAB 2012) (stylization of descriptive term does not
create a separate and inherently distinctive impression). Nevertheless, because such
stylized non-distinctive wording, common geometric shapes, and background designs
may be registered on the Principal Register with a showing of acquired
distinctiveness, they are capable of serving as indicators of source and also may be
registered on the Supplemental Register.
Accordingly, the issue is not whether Applicant’s mark is inherently distinctive or
has acquired distinctiveness, but whether the mark is capable of serving as an
indicator of source. As stated by the Board in a similar case:
[C]ontrary to the Examining Attorney’s arguments, we are
not concerned at this time with whether or not the
[background] design used by applicant creates a
commercial impression apart from the text within or
whether it functions as a service mark. Those questions
must be reserved for such time as applicant may seek to
register its design under the provisions of Section 2(f)
Serial No. 87169404
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based on a claim of acquisition of secondary meaning, if
such event should ever occur. Our only inquiry here is does
the matter presented for registration have the capability of
eventually functioning as a trademark.
In re FSR Brokerage, Inc., 224 USPQ 794, 795 (TTAB 1984). Thus, the question is
whether the stylization of the wording and the background design are capable of ever
functioning as a mark.
As recited above, Applicant’s mark is . The description of the mark
reads: “The mark consists of a red, horizontal oval with a white and blue border.
Inside the oval in stacked formation are the words ‘ALLERGY CARE’ in stylized
capital letters in white with blue outline.” The colors red, blue and white are claimed
as features of the mark.
Applicant’s mark contains a combination of colors, borders, and stylized generic
wording making it more than an ordinary geometric shape or stylization alone with
no ability to indicate source. Indeed, common geometric shapes with simple
embellishments have registered with adequate showings of acquired distinctiveness.
See, e.g., In re Raytheon Co., 202 USPQ 317, 319-20 (TTAB 1979) (evidence of record
sufficient to establish acquired distinctiveness of a light-colored oval within a black
rectangular carrier); In re Serial Podcast, LLC, 126 USPQ2d 1061, 1063 (TTAB 2018)
(evidence of record sufficient to establish acquired distinctiveness of composite logos
consisting of disclaimed generic word in rectangles with rounded corners). On this
record, we cannot say that the combination of colors, borders, and stylization found
Serial No. 87169404
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in Applicant’s mark are commonly used or so lacking in creativity that it could never
serve to distinguish Applicant’s services from similar services offered by others. We
thus find that the combination of colors, borders, and stylization in Applicant’s mark
are capable of distinguishing the source of Applicant’s services. See In re Vasco Metals
Corp., 154 USPQ 191, 192 (TTAB 1967) (“[W]e cannot preclude the possibility that,
under appropriate circumstances and conditions, [a merely descriptive term] may
possess the capacity to distinguish an applicant’s goods. And no matter how remote
such a possibility may seem, it cannot be ignored and therefore disregarded.”).
In conclusion, we find that the phrase ALLERGY CARE is generic for Applicant’s
identified services and must be disclaimed, but Applicant’s entire mark featuring a
combination of colors, borders, and stylization is entitled to registration on the
Supplemental Register with a disclaimer of ALLERGY CARE.
Decision: The refusal to register Applicant’s mark on the ground that ALLERGY
CARE is generic is affirmed in the absence of a disclaimer. However, if Applicant
submits a disclaimer of ALLERGY CARE to the Board within thirty days, the refusal
to register will be set aside.22 See Trademark Rule 2.142(g), 37 C.F.R. § 2.142.

22 Applicant should submit a disclaimer in the following standardized format: No claim is
made to the exclusive right to use “ALLERGY CARE” apart from the mark as shown.