Team Health, Inc.

Trademark Trial and Appeal Board

May 17, 2011

No. 77737393 (T.T.A.B. May. 17, 2011)

Mailed:
May 17, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Team Health, Inc.
________

Serial No. 77737393
_______

Mark S. Graham of Leudeka, Neely & Graham for
Team Health, Inc.

Jay C. Besch, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Walters, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Team Health, Inc. filed a use-based application for
the mark HEALTH CARE FINANCIAL SERVICES OF TEAMHEALTH, in
standard character form, for the services ultimately
identified below.
Medical billing services for emergency
and other physician groups, hospitals
and hospital emergency departments,
clinics, and health care providers;
medical coding services in the nature
of assigning predetermined codes for
purposes of identifying medical
diagnoses and procedures for emergency
and other physician groups, hospitals
and hospital emergency departments,
clinics, and health care providers;
interactive record-keeping services for
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77737393
2
use in risk management and
rules/regulation compliance by
emergency and other physician groups,
hospitals and hospital emergency
departments, clinics, and health care
providers; business consulting services
for emergency and other physician
groups, hospitals and hospital
emergency departments, clinics, and
health care providers; account
management services, namely, patient
account management services in the
nature of medical account receivable
services for emergency and other
physician groups, hospitals and
hospital emergency departments,
clinics, and health care providers, in
Class 35; and

Regulatory compliance consulting in the
field of health care for emergency and
other physician groups, hospitals and
hospital emergency departments,
clinics, and health care providers;
reviewing standards and practices to
assure compliance with health care
rules and regulations, in Class 45.

Applicant claimed first use of the mark anywhere and in
commerce as of October 3, 2005.
The Examining Attorney required applicant to disclaim
the exclusive right to use the term “Health Care Financial
Services” “because it merely describes applicant’s
services, namely, providing billing and other financial
services for healthcare providers.”1 See Section 6(a) of
the Trademark Act of 1946, 15 U.S.C. §1056(a) (“The

1 August 28, 2009 Office Action.
Serial No. 77737393
3
Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable”).
In response, applicant argued that when used in
connection with the services set forth in the application,
the term “Health Care Financial Services” is suggestive.
In the alternative, applicant claimed that the term “Health
Care Financial Services” had acquired distinctiveness by
virtue of applicant’s substantially exclusive and
continuous use of the mark since October 3, 2005.2 In a
subsequent response, applicant agreed to disclaim the
exclusive right to use the terms “Health Care” and
“Financial Services,” but not the entire phrase “Health
Care Financial Services.”3
The Examining Attorney issued a final requirement that
applicant disclaim the entire unitary phrase “Health Care
Financial Services” and a final refusal to register the
mark under the provisions of Section 2(f) on the ground
that applicant failed to establish that the term “Health
Care Financial Services” has acquired distinctiveness.
The issues on appeal are as follows:

2 Applicant’s January 20, 2010 Response.
3 Applicant’s March 3, 2010 Response.
Serial No. 77737393
4
1. Whether the term “Health Care Financial Services”
is merely descriptive when used in connection with the
services identified in the application?;
2. Whether applicant’s claim of five years
substantially and exclusive use of the term “Health Care
Financial Services” is sufficient to support a claim of
acquired distinctiveness under the provisions of Section
2(f) of the Trademark Act?; and
3. Whether applicant may disclaim the exclusive
right to use the individual terms “Health Care” and
“Financial Services” rather than the entire phrase “Health
Care Financial Services”?
Applicant’s specimen of use displays the mark as set
forth below and provides the following information:
Health Care Financial Services of TeamHealth
Overview
Wouldn’t you like to collect more of
the money your physician practice is
legitimately owed, faster?

* * *

Medical Billing. From enrolling your
physicians to preparing patient
statements, HCFS provides reliable,
full service management of your entire
revenue cycle. Our extensive national
experience in medical billing, coding
and managed care contracting generates
the horsepower need to optimize revenue
and keep days in A/R below average.
Serial No. 77737393
5
Business Intelligence and Reporting. …
We leverage the power of technology to
bring you a clear, meaningful snapshot
of your physician productivity and
fiscal health.

Coding and Documentation. Poor
documentation or coding not only costs
you dearly in lost revenue; it places
your practice in danger of fines or
worse. We train all our client
providers to documents properly and all
coding is then performed with high
accuracy by our trained experienced
professionals.

Compliance Expertise. … We’ve
implemented strategies to meet HIPAA
privacy requirements and safeguard all
our clients’ information; and our
standards-based coding methodology and
pre-billing audit programs are second
to none.

Dedicated Account Management. Your
account manager will provide you with
timely updates, answer any questions
you may have, and look for
opportunities to optimize your revenue.

In an excerpt from applicant’s website describing the
HEALTH CARE FINANCIAL SERVICES OF TEAMHEALTH, applicant
states that “we’ve been successfully helping emergency
medicine practices create a healthier financial future.”4
The Examining Attorney submitted the following
definition of the term “Health Care” from the Yahoo!
Education website (yahoo.com):5

4 March 26, 2010 Office Action.
5 Id.
Serial No. 77737393
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Noun:

The prevention, treatment, and
management of illness and the
preservation of mental and physical
well-being through the services offered
by the medical and allied health
professionals.

Adjective:

Of or relating to health care: the
health care industry.

The Examining Attorney also submitted the entry for
the term “Financial Services” from the Wikipedia website.6
That entry states that “Financial Services refer to
services provided by the financial industry” that deal with
the management of money.
A. Whether HEALTH CARE FINANCIAL SERVICES is merely
descriptive?

A multiple-class application may be viewed as a group
of applications for registration of a mark in connection
with goods or services in each class, combined into one
application. Each class of goods or services must be
considered separately. See G&W Laboratories, Inc. v. G W
Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) (an applicant
for a multiple class application is in the same position it
would be had it filed several single-class applications).

6 Id.
Serial No. 77737393
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There is no evidence that the term HEALTH CARE
FINANCIAL SERVICES is descriptive when used in connection
with the services identified in Class 45 (i.e., regulatory
compliance services and reviewing standards and practices
to assure compliance with health care rules and
regulations). Moreover, the Examining Attorney contends
that the term HEALTH CARE FINANCIAL SERVICES is a unitary
term.7 In view of the foregoing, the requirement for a
disclaimer of the term HEALTH CARE FINANCIAL SERVICES for
the services in Class 45 is reversed. Also, the refusal to
register the term HEALTH CARE FINANCIAL SERVICES TEAMHEALTH
without a showing of acquired distinctiveness for the term
HEALTH CARE FINANCIAL SERVICES for the services in Class 45
is reversed.
With respect to the services identified in Class 35,
the Examining Attorney required applicant to disclaim the
exclusive right to use the term “Health Care Financial
Services” on the ground that it is merely descriptive. A
term is merely descriptive of services within the meaning
of Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C.
§1052(e)(1), if it directly conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods at issue. In re Abcor

7 Examining Attorney’s Brief, unnumbered pages 5-13.
Serial No. 77737393
8
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218
(CCPA 1978). Whether a term is merely descriptive is not
determined in the abstract, but in relation to the services
for which registration is sought, the context in which it
is being used on or in connection with the services, and
the possible significance that the term would have to the
average purchaser of the services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). In other words, the question is
not whether someone presented with only the mark could
guess what the services are. Rather, the question is
whether someone who knows what the services are will
immediately understand the mark as directly conveying
information about them (i.e., whether someone familiar with
applicant’s “account receivable services” or “medical
billing services” will understand that the term “Health
Care Financial Services” directly conveys information about
them). In re Tower Tech Inc., 64 USPQ2d 1314, 1317 (TTAB
2002); In re Patent and Trademark Services, Inc., 49 USPQ2d
1537, 1539 (TTAB 1998).
The term HEALTH CARE FINANCIAL SERVICES is composed of
two terms, HEALTH CARE and FINANCIAL SERVICES, which when
combined maintain their original meanings (i.e., the
Serial No. 77737393
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management of money in the health care industry). When two
descriptive terms are combined and each component retains
its descriptive significance in connection with the
services at issue, the combination is descriptive. In re
Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009)
(BATTLECAM is merely descriptive for computer game software
because the combination of the terms “Battle” and “Cam”
does not result in a composite that alters the meaning of
either term); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB
2009) (URBANHOUZING is merely descriptive of real estate
brokerage, real estate consultation and real estate listing
services because the compression of the word URBAN HOUSING
into a single term, URBANHOUZING, still conveys the
commercial impression of two words). See also TMEP
§1209.03(d) (7th ed. 2010). The descriptive character of
the term HEALTH CARE FINANCIAL SERVICES is so obvious, if
not glaring, that prospective clients would recognize it
for what it is without any analysis, that is, a designation
that describes financial services for the health care
industry.
It is well settled that the fact that the composite
term HEALTH CARE FINANCIAL SERVICES is not found in a
dictionary is not controlling on the question of whether a
composite mark is merely descriptive. See In re Zanova
Serial No. 77737393
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Inc., 59 USPQ2d 1300, 1305 (TTAB 2001) (ITOOL held merely
descriptive of providing custom services for web sites and
the design of web sites); In re Orleans Wines, Ltd., 196
USPQ 516, 517 (TTAB 1977) (BREADSPRED held merely
descriptive of jellies and jams).8
Applicant argues that the term HEALTH CARE FINANCIAL
SERVICES “has an air of incongruity due to the use of
‘health care’ as an adjective for ‘financial services.’”9
We disagree. There is nothing incongruous about the
combination of the terms “health care” and “financial
services.” In fact, as indicated above, applicant’s
website describing HEALTH CARE FINANCIAL SERVICES OF
TEAMHEALTH states that “we’ve been successfully helping
emergency medicine practices create a healthier financial
future.” Thus, applicant uses the term HEALTH CARE

8 Applicant also asserts that “[a] search of the Google database
shows that the only results for a search of the wording “Health
Care Financial Services” are uses of the wording in Applicant’s
mark and in the names of a small handful of other subsequent
users of similar marks for their businesses.” (Applicant’s
Brief, pp. unnumbered pages 6-7). However, because applicant did
not submit the Google search results, they are not of record and
we cannot give them any consideration. Nevertheless, even if
applicant had submitted the search results, the fact an applicant
may be the first and/or only user of a descriptive term does not
justify registration if the only significance conveyed by the
term is merely descriptive. In re Hunter Fan Co., 78 USPQ2d
1474, 1476 (TTAB 2006).
9 Applicant’s Brief, unnumbered page 7.
Serial No. 77737393
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FINANCIAL SERVICES to describe its medical billing services
and accounts receivable services.
In view of the foregoing, we find that the term HEALTH
CARE FINANCIAL SERVICES when used in connection with the
services identified in Class 35 is merely descriptive.
B. Whether applicant has established that the term HEALTH
CARE FINANCIAL SERVICES has acquired distinctiveness?

Applicant, in the alternative, claimed that the term
HEALTH CARE FINANCIAL SERVICES had acquired distinctiveness
by virtue of its substantially exclusive and continuous use
of that term since 2005. The Examining Attorney refused to
accept applicant’s claim of acquired distinctiveness based
solely on a claim of substantially exclusive and continuous
use since 2005 and required additional evidence.
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f),
provides that “proof of substantially exclusive and
continuous use” of a designation “as a mark by the
applicant in commerce for the five years before the date on
which the claim of distinctiveness is made” may be accepted
as prima facie evidence that the mark has acquired
distinctiveness as used with the applicant’s goods or
services in commerce. See also 37 C.F.R. §2.41(b).
Accordingly, for marks refused registration as being
merely descriptive, whether the statement of five years’
Serial No. 77737393
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use is sufficient in and of itself to establish acquired
distinctiveness depends on the degree to which the mark is
descriptive. If the mark is highly descriptive of the
services named in the application, the statement of five
years’ use alone will be deemed insufficient to establish
acquired distinctiveness. See In re Gray Inc., 3 USPQ2d
1558, 1559 (TTAB 1987) (“[T]o support registration of
PROTECTIVE EQUIPMENT [for burglar and fire alarms and
burglar and fire alarm surveillance services] on the
Principal Register a showing considerably stronger than a
prima facie statement of five years’ substantially
exclusive use is required”); In re Quatomatic, Inc., 185
USPQ 59, 60-61 (TTAB 1974) (considering the nature of the
term STRIPPERS for treatment of wooden and metallic
elements and products in order to remove existing finishes
therefrom a declaration of distinctiveness based on use
alone is not persuasive); In re Hayes, 154 USPQ 493, 494
(TTAB 1967) (depending on the nature of the mark involved,
the mere length of time an applicant may have had exclusive
use of the term is not necessarily determinative of its
right to register). Cf. In re Synergistics Research Corp.,
218 USPQ 165 (TTAB 1983) (applicant’s declaration of five
years’ use held sufficient to support registrability under
§2(f) of BALL DARTS for equipment sold as a unit for
Serial No. 77737393
13
playing a target game, in view of lack of evidence that the
term is highly descriptive (e.g., no dictionary evidence of
any meaning of BALL DARTS and no evidence of use of the
term by competitors or the public)).
In view of our finding that the elements of the
composite term HEALTH CARE FINANCIAL SERVICES maintain
their original meanings (i.e., the management of money in
the health care industry) and applicant’s assertion that “a
small handful of other subsequent users of similar marks
for their businesses,” we find no error in the Examining
Attorney requiring applicant to support its claim of
acquired distinctiveness with more than a declaration of
substantially exclusive and continuous use. Thus, we
conclude that applicant has not established that HEALTH
CARE FINANCIAL SERVICES has acquired distinctiveness in
connection with the identified services in International
Class 35.
C. Whether applicant may disclaim the exclusive right to
use the terms “Health Care” and “Financial Services,”
rather than the entire phrase “Health Care Financial
Services”?

Applicant has disclaimed the exclusive right to use
the terms “Health Care” and “Financial Services,” but
refuses to disclaim the exclusive right to use the entire
term “Health Care Financial Services.”
Serial No. 77737393
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Disclaimers of individual components of complete
descriptive phrases are improper. Unitary terms should be
disclaimed as a composite. For example, when requiring a
disclaimer of terms that form a grammatically or otherwise
unitary expression (e.g., “SHOE FACTORY, INC.”), the
examining attorney must require that they be disclaimed in
their entirety. See, e.g., In re Medical Disposables Co.,
25 USPQ2d 1801 (TTAB 1992) (MEDICAL DISPOSABLES is a
unitary expression that must be disclaimed as a composite);
In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats. 1987)
(denying petitioner’s request to substitute separate
disclaimers of “GLASS” and “TECHNOLOGY” for the disclaimer
of “GLASS TECHNOLOGY” in its registration of GT GLASS
TECHNOLOGY in stylized form, the Commissioner finding
“GLASS TECHNOLOGY” to be a unitary expression and noting,
“Disclaimers of individual components of complete
descriptive phrases are improper”); American Speech-
Language-Hearing Ass’n v. National Hearing Aid Society, 224
USPQ 798, 804 n.3 (TTAB 1984) (“CERTIFIED HEARING AID
AUDIOLOGIST” found to be “a unitary expression that should
be disclaimed in its entirety”); In re Surelock Mfg. Co.,
Inc., 125 USPQ 23, 24 (TTAB 1960) (proposed disclaimer of
“THE” and “RED” and “CUP” held unacceptable to comply with
requirement for disclaimer of “THE RED CUP,” the Board
Serial No. 77737393
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concluding, “A disclaimer of the individual components of
the term ‘THE RED CUP,’ under the circumstances, is
meaningless and improper”). However, separate disclaimers
of adjacent components of a mark may be accepted where they
do not form a grammatically or otherwise unitary
expression, and each component retains its separate
descriptive significance. In re Grass GmbH, 79 USPQ2d 1600
(TTAB 2006) (in the mark SNAP ON 3000 AIRMATIC, the Board
reversed requirement for unitary disclaimer of “SNAP ON
3000,” and accepted separate disclaimers of “SNAP ON” and
“3000”).
Accordingly, our determination in this case depends on
whether the term HEALTH CARE FINANCIAL SERVICES is a
grammatically or otherwise unitary expression. If so, the
requirement for a disclaimer of the entire term is proper.
As indicated above, the term HEALTH CARE FINANCIAL SERVICES
is merely descriptive because the individual terms HEALTH
CARE and FINANCIAL SERVICES retain their descriptive
significance when combined into the composite term.
Furthermore, the term HEALTH CARE FINANCIAL SERVICES is a
grammatically coherent and unitary expression. The term
HEALTH CARE modifies the term FINANCIAL SERVICES thereby
describing the type of financial services. Under these
circumstances, a disclaimer of the components of the
Serial No. 77737393
16
descriptive term would be meaningless and improper. In
this regard, applicant has impliedly conceded that HEALTH
CARE FINANCIAL SERVICES is a unitary term by arguing that
“[i]t has an air of incongruity due to the use of ‘health
care’ as an adjective for ‘financial services.’”10
Decision: With respect to the services in Class 45,
the requirement for a disclaimer of the term HEALTH CARE
FINANCIAL SERVICES is reversed and the refusal to register
the mark HEALTH CARE FINANCIAL SERVICES OF TEAM HEALTH for
failure to establish that the term HEALTH CARE FINANCIAL
SERVICES has acquired distinctiveness is reversed. The
application in Class 45 will be published for opposition in
due course without a disclaimer of the exclusive right to
use the term HEALTH CARE FINANCIAL SERVICES or claim of
acquired distinctiveness for that term.
With respect to the services in Class 35, the refusal
to register the mark HEALTH CARE FINANCIAL SERVICES OF
TEAMHEALTH for failure to establish the term HEALTH CARE
FINANCIAL SERVICES has acquired distinctiveness is affirmed
and the requirement for a disclaimer of the unitary term
HEALTH CARE FINANCIAL SERVICES is affirmed and, therefore,
registration to applicant is refused in Class 35. However,
in the event that applicant submits the required disclaimer

10 Applicant’s Brief, unnumbered page 7.
Serial No. 77737393
17
within thirty days from the mailing date of this decision,
the refusal to register in Class 35 will be set aside and
the application will proceed to publication.11 See
Trademark Rule 2.142(g).

11 A proper disclaimer would read: "No claim is made to the
exclusive right to use Health Care Financial Services apart from
the mark as shown."