Theodore Pincus

Trademark Trial and Appeal Board

Jan 12, 2021

88494286 (T.T.A.B. Jan. 12, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Theodore Pincus, MD
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Serial No. 88494286
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Paul W. Reidl of Law Office of Paul W. Reidl,
for Theodore Pincus, MD.
Beniam Biftu, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Mermelstein, Shaw and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Theodore Pincus, MD (“Applicant”) seeks registration on the Principal Register of
the mark FAST3 (in standard characters) for the following goods (as amended): “a
patient self-report questionnaire used by rheumatologists to assess an individual’s
function, pain, overall health, and for fibromyalgia risk as quantitative scores, as well
as for a standard medical history,” in International Class 16.1

1 Application Serial No. 88494286 was filed on June 28, 2019, pursuant to Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere at least
as early as November 2017 and first use in commerce since at least as early as June 2019.
Serial No. 88494286
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With the Application, Applicant submitted a specimen of use described as a
“questionnaire reflecting use of the mark.”2 The questionnaire submitted as the
specimen is two pages. The top of the first page of the questionnaire appears as
follows (with the questions of the questionnaire following thereafter):

The Trademark Examining Attorney has refused registration of Applicant’s
FAST3 mark under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127,
on the ground that Applicant’s specimen of use fails to show the mark used in
commerce as a trademark in connection with the identified goods in International
Class 16.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed. We reverse the
refusal to register.

2 Application filed on June 28, 2019 at TSDR 2. Page references herein to the Application
record refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. See, e.g., In
re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the
briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE
designation is the docket entry number; and after this designation are the page references, if
applicable.
Serial No. 88494286
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I. Background
Applicant, Dr. Theodore Pincus, is a rheumatologist.3 A rheumatologist is a
medical specialist who treats rheumatic diseases such as fibromyalgia and arthritis.
These diseases affect muscles, joints and bones and can cause considerable pain.4
Applicant has developed a Multidimensional Health Assessment Questionnaire
(“MDHAQ”)5 to quantitatively measure a patient’s subjective expressions of how
these diseases affect them in terms of physical function, pain, and the patient’s global
estimate of the progression or regression of the disease. The rheumatologist provides
Applicant’s questionnaire to the patient during an office visit, it is completed by the
patient, and the rheumatologist then scores the responses based on protocols
developed by Applicant. The quantitative score provides a standard for diagnosis,
prognosis, monitoring and documentation of changes over a period of time for all types
of rheumatic diseases. According to Applicant, the questionnaire is short, easily
scored, and useful to monitor a patient’s status at each visit, saving time and
improving rheumatology care and outcomes.6
Applicant has combined his various treatment questions into the single MDHAQ
questionnaire, which also features other trademarks indicating how the
questionnaire can be used. For example, the questions (or index) comprised by the

3 Pincus Biography, October 18, 2019 Office Action Response at TSDR 37-38.
4 WIKIPEDIA article discussing “rheumatology” and “rheumatologists,” Id. at TSDR 12-17.
5 MDHAQ is a registered mark owned by Applicant (Registration No. 4610219).
6 Pincus, T., “A Multidimensional Health Assessment Questionnaire (MDHAQ) for All
Patients WITH Rheumatic Diseases to Complete at All Visits in Standard Clinical Care,”
65(2) BULL. NYU HOSP. JT. DIS. 150-60 (2007) (Abstract). Id. at 44-46.
Serial No. 88494286
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Routine Assessment of Patient Index Data 3 (or “RAPID3”)7 is for the quantitative
measurement in the documentation and treatment of rheumatoid arthritis.8 The
questions (or index) comprised by the Fibromyalgia Assessment Screening Test 3 (or
“FAST3”) is for the quantitative measurement in the documentation and treatment
of secondary fibromyalgia.9 See also the identification of goods as set out in the subject
Application.
II. The Bases for the Examining Attorney’s Refusal, and Applicant’s
Responses Thereto
The Examining Attorney provides three reasons why Applicant’s specimen does
not show the FAST3 mark in use as a trademark for the identified goods in
International Class 16: (1) the mark neither appears prominently on the goods nor is
physically located in a position that is similar to third-party questionnaires, (2) the
specimen displays multiple marks in the same font, color, and size, and (3) the
applied-for mark, at best, designates the source of a scoring index or software
associated with the questionnaire and not the questionnaire itself.10
As the first reason to reject Applicant’s specimen, the Examining Attorney states
it is not acceptable because consumers are unlikely to perceive an association between

7 RAPID3 is a registered mark owned by Applicant (Registration No. 4625335).
8 Pincus, T., et al., “RAPID3, an Index to Assess and Monitor Patients with Rheumatoid
Arthritis, without formal Joint Counts; Similar Results to DAS28 and CDAI in Clinical Trials
and Clinical Care,” 35(4) RHEUM. DIS. CLIN. NORTH AM.773-8 (2009) (Abstract). Id. at 47-48.
9 Castrejon, I., et al., “(Fibromyalgia Assessment Screening Test): a Composite Index based
on MDHAQ provides clues to the Presence of Secondary Fibromyalgia in Patients with a
Primary Diagnosis of Rheumatoid Arthritis at Higher Levels than Identified in the Medical
Record: a Cross Sectional Study from Routine Care,” 76 ANN. RHEUM. DIS. 385-86 (2017)
(Abstract). Office Action of December 3, 2019 at TSDR 6.
10 Examining Attorney’s Brief, 8 TTABVUE 5-11.
Serial No. 88494286
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the FAST3 mark and Applicant’s goods because the mark is neither prominently
located on the questionnaire nor placed in the position normally found on similar
goods. The so-called “usual manner” in which trademarks are affixed to
questionnaires, says the Examining Attorney, is centered and on the top of the first
page – providing examples of such placement in similar types of medical treatment
questionnaires.11 Yet, the Examining Attorney readily concedes that “there is no
prescribed location on a specimen where the proposed mark must be placed to qualify
as a trademark.”12
Applicant responds that the FAST3 mark appears at the top of the questionnaire,
in bold face type, in a black box, and with a TM superscript. This, says Applicant,
communicates to the rheumatologist that the questionnaire is to be used to diagnose
fibromyalgia, and this is so indicated by the very clear and prominent positioning of
the FAST3 mark.13
Regarding the second reason to reject the specimen, the Examining Attorney
states it not acceptable because consumers are unlikely to perceive an association
between the applied-for mark and the goods because the FAST3 mark is adjacent to
Applicant’s other registered trademarks (MDHAQ and RAPID3) in the same font,
color, and size. Therefore, consumers are less likely to perceive an association

11 See Patient Health Questionnaire (PHQ-9), Columbia-Suicide Severity Rating Scale, Drug
Abuse Screening Test (DAST), Life Events Checklist (LEC), Life Events Checklist (LEC),
provided with Office Action of December 3, 2019 at TSDR 6-11.
12 Examining Attorney’s Brief, 8 TTABVUE 6.
13 Applicant’s Brief, 6 TTABVUE 8.
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between the FAST3 mark and Applicant’s questionnaires.14 In the Examining
Attorney’s view, the plain language of the identification of goods expressly provides
that patients use the questionnaire and thus are the consumers of Applicant’s goods.
At best, says the Examining Attorney, the questionnaire is used by both the patient
and the doctor, i.e., the patient completes the questionnaire and the doctor evaluates
the results.15
Applicant replies that the FAST3 mark is at the top of the page and displayed in
a manner that would make it very clear to the rheumatologist that the questionnaire
could be used for the diagnosis and treatment of fibromyalgia. Rheumatologists,
therefore, would know that Applicant’s FAST3 mark is a designation of the source of
the questionnaire.16 While it is true that patients see the questionnaire when they
complete it, they are not the “consumers” for purposes of trademark analysis. Without
visiting with their rheumatologist, no patient would know of the existence of the
questionnaire, let alone where to download it and then what to do with the results.
Rheumatologists are the relevant consumers who Applicant argues are plainly
sophisticated.17
To have us sustain the third reason for rejecting the specimen, the Examining
Attorney contends it is unlikely a consumer would perceive an association between
the FAST3 mark and Applicant’s self-reporting patient questionnaires as goods. The

14 Examining Attorney’s Brief, 8 TTABVUE 7.
15 Id. at 10.
16 Applicant’s Brief, 6 TTABVUE 10.
17 Id. at 6.
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FAST3 mark, says the Examining Attorney, does not appear to be associated with
questionnaires as goods because an article co-authored by Applicant demonstrates
the mark refers to a scoring index, not a self-reporting questionnaire.18 Thus, a term
that merely identifies a process, method, or system is not registrable as a trademark
because it is only a way of doing something, and does not necessarily identify and
distinguish the source of goods.19
Applicant’s response to this final reason for rejection of the specimen is that the
Examining Attorney is engaging in nothing more than rank speculation, which
cannot be squared with the totality of the evidence of record. In Applicant’s view, the
questionnaire is required to gather the data to be analyzed according to a protocol; it
is not the protocol for analyzing the data. One is meaningless without the other and
a rheumatologist would understand that.20
III. Applicable Law and Analysis
A trademark application based on use, as it is here, must include a specimen
showing the applied-for mark as used in commerce for the goods identified in the
application. Trademark Act Section 1(a), 15 U.S.C. § 1051(a); Trademark Rules
2.34(a)(1)(iv) and 2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv) and 2.56(a). “[A] mark [is] deemed
to be in use in commerce … on goods when … it is placed in any manner on the goods
…. Trademark Act Section 45, 15 U.S.C. § 1127.

18 See Castrejon article cited at Note 7, supra.
19 Examining Attorney’s Brief, 8 TTABVUE 8.
20 Applicant’s Brief, 6 TTABVUE 7.
Serial No. 88494286
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A. Placement of the Mark
Regarding appropriate placement of a trademark on the goods, guidance to
Examining Attorneys by the U.S. Patent and Trademark Office (“USPTO”), in
relevant part, says:
The physical location refers to the actual position of the proposed mark
on a specimen. Although there is no prescribed location on a
specimen where the proposed mark must be placed to qualify as
a trademark, the physical location of matter on a specimen suggests
how the mark would be perceived by consumers and whether such
matter serves as a trademark or is merely a model designation. The
display of a proposed mark in a prominent location on the goods
themselves, or on the packaging or label, is a factor that may
contribute to finding that it serves as a trademark.… (Emphasis
added).
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1202.16(b)(i)(C) (October
2018). Thus, according to the guidance provided by the TMEP, while there is no
prescribed location on a specimen where a mark must be placed to qualify as a
trademark, display of the mark in a prominent location is recommended.
“The central question in determining whether Applicant’s … mark functions as a
[trademark] is the commercial impression it makes on the relevant public ….” In re
Keep a Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (citing In re Aerospace
Optico, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006). In this connection, the relevant
public may be determined by the identification of goods as set forth in the trademark
application in issue. See In re Cox Enters., Inc., 82 USPQ2d 1040, 1042 (TTAB 2007)
(Board looked to the identification of goods for consideration of the relevant
purchasers for the applicant’s publications bearing its mark).
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We find that the appearance of the FAST3 mark at the top right of Applicant’s
questionnaire, in bold face type, in a black box, and with a TM superscript,
communicates to the relevant public – rheumatologists, as defined by Applicant’s
identification of goods – that the questionnaire is to be used to diagnose fibromyalgia.
We further find that the clear and prominent positioning of the mark serves as a
designation of source of the questionnaire to rheumatologists who are sophisticated
purchasers and users of the goods. The fact that the mark appears at the upper right
of the first page of Applicant’s mark, and not at the upper center of the same page
has little or nothing to do with whether FAST3 functions as a trademark. As used on
Applicant’s specimen, we have no doubt that the designation would be perceived as
an indicator of the source of the identified goods.
The Examining Attorney’s reliance on In re Osterberg, 83 USPQ2d 1220 (TTAB
2007) is misplaced. In re Osterberg involved a web page submitted as a specimen of
use for the applicant’s goods, condoms. The applied-for mark, CONDOMTOY
CONDOM, was buried in the text of the web page. The Board stated that the mark
“is not so prominent that consumers will recognize it as a trademark for condoms. In
fact, viewers of the webpage will have to search through the descriptive text even to
find the purported mark.” Id. at 1223. The Board therefore concluded that the term
was not prominently displayed such that it would be perceived as a trademark. Id. at
1224. As shown above by a depiction of the relevant portion of Applicant’s specimen,
the facts here are different than those at issue in In re Osterberg.
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B. That Applicant’s Mark is Adjacent to other Registered Marks on
the Specimen does Not Detract from the Mark Performing as a
Designation of Source
To further support his rejection of Applicant’s specimen because the FAST3 mark
is adjacent to Applicant’s other registered trademarks (MDHAQ and RAPID3), the
Examining Attorney cites to In re Azteca Sys., Inc., 102 USPQ2d 1955 (TTAB 2012),
which we find inapposite. In re Azteca again involved a web page submitted as a
specimen of use for the applicant’s goods, computer software for public works and
utilities management. The Board noted the following reasons for the Examining
Attorney’s rejection of the applicant’s web page specimen:
 The mark was distant from the description of the software, and separated from
the description by more than fifteen lines of text concerning marginally-related
topics.
 There were a number of different logos and word marks on the webpage, which
were not specifically for the applicant’s goods.
 The applicant has included on the left side of the webpage links to articles and
news containing information and concerning matters unrelated to the
applicant's goods, thus distracting the potential purchaser viewing the
webpage from associating the applicant's applied-for mark with its described
goods.

In re Azteca, 102 USPQ2d at 1958. None of these factors is present in the present
appeal. Here, the FAST3 mark is prominently placed directly on the top right of
Applicant’s questionnaire where it readily can be seen. All the marks on the
questionnaire, MDHAQ, RAPID3 and FAST3, pertain directly to this diagnostic tool
– with RAPID3 and FAST3 being subsets of the purpose for which the overall
questionnaire was created. No other extraneous information or matter is presented
on the specimen.
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In the context of how the marks are presented on the questionnaire, we find the
manner in which the FAST3 mark is shown adjacent to the MDHAQ and RAPID3
does not detract from the FAST3 mark performing as a designation of source for
Applicant’s identified goods.
C. That Applicant’s Mark Purportedly Refers to a Scoring Index
does Not Detract from the Mark Performing as a Designation of
Source
Seizing on an article co-written by Applicant referring to FAST3 as a “scoring
index,” the Examining Attorney says that the mark merely identifies a process,
method, or system that is not registrable because it is only a way of doing something,
but does not necessarily identify and distinguish the source of Applicant’s goods (the
questionnaire).21 The Examining Attorney, in this respect, misunderstands the
meaning of “index” in the context of Applicant’s goods.
Two definitions of an “index” (as a noun) are “a number (such as a ratio) derived
from a series of observations and used as an indicator or measure” and “something
(such as a physical feature or a mode of expression) that leads one to a particular
fact or conclusion.”22 In the context of Applicant’s goods (the questionnaire), we find
“index” means a series of questions designed to obtain quantitative measurements in
the documentation and treatment of a patient’s secondary fibromyalgia – thus

21 Examining Attorney’s Brief, 8 TTABVUE 8.
22 Definition of “index” from MERRIAM-WEBSTER online dictionary (https://www.merriam-
webster.com/dictionary/index, last visited January 11, 2021). The Board may take judicial
notice of dictionary definitions, including online dictionaries that exist in printed format or
have regular fixed editions. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Serial No. 88494286
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referring to the questionnaire itself and not some theoretical process, method, or
system.
Moreover, the Examining Attorney’s reference to TMEP § 1301.02(e) to support
his position does not apply. That Section of the TMEP says that “[a] term that only
identifies a process, style, method, system, or the like is not registrable as a service
mark.” The discussion in Section 1301.02(e) has no applicability to trademarks for
goods.
IV. Conclusion
None of the reasons put forward by the Examining Attorney justifies rejection of
Applicant’s questionnaire submitted as a specimen of use. We find that the FAST3
mark appears prominently on the goods and is physically located in a position so as
to serve as a designation of source. That the specimen displays the FAST3 mark
adjacent to other marks, or that the mark is referred to as a “scoring index” in an
article co-published by Applicant, does not detract from the mark performing as a
designation of the source of the questionnaire.
Decision
The refusal to register Applicant’s FAST3 mark is reversed.