Simplex Healthcare, Inc.

Trademark Trial and Appeal Board

Aug 8, 2013

No. 85347285 (T.T.A.B. Aug. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 8, 2013

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

In re Simplex Healthcare, Inc.
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Serial No. 85347285
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Robert L. Brewer and Martha Allard of Bass Berry & Sims, PLC,
for Simplex Healthcare, Inc.
Darryl M. Spruill, Trademark Examining Attorney, Law Office 112,
Angela Wilson, Managing Attorney.
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Before Bucher, Grendel and Gorowitz,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Simplex Healthcare, Inc. (“applicant”) seeks registration on the Principal
Register of the following mark:

Serial No. 85347285
2

for “online retail store services featuring products for diabetics,” in International
Class 35.1
The examining attorney has refused registration of applicant’s mark on the
Principal Register pursuant to Trademark Act Section 6, 15 U.S.C. § 1056, on the
ground that the literal elements of applicant’s mark consist of a combination of
descriptive terms that conveys information about a feature, field, purpose or use of
applicant’s services, and as such, a disclaimer of the terms “Rx” and “Care Club” is
required.
When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Preliminary matter
In its appeal brief, applicant made reference to a number of third-party
registrations that were never made a part of the record. Inasmuch as the record in
an application should be complete prior to the filing of an appeal (37 C.F.R.
§ 2.142(d); TBMP §§ 1203.02(e), 1207.01), we have not considered applicant’s
untimely evidence. See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB
2011).2

1 Application Serial No. 85347285 was filed on June 15, 2011, based upon applicant’s claim
of a bona fide intention to use the mark in commerce. The mark consists of the wording
"CARE CLUB" below the partial outline of a mortar and pestle, with the letters "RX"
displayed inside the mortar. Applicant has already agreed that no claim is made to the
exclusive right to use the word “Club” apart from the mark as shown.
2 We hasten to add that even if we had considered these registrations, it would not have
changed our decision herein.
Serial No. 85347285
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II. Mere Descriptiveness / Disclaimer requirement
Terms are merely descriptive if they immediately convey knowledge of a
significant quality, characteristic, function, feature, field, purpose or use of the
services it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is determined in relation to
the services for which registration is sought and the context in which the term is
used. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the
question is whether someone who knows what the services are will understand the
terms immediately to convey information about the services. In re MBNA America
Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
The examining attorney argues that the literal portions of applicant’s mark,
namely, “Rx” and “Care Club,” represent a combination of terms that immediately
conveys information about applicant’s services, and as such must be disclaimed. In
support of the Office’s position that the literal elements of this composite mark are
merely descriptive, the examining attorney placed into the record the following
dictionary entries:

Definition of Rx
Rx: A medical prescription. The symbol “Rx” is usually said to stand for the Latin word
“recipe” meaning “to take.” It is customarily part of the superscription (heading) of a
prescription. 3

3 http://www.medterms.com/script/main/art.asp?articlekey=7934
Serial No. 85347285
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care medical dictionary
In medicine and public health, a general term for the application of knowledge to the
benefit of a community or individual.
(05 Mar 2000) 4

club noun, often attributive \ˈkləb\
Definition of CLUB
…
3 a : an association of persons for some common object usually jointly supported and
meeting periodically; also : a group identified by some common characteristic

b : the meeting place of a club
c : an association of persons participating in a plan by which they agree to make
regular payments or purchases in order to secure some advantage
… 5

In response, applicant argues that these dictionary definitions are so broad and
vague as to be meaningless when applied to the composite mark at issue herein.
However, as noted above, the determination as to descriptiveness is made in the
context of one knowing what comprises the involved services. That the word “Club,”
for instance, may refer in some settings to a wooden stick or bat is not controlling in
this case where the word “Club” refers to a group of health-care consumers having
diabetes. “That a term may have other meanings in different contexts is not
controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB
2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)).

4 http://www.mondofacto.com/facts/dictionary?care
5 http://www.merriam-webster.com/dictionary/club
Serial No. 85347285
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Accordingly, we find from the dictionary definitions that all of these three
designations, taken alone, individually convey information about applicant’s
proposed services. The term “Rx” immediately conveys information about medical
prescriptions. The word “care” is a prominent short hand for health care (e.g., the
Affordable Care Act, a.k.a. “ObamaCare”), and in the context of applicant’s services
as recited, no imagination is required to understand the nature of these services. In
fact, applicant has already agreed to disclaim the descriptive term “Club” in the
context of these services.
Having determined that all three of the individual literal components are
merely descriptive, we turn then to the same question as to the combination of these
terms. Specifically, applicant argues at length that the examining attorney has not
provided a dictionary entry for the phrase “Rx CARE.”
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. See e.g., In re Petroglyph Games Inc., 91 USPQ2d 1332 (TTAB 2009)
(BATTLECAM merely descriptive for computer game software); In re Carlson, 91
USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation and real estate listing services); In re Tower
Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and
Serial No. 85347285
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industrial cooking towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB
2001) (AGENTBEANS merely descriptive of computer programs for use in developing
and deploying application programs); and In re Putman Publishing Co., 39 USPQ2d
2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and
information services in the food processing industry).
On the other hand, a mark consisting of a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
unique, non-descriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods. In other words, we must consider the issue of
descriptiveness by looking at the mark in its entirety. Common words may be
descriptive when standing alone, but when used together in a composite mark, they
may become a valid trademark. See Concurrent Technologies Inc. v. Concurrent
Technologies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989) (CONCURRENT
TECHNOLOGIES CORPORATION found not merely descriptive of printed electronic
circuit boards because, while “concurrent” had meaning in the computer field,
“concurrent technologies” had no established meaning in relation to computer
hardware or software).
Applying this test, we find no new, unique or incongruous meaning with the
combination of “Rx” with “Care Club.” “Rx” is a highly descriptive, if not generic,
term for the involved services. Here it is used as an adjective describing the term
“Care Club,” a noun form. We have seen that “care” is an understandable shorthand
for health care, and “club” is immediately recognizable as a group of consumers
Serial No. 85347285
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having a shared medical condition requiring medications. Hence, no imagination is
required to determine the significant characteristics of the named services.
In spite of the fact that there is no dictionary entry for the phrase “Rx Care” as a
combined term, the examining attorney did provide for the record evidence from
the Internet where third parties use this term in connection with pharmacy-related
services – for individual health-care consumers as well as specialized
pharmaceutical services for communities of persons such as large care facilities:
6
7
8
9
It is certainly not necessary for the examining attorney to demonstrate that
competitors are using the exact same combination of terms in order for us to find
that the term “Rx Care” is merely descriptive. Even if applicant should be the only
user of a merely descriptive designation, that does not justify registration if the only
significance conveyed by the term is merely descriptive. See In re Nat’l Shooting
Sports Found., Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR

6 http://www.usrxcare.com/
7 http://www.therxcare.com/
8 http://www.rxcareplus.com/
9 http://www.rxcareassurance.com/
Serial No. 85347285
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TRADE SHOW AND CONFERENCE held descriptive for conducting and arranging
trade shows in the hunting, shooting, and outdoor sports products field).
Nonetheless, it is instructive that the record shows that a variety of online
pharmaceutical entities have chosen this exact formulation.
Finally, with regard to applicant’s request that we treat this application
consistently with two of its other extant registrations, we agree with the examining
attorney that requiring a disclaimer herein is entirely consistent with the
information available to us about these two registrations:
RX CARE CLUB for “online retail store services featuring products for
diabetics” in International Class 35, which issued on the
Supplemental Register, with a disclaimer of the word
“Club.”10
Diabetes Care Club for “mail order services featuring diabetic supplies” in
International Class 35, which issued under the provisions
of Section 2(f) of the Act, with a disclaimer of the word
“Club.”11

In conclusion, we agree with the examining attorney that prospective
consumers would immediately perceive the terms “Rx” and “Care Club” as describing
a significant feature, field, purpose or use of the services in this case. For a
composite mark on the Principal Register, absent a showing of acquired
distinctiveness for these terms, the terms “Rx” and “Care Club” must be disclaimed.

10 Registration No. 4290383 issued on the Supplemental Register on February 12, 2013,
with an acknowledgement that no claim is made to the exclusive right to use the word
“Club” apart from the mark as shown.
11 Registration No. 3552513 issued on December 30, 2008, under Section 2(f) of the Act, with
an acknowledgement that no claim is made to the exclusive right to use the word “Club”
apart from the mark as shown.
Serial No. 85347285
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Decision: The refusal to register applicant’s applied-for mark absent a
disclaimer of the terms “Rx” and “Care Club” is hereby affirmed. However, this
decision will be set aside if, within thirty (30) days of the mailing date of this
decision, applicant submits to the Board a proper disclaimer of the terms “Rx” and
“Care Club.” See Trademark Rule 2.142(g), 37 U.S.C. § 2.142(g); and TBMP § 1218
(3d ed. rev.2, June 2013). A proper disclaimer should read as follows:
No claim is made to the exclusive right to use the terms
“Rx” and “Care Club” apart from the mark as shown.