Joseph Smith

Trademark Trial and Appeal Board

Nov 15, 2010

No. 77378967 (T.T.A.B. Nov. 15, 2010)

Mailed: November 15, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dr. Joseph Smith
________

Serial No. 77378967
_______

Mark Levy of Hinman, Howard & Kattell, LLP for Dr. Joseph
Smith.

Barbara Gaynor, Trademark Examining Attorney, Law Office
115 (John T. Lincoski, Jr., Managing Attorney).
_______

Before Seeherman, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Dr. Joseph Smith has applied to register the mark
FIRSTAIDE in standard characters on the Principal Register
with a claim of acquired distinctiveness under Section 2(f)
for the following goods (emphasis added):
Adhesive bandages; Adhesive for bandages for skin
wounds; Adhesive tapes for medical purposes;
Bandages for dressings; Bandages for skin wounds;
Medical adhesive tape; Medical adhesives for
binding wounds; Menstruation bandages; Self
adhesive dressings; Surgical bandages; Anti-
infective products for veterinary use;
Deodorizing products, namely, all purpose
deodorizer preparations for household, commercial
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77378967
2
and industrial use; Dermatological pharmaceutical
products; Dietary and nutritionally fortified
food products adapted for medical use; First aid
kits; First aid kits for domestic or other non-
professional use; Herbal products, namely,
aromatherapy packs containing herbs used for
relief from headaches, insomnia and sinus
discomfort; Nutritional supplements in lotion
form sold as a component of nutritional skin care
products; Parapharmaceutical products for use in
dermatology; Pharmaceutical preparations, namely,
a blood clotting aid and delivery system for use
in human and veterinary medicine; Pharmaceutical
products and preparations against dry skin caused
by pregnancy; Pharmaceutical products and
preparations for hydrating the skin during
pregnancy; Pharmaceutical products and
preparations for pregnancy blemishes;
Pharmaceutical products and preparations for
preventing skin blemishes during pregnancy;
Pharmaceutical products and preparations to
prevent stretch marks; Pharmaceutical products
and preparations to prevent swelling in the legs;
Pharmaceutical products for ophthalmological use;
Pharmaceutical products for skin care for
animals; Pharmaceutical products for the
treatment of bone diseases; Pharmaceutical
products for the treatment of viral and
infectious diseases, for the treatment of cancer;
Pharmaceutical products for treating respiratory
diseases and asthma; Products and preparations
for cleansing the skin for medical use; Topical
first aid gel; Cotton for medical purposes;
Cotton sticks for medical purposes; Cotton swabs
for medical purposes; Cotton wool for medical
purposes; Antibiotic creams; Antibiotic handwash;
Antibiotic ointments; Antibiotic preparations;
Antibiotic tablets; Antibiotics; Antifungal
creams for medical use; Corn and callus creams;
Hydrocortisone cream; Medicated skin care
preparations, namely, creams, lotions, gels,
toners, cleaners and peels; Medicinal creams for
skin care; Mixed antibiotic preparations;
Multipurpose medicated antibiotic cream,
analgesic balm and mentholated salve;
Pharmaceutical preparations for the prevention
and treatment of ocular disorders or diseases,
Ser No. 77378967
3
for the treatment of bacteria-based diseases, and
for the treatment of diabetes, and anti-infective
preparations, antiviral preparations,
antibiotics, antifungal preparations and vaccines

in International Class 5.1
Procedural History
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s proposed mark is merely descriptive of a
feature or quality of applicant’s goods, and that the
evidence submitted with the application is insufficient to
establish acquired distinctiveness under Section 2(f).2 In
response, applicant submitted additional evidence of
acquired distinctiveness in support of his claim under

1 Application Serial No. 77378967 was filed January 23, 2008,
based upon applicant’s assertion of December 15, 2002 as the date
of first use of the mark anywhere and in commerce in connection
with the goods. Applicant submitted a claim of acquired
distinctiveness under Trademark Act Section 2(f) based upon his
assertion of substantially exclusive and continuous use of the
mark for at least five years prior to the declaration, and his
ownership of Registration No. 2926217 for the mark shown below
for “Bandages for skin wounds; surgical bandages; cotton swabs
for medical purposes; gauze; medicated dental floss; sanitary
napkins; sanitary cream, namely, multipurpose medicated
antibiotic cream; sanitary tape, namely, medical adhesive tape;
antiseptic spray and solution,” in International Class 5, with a
disclaimer of “FIRST AID.”

2 In addition, the examining attorney advised applicant that his
improper disclaimer of all of the wording in the mark would be
deleted; and required additional information from applicant
regarding his proposed concurrent use claim. Applicant
subsequently withdrew the concurrent use claim.
Ser No. 77378967
4
Trademark Act Section 2(f). The examining attorney then
refused registration under Trademark Act Section 2(e)(1) on
the ground that the proposed mark is generic.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Arguments of Applicant and the Examining Attorney
Applicant sets forth several arguments in favor of
registration of his mark. In support of his position that
FIRSTAIDE is not a generic term for his goods, applicant
argues that “first aid” is a service in the form of
emergency medical treatment “directed toward an individual
who is presumably awaiting further medical care.”3 However,
applicant contends that his “product is not a service
provided by an outside source, but a tangible good intended
for use in situations that do not necessarily require
further medical assistance and one that can presumably be
used even on oneself [sic].”4 Applicant further argues that
a “first aide” may be thought of as an individual who
provides “first aid.” Thus, applicant argues that
regardless of the meaning of “first aid” in relation to
providing emergency medical services, FIRSTAIDE is not a
generic term as applied to applicant’s goods. Applicant

3 Applicant’s brief. p. 5.
4 Id.
Ser No. 77378967
5
also raises the related argument that simply because first
aid kits contain goods identified by the FIRSTAIDE
designation such as adhesive bandages, it does not
necessarily follow that FIRSTAIDE, as used for adhesive
bandages and other such goods, is generic therefor.
Finally, despite seeking registration under Section
2(f), by which applicant concedes that his mark is not
inherently distinctive, applicant argues that “FIRSTAIDE
may be established as a distinctive mark, and so not
‘merely descriptive.’”5 While acknowledging that FIRSTAIDE
“is phonetically equivalent to ‘first aid,’”6 applicant
nonetheless asserts that his “product, however, is easily
accessible to consumers and is not found behind registers.
Thus, the mark virtually is never pronounced.”7 Applicant
argues that, as a result, the phonetic equivalence of
FIRSTAIDE to “first aid” is less significant than the
visual distinctiveness of FIRSTAIDE “by virtue of the
combination of the words ‘first’ and ‘aide.’”8 In view of
the foregoing, applicant contends that FIRSTAIDE does not

5 Id. at p. 9.
6 Id. at p. 10.
7 Id.
8 Id.
Ser No. 77378967
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describe the identified goods, but merely suggests a
quality thereof.9
The examining attorney argues that “first aid” is
“emergency treatment administered to a sick person before
professional medical care is available;”10 that a “first aid
kit” is “a standard collection of first aid supplies for
treatment of minor injuries or stabilization of major
injuries;”11 and that applicant’s goods include “first aid
kits” as well as items commonly contained therein. Thus,
the examining attorney argues, FIRSTAIDE is generic as
applied to such goods, in spite of its novel spelling.
The examining attorney argues in the alternative that
FIRSTAIDE merely describes a function, feature, quality or
use of applicant’s goods; and that by seeking registration
under Section 2(f), applicant has conceded as much.
Finally, the examining attorney argues that the
designation FIRSTAIDE is incapable of acquiring
distinctiveness and is unregistrable under Trademark Act

9 Again, it is noted that by seeking registration under Section
2(f), applicant has conceded that his mark is not inherently
distinctive. Nonetheless, applicant argues in his brief on
appeal that his mark is inherently distinctive and does not
present any arguments with regard to the sufficiency of his claim
of acquired distinctiveness under Section 2(f).
10 The American Heritage Dictionary of the English Language, (4th
ed., 2000) submitted with the examining attorney’s May 5, 2008
and January 11, 2009 Office actions.
Ser No. 77378967
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Section 2(f); and that, in the event FIRSTAIDE is not found
to be generic, applicant has submitted insufficient
evidence that his mark has acquired distinctiveness to be
registrable under Section 2(f).
In support of her position, the examining attorney has
submitted the above-noted definitions of “first aid” and
“first aid kit.” The examining attorney further has
submitted evidence from commercial, informational and
government Internet websites indicating that the term
“first aid” is widely used to refer to kits containing
items used to provide emergency treatment of injuries and
illnesses to humans and pets. The following examples are
illustrative (emphasis added to reflect goods identified in
the involved application):
A well-stocked first-aid kit, kept within easy
reach, is a necessity in every home. Having
supplies gathered ahead of time will help you
handle an emergency at a moment's notice. You
should keep one first-aid kit in your home and
one in each car. Also be sure to bring a first-
aid kit on family vacations.
Include the following in each of your first-aid
kits:
first-aid manual
sterile gauze
adhesive tape
adhesive bandages in several sizes
elastic bandage
antiseptic wipes

11 http://en.wictionary.org/wiki/first_aid_kit, submitted with the
examining attorney’s May 5, 2008 and January 11, 2009 Office
actions.
Ser No. 77378967
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soap
antibiotic cream (triple-antibiotic ointment)
antiseptic solution (like hydrogen peroxide)
hydrocortisone cream (1%)
acetaminophen and ibuprofen
extra prescription medications (if the family is
going on vacation)
tweezers
sharp scissors
safety pins
disposable instant cold packs
calamine lotion
alcohol wipes or ethyl alcohol
thermometer
plastic gloves (at least 2 pairs)
flashlight and extra batteries
mouthpiece for administering CPR (can be obtained
from your local Red Cross)
your list of emergency phone numbers
blanket (stored nearby);12

The Red Cross recommends that all first aid kits
for a family of four include the following:
• 2 absorbent compress dressings (5 x 9 inches)
• 25 adhesive bandages (assorted sizes)
• 1 adhesive cloth tape (10 yards x 1 inch)
• 5 antibiotic ointment packets (approximately 1
gram)
• 5 antiseptic wipe packets
• 2 packets of aspirin (81 mg each)
• 1 blanket (space blanket)
• 1 breathing barrier (with one-way valve)
• 1 instant cold compress
• 2 pair of nonlatex gloves (size: large)
• 2 hydrocortisone ointment packets
(approximately 1 gram each)
• Scissors
• 1 roller bandage (3 inches wide)
• 1 roller bandage (4 inches wide)
• 5 sterile gauze pads (3 x 3 inches)
• 5 sterile gauze pads (4 x 4 inches)
• Oral thermometer (non-mercury/nonglass)
• 2 triangular bandages
• Tweezers

12 www.kidshealth.org
Ser No. 77378967
9
• First aid instruction booklet;13

First Aid Kits – Medical Supplies - Information &
Resources
Leaders in first aid supply, personal protection
products, disaster preparedness and medical
supplies for commercial, industrial and
residential use with loads of additional
information and resources for your
company or organization. When it comes to first
aid, 1stAidSupplies.com is a nationwide leader
offering quality first aid kits and supply. Our
first aid kits and cabinets meet or exceed OSHA
standards and are available for commercial
offices, job sites, homes, and vehicles with all
the essentials medical supplies in case an
emergency occurs. Refills for all first aid kits
and cabinets are available.
Within our first aid and medical supplies you
will find products for burn care, bloodborne
pathogens, CPR and AED products, eye care,
ointments, antiseptics, pain relief products,
over the counter medications, trauma kits,
disaster preparedness and survival products,
search and rescue tools, storage containers,
protective equipment including gloves, exam
gloves, ear protection, head and body
protection, respirators and face masks, safety
glasses and so much more;14 and

Assemble a first aid kit for your home and one
for each car. A first aid kit should
include:
• Sterile adhesive bandages in assorted sizes
• 2-inch sterile gauze pads (4-6)
• 4-inch sterile gauze pads (4-6)
• Hypoallergenic adhesive tape
• Triangular bandages (3)
• 2-inch sterile roller bandages (3 rolls)
• 3-inch sterile roller bandages (3 rolls)
• Scissors
• Tweezers

13 www.redcross.org
14 www.1staidsupplies.com
Ser No. 77378967
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• Needle
• Moistened towelettes
• Antiseptic
• Thermometer
• Tongue blades (2)
• Tube of petroleum jelly or other lubricant
• Assorted sizes of safety pins
• Cleansing agent/soap
• Latex gloves (2 pair) Sunscreen
Non-prescription drugs
• Aspirin or nonaspirin pain reliever
• Anti-diarrhea medication
• Antacid (for stomach upset)
• Syrup of Ipecac (use to induce vomiting if
advised by the Poison Control Center)
• Laxative
• Activated charcoal (use if advised by the
Poison Control Center).15

In addition, the examining attorney has submitted
copies of fourteen third-party registrations for marks that
identify goods including first aid kits and their
components in which the term “first aid” is disclaimed.
The following examples are illustrative: Reg. No. 1771033
for the mark FIRST AID ONLY and design (FIRST AID
disclaimed); Reg. No. 3208452 for the mark CPR SAVERS &
FIRST AID SUPPLY and design (CPR and FIRST AID SUPPLY
disclaimed); Reg. No. 3259101 for the mark FIRSTAID
EXCHANGE (FIRST AID disclaimed); and Reg. No. 3437405 for
the mark FIRST AID...MADE FUN! (FIRST AID disclaimed).

15 www.fema.gov
Ser No. 77378967
11
Issues on Appeal
The issues on appeal are (1) whether the term
FIRSTAIDE is generic for applicant's goods; and,
alternatively (2) if such term is not generic, whether it
is merely descriptive thereof or whether it has acquired
distinctiveness.
Genericness
A term is generic and not a mark if it refers to the
class, genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark 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);
and H. Marvin Ginn Corp., supra. It further is settled
that if the proposed mark is held generic for any of the
goods identified in a class of an involved application,
registration properly is refused as to all of the goods in
that International Class. See In re Analog Devices Inc., 6
Ser No. 77378967
12
USPQ2d 1808, 1810 (TTAB 1988), aff'd without pub. op. 10
USPQ2d 1879 (Fed. Cir. 1989).
The examining attorney has the burden of establishing
by clear evidence that a mark is generic and thus
unregistrable. See In re Merrill Lynch, Pierce, Fenner and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
Evidence of the relevant public’s understanding of a term
may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals,
newspapers, and other publications. See In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985). In determining whether or not the designation
FIRSTAIDE is generic, we must also consider applicant’s
evidence of acquired distinctiveness, since this evidence
also touches on the public perception of this designation.
The determination of whether a term is generic
involves a two-part inquiry: First, what is the category
or class of the goods or services at issue? Second, is the
term sought to be registered understood by the relevant
public primarily to refer to that category of goods or
services? See H. Marvin Ginn Corp., supra. With respect
to the first part of the inquiry, we find, in this case,
that the genus of goods is adequately defined by
applicant’s identification of goods.
Ser No. 77378967
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With respect to the second part of the inquiry, the
evidence of record, excerpted above, is replete with
references to “first aid kit” as a commonly recognized term
for a collection of items used to provide immediate care of
wounds and illnesses. The evidence of record further
establishes that “first aid” is commonly recognized as the
activity of providing emergency care of wounds and
illnesses. Thus, we find that “first aid” is a term of art
with a clearly and widely understood meaning related to
applicant’s goods.16 We further find the term “first aid”
to be generic as applied to the goods identified in the
subject application.
Moreover, we find that the term FIRSTAIDE likewise is
generic as applied to the “First aid kits; First aid kits
for domestic or other non-professional use” identified in
the application. Applicant's designation FIRSTAIDE is

16 Because “first aid” has been shown to be used as a generic
unitary term of art in the relevant field, we need not consider
the generic significance of the words “first” and “aid” alone.
See In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998) [TARIFF
MANAGEMENT found to be a unitary term used in the trade to
describe computer programs for selecting least expensive long
distance carrier]. For the same reason it is unnecessary for us
to engage in a determination of whether FIRSTAIDE, which is a
truncated and novel spelling of “first aid,” is a compound word
or phrase for purposes of analyzing the examining attorney’s
burden of proof. See In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110, 1111-1112 (Fed. Cir. 1987); and In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir.
1999).

Ser No. 77378967
14
phonetically equivalent to “first aid.” Applicant has not
introduced evidence to support his contention that his mark
will be perceived as an assistant who performs emergency
wound care, or otherwise will be perceived as anything
other than a slight misspelling of “first aid.” That is to
say, the fact that FIRSTAIDE is a telescoped, slightly
misspelled version of “first aid” does not result in its
being understood as anything other than the generic term.
The addition or change in one letter normally does not
transform a generic designation into a source indicator.
See, e.g., In re Stanbel, Inc., 16 USPQ2d 1469 (TTAB 1990),
aff'd without pub. op., 20 USPQ2d 1319 (Fed. Cir. 1991)
[where the record established that the term “ice pack” was
a generic designation for a “nontoxic reusable ice
substitute for use in food and beverage coolers,”
applicant's asserted mark ICE PAK was held generic and,
therefore, unregistrable].
The misspelling here still results in a proposed mark
that is the phonetic equivalent of the generic term and
appears nearly the same. In view of the phonetic
equivalence and visual similarity, and given the commonly
understood meaning of the term “first aid,” we have no
doubt that the two terms would be viewed as having the same
meaning. In other words, applicant's use of the term
Ser No. 77378967
15
FIRSTAIDE would be understood by relevant purchasers as
primarily naming a category of kits, namely, first aid
kits.
We acknowledge that “first aid” or “FIRSTAIDE,” in
connection with applicant’s goods, acts as an adjective
rather than a noun. Although it is sometimes argued that
generic terms must be nouns, and that terms used as
adjectives are descriptive rather than generic, that is not
the law. See Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d
1628 (TTAB 1998), citing 2 J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition , Section 12:10 (4th ed.
1997) [“A rule of thumb sometimes forwarded as
distinguishing a generic name from a descriptive term is
that generic names are nouns and descriptive terms are
adjectives. However, this ‘part of speech’ test does not
accurately describe the case law results.”].
Here, we recognize that “first aid” is a noun when
used as the name of the activity of providing emergency
treatment to a sick or injured individual, and is an
adjective when used in connection with the kits that
themselves are used in the performance of such activities.
This adjectival use, however, does not remove the term
FIRSTAIDE from being generic when used in connection with
Ser No. 77378967
16
first aid kits of the type sold by applicant. See Micro
Motion Inc., supra.
In short, “first aid” or FIRSTAIDE is the name of a
category or class of kit. In this case, because the term
FIRSTAIDE directly names the most important or central
aspect or purpose of certain of applicant's goods, namely,
that they are used to perform emergency treatment of
injuries, or “first aid,” this term is generic and should
be freely available for use by competitors. See, for
example, In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718
(CCPA 1970) [CUSTOMBLENDED for gasoline held generic
because category of gasoline was blended personally for the
motorist]; In re Helena Rubinstein, Inc., 410 F.2d 438, 161
USPQ 606 (CCPA 1969) [PASTEURIZED for face cream held
generic]; In re Central Sprinkler Company, 49 USPQ2d 1194
(TTAB 1998) [ATTIC for automatic sprinklers for fire
protection of attics held generic]; and In re Reckitt &
Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991)
[PERMA PRESS for soil and stain removers held generic].
And, as noted above, because FIRSTAIDE is generic as
to certain of the goods applicant offers under its mark,
the mark is unregistrable. See In re Analog Devices Inc.,
6 USPQ2d 1808, 1810 (TTAB 1988), aff'd without pub. op.,
871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); and In re
Ser No. 77378967
17
Allen Electric and Equipment Co., 458 F.2d 1404, 173 USPQ
689, 690 (CCPA 1972) [genericness is determined on the
basis of the goods and/or services identified in the
involved application].
Applicant's ownership of the previously issued
Registration No. 2926217 for the mark

for “Bandages for skin wounds; surgical bandages; cotton
swabs for medical purposes; gauze; medicated dental floss;
sanitary napkins; sanitary cream, namely, multipurpose
medicated antibiotic cream; sanitary tape, namely, medical
adhesive tape; antiseptic spray and solution” does not
compel a different result herein, particularly given the
disclaimer of all of the wording, namely, FIRSTAIDE,
therein.
We have also considered the evidence submitted by
applicant in support of his claim of acquired
distinctiveness, inasmuch as that evidence also touches on
the public perception of the applied-for term. As
discussed in more detail below, we find this evidence
lacking in demonstrating that FIRSTAIDE is perceived as a
trademark and not as a generic term.
In short, the proposed mark is a common designation
Ser No. 77378967
18
used in the industry to identify kits used for the purpose
of providing first aid. The designation FIRSTAIDE is
generic and does not and can not function as a trademark to
distinguish applicant's goods from those of other first aid
kit providers and serve as an indication of origin. The
designation sought to be registered should not be subject
to exclusive appropriation, but rather should remain free
for others in the industry to use in connection with their
first aid kits. See In re Boston Beer Co. L.P., 198 F.3d
1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
Therefore, we conclude that the examining attorney has
met the substantial burden of establishing that FIRSTAIDE
is incapable of identifying and distinguishing the source
of the identified goods.
Acquired Distinctiveness
In view of our finding that FIRSTAIDE is generic for
applicant’s goods, the term cannot be registered under
Section 2(f) of the Act. However, in order to render a
complete opinion we will also address the issue of acquired
distinctiveness. Although applicant has, as noted, argued
in his brief that his mark is inherently distinctive,
applicant’s request that the application be registered
under the provisions of Section 2(f) is an admission that
the mark is not inherently distinctive. We add that the
Ser No. 77378967
19
evidence amply demonstrates that the mark, if it is not
generic, is highly descriptive.
Assuming, arguendo, that FIRSTAIDE is not generic, we
turn to a consideration of whether it has acquired
distinctiveness as a mark. It is applicant’s burden to
establish a prima facie case of acquired distinctiveness.
See Yamaha International Corp. v. Hoshino Gakki Co., Ltd.,
840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Applicant submitted his declaration under Trademark
Rule 2.20, stating the following:
(1) applicant owns prior Registration No. 2926217 for
the mark (“first aid” disclaimed) for “Bandages
for skin wounds; surgical bandages; cotton swabs for
medical purposes; gauze; medicated dental floss; sanitary
napkins; sanitary cream, namely, multipurpose medicated
antibiotic cream; sanitary tape, namely, medical adhesive
tape; antiseptic spray and solution,” in International
Class 5; and
(2) applicant has made substantially exclusive and
continuous use of FIRSTAIDE in commerce in connection with
his goods provided under the FIRSTAIDE designation for over
five years prior to the date upon which the claim of
distinctiveness was made. In addition, applicant submitted
Ser No. 77378967
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with his November 13, 2008 communication portions of the
proceeding file of his involved application; a copy of his
prior registration; advertisements and packaging for goods
under the FIRSTAIDE designation; and a copy of a University
of Wisconsin report on the adhesive properties of bandages
used in a water environment for physical therapy.
However, the evidence submitted by applicant fails to
show that the relevant customers of his goods have come to
view the designation FIRSTAIDE as applicant's source-
identifying mark. See In re Bongrain International Corp.,
894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re
Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997). The issue
here is the achievement of distinctiveness, and the
evidence falls far short of establishing this. Notably,
applicant's evidence fails to indicate any sales or
advertising expenditures related to his FIRSTAIDE
designation. Of perhaps greater significance, the record
is completely devoid of direct evidence that the relevant
classes of purchasers of applicant's goods view FIRSTAIDE
as a distinctive source indicator therefor.
Accordingly, even if the designation FIRSTAIDE were
found to be not generic, but merely descriptive, given the
highly descriptive nature of the designation FIRSTAIDE, we
would need to see a great deal more evidence (especially in
Ser No. 77378967
21
the form of direct evidence from customers) than what
applicant has submitted in order to find that the
designation has become distinctive of applicant's goods.
That is to say, the greater the degree of descriptiveness,
the greater the evidentiary burden on the user to establish
acquired distinctiveness. See Yamaha Int'l. Corp. v.
Hoshino Gakki Co., supra; and In re Merrill Lynch, Pierce,
Fenner & Smith, Inc., 4 USPQ2d 1141 (Fed. Cir. 1987). The
sufficiency of the evidence offered to prove secondary
meaning is evaluated in light of the nature of the
designation. Highly descriptive terms, for example, are
less likely to be perceived as trademarks and more likely
to be useful to competing sellers than are less descriptive
terms. More substantial evidence of secondary meaning than
applicant has provided here is required to establish the
distinctiveness of FIRSTAIDE for goods that include first
aid kits and first aid supplies.
Decision: The refusal under Section 2(e)(1) of the
Act on the ground that the proposed mark is generic is
affirmed; the refusal under Section 2(e)(1) of the Act on
the ground that the mark is merely descriptive and the
Section 2(f) showing is insufficient to establish acquired
distinctiveness is likewise affirmed.