The Generic Roadblock.

Originally published in Trademark World, March 2007

Credentialing and accreditation organisations have for many decades certified professional personnel in numerous fields based on education, training, professional experience and/or testing. Persons satisfying these requirements are authorised to use certification marks issued by the organisations. The establishment of certification programs and the use of certification marks by certified professionals serve many important functions. Broadly speaking, personnel certification validates public confidence in the services on which our lives and economies depend. In particular, certification marks create and maintain recognised and respected national standards of the highest competence and professionalism; identify to the public, prospective employers, and professional peers persons who meet these recognised standards; and encourage continued professional growth and development through continuing education and re-certification.

Many professional-service certification marks combine descriptive terms like "certified," "registered," or "professional" with the name of an occupation or professional position, without additional distinctive wording, to form a descriptive mark. Under U.S. trademark law, descriptive marks immediately describe some feature, function, intended result, or other characteristic of the products or services they identify. Descriptive marks are not immediately protectable as trademarks or registrable on the Principal Register of the United States Patent and Trademark Office ("PTO") until the trademark owner can show it has acquired distinctiveness in the mark. This acquired distinctiveness, also called "secondary meaning," occurs when a descriptive term takes on a second meaning, i.e., a trademark meaning in which the descriptive term identifies a single source of a product or service. The PTO has the discretion to accept five years of substantially exclusive and continuous use of a mark as evidence of secondary meaning. In some cases, trademark owners must submit additional evidence such as sales figures, advertising expenditures and reach and/or consumer perception of the mark. Descriptive marks can be registered on the PTO's Supplemental Register, but such registrations do not receive the many substantive benefits and presumptions of Principal Register registrations. Generic terms are not protectable or registrable under any circumstances.

Refusals on Grounds of 'Genericness'

Historically, the PTO has registered these types of professional-services certification marks on the Supplemental Register or on the Principal Register under a claim of acquired distinctiveness. Examples include:

REGISTERED VASCULAR TECHNOLOGIST (Reg. No. 2,575,200),

CERTIFIED SURGICAL TECHNOLOGIST (Reg. No 2,293,913) and

CERTIFIED CHIROPRACTIC SPORTS PHYSICIAN (Reg. No.2,524,242).

In other words, the PTO did not deem these certification marks to be generic.

Starting in the late 1990s, however, the PTO increasingly issued 'genericness' refusals against professional-services certification marks they long considered only descriptive. To make matters worse, in 2002 the Trademark Trial and Appeal Board ("TTAB"), the administrative judicial tribunal of the PTO, held that the wording REGISTERED KINESIOTHERAPIST in the certification mark REGISTERED KINESIOTHERAPIST R.K.T. was generic.1 Although that decision was unpublished, Examining Attorneys at the PTO nonetheless relied on it as a basis to support and validate their 'genericness' refusals of professional-services certification marks. This recent trend is troublesome because it could render such marks, whether registered or not, arguably un-protectable and free for all to use. If this trend becomes the prevailing view, it could destroy or significantly harm many certification programs based on descriptive certification marks. It could destroy the incentive to create new certification programs, and impair the ability of consumers and employers to identify qualified professionals, all to the detriment of the public health, safety and welfare.

However, on 15 September 2006, the TTAB issued a decision that hopefully will help reverse this trend and enable credentialing and accreditation organisations to register descriptive professional-services certification marks.

The NCTRC Case

The National Council for Therapeutic Recreation Certification ("NCTRC") is the nationally recognised organisation that certifies therapeutic recreation personnel. Recreational therapists provide treatment services and recreation activities as a means to psychological and physical health, recovery, and well being. Since 1982, NCTRC has certified recreational therapists under the certification marks CERTIFIED THERAPEUTIC RECREATION SPECIALIST and CTRS.

In 1999, NCTRC filed an application to register the certification mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST. The PTO initially refused registration on the ground that the mark was merely descriptive. NCTRC responded by amending its application to claim acquired distinctiveness based on use of the mark for 18-plus years, but the PTO found this lengthy use insufficient to establish acquired distinctiveness. The PTO also suggested that the mark was generic, but did not formally refuse registration on that basis. The NCTRC submitted additional evidence of acquired distinctiveness over its then 20-plus years of use including:

certification of 15,000 persons under the mark certification revenues of approximately $3.5 million over three years enforcement against unauthorised uses of the mark; and express recognition of the mark by a number of states and publications. The PTO again maintained its refusal and this time suspended NCTRC's application pending the TTAB's decision in the then-pending REGISTERED KINESIOTHERAPIST case. In September 2002, the TTAB affirmed the PTO's finding that the wording REGISTERED KINESIOTHERAPIST was generic, finding that::

REGISTERED KINESIOTHERAPIST was the apt phrase for such services stating: "Simply put, there is no better way than 'REGISTERED KINESIOTHERAPIST' to name applicant's services."

"The combination of the generic terms 'registered' and 'kinesiotherapist' does not mean something distinct from the combined meanings of the individual terms"; and

News articles using "registered kinesiotherapist" in lower-case letters showed evidence of the public's perception of the wording as generic.

Following the TTAB's decision in the REGISTERED KINESIOTHERAPIST case, the PTO issued a final refusal against NCTRC's mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST on the ground it was generic or, in the alternative, lacked sufficient evidence of acquired distinctiveness assuming the mark was only descriptive. In addition to the REGISTERED KINESIOTHERAPIST decision, the PTO based its genericness refusal primarily on the dictionary definitions of the individual words making up the mark and on news articles and Internet excerpts showing use of NCTRC's mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST in all lower-case letters. The PTO relied heavily on these uses of NCTRC's mark in all lower-case letters, claiming that they demonstrated that the relevant public understood NCTRC's mark to be generic.

NCTRC appealed the refusals based on genericness and lack of acquired distinctiveness to the TTAB and submitted additional evidence on both issues, including:

Testimony that the vast majority of the PTO's news articles and Internet excerpts named individuals actually certified by NCTRC declarations of employers, practitioners,

Certificants, and patients all attesting that CERTIFIED THERAPEUTIC RECREATION SPECIALIST functioned as a certification mark; and

Extensive Internet evidence displaying NCTRC's mark in all caps or initial caps.

On 15 September 2006, the TTAB reversed the PTO's genericness refusal and granted registration based on evidence of acquired distinctiveness. Although not published, the TTAB's decision should prove useful to certification mark owners both in terms of the end result and several key rulings discussed below.2

Determining Whether a Certification Mark is Generic

The TTAB applied the two-step legal test for genericness established by the Court of Appeals for the Federal Circuit, the primary reviewing court for the TTAB, to determine whether NCTRC's certification mark was generic: First, what it is the genus (i.e., category or class) of services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus (category or class) of services.3

Regarding the proper genus or category or class of services, the Federal Circuit has made clear that defining the genus too narrowly is improper. In this case, the PTO argued that the genus of services should be narrowly defined as "therapeutic recreation specialists who have been certified." The TTAB, however, rejected this argument and, significantly for certification mark owners, held that the description of services in the certification mark application is controlling if it is sufficiently definite. Here, the TTAB found that NCTRC's description of "recreational therapy and recreational therapy counselling" was deemed sufficiently definite to serve as the genus of services.

The TTAB then considered whether the mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST was a phrase or a compound word for purposes of analysing the second part of the genericness test, whether the relevant public primarily understood the mark to refer to the genus of services at issue. As in the REGISTERED KINESIOTHERAPIST case, the PTO argued that NCTRC's mark was simply a large compound term comprised of the generic word CERTIFIED and the job title THERAPEUTIC RECREATION SPECIALIST so that the whole mark was generic under In re Gould Paper Corp.4. In Gould, the Federal Circuit held that evidence of the generic meaning of the separate terms SCREEN and WIPE was sufficient to prove that the compound word SCREENWIPE was generic for cleaning wipes for television and computer screens.

In response, NCTRC argued that the TTAB should instead follow in In re American Fertility Society, in which the Federal Circuit distinguished between "phrases consisting of multiple terms, which are not 'joined' in any sense other than appearing as a phrase," and compound terms "formed by the union of words."5 In that case, the Federal Circuit limited its decision in Gould to its facts, and held that evidence that the separate terms SOCIETY and REPRODUCTIVE MEDICINE were each generic was insufficient to prove that the overall phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic for association services promoting the interests of the reproductive medicine industry.

In another important ruling for certification mark owners, the TTAB agreed with NCTRC and held that the mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST was more like a phrase under American Fertility, and not a compound mark under Gould. Thus, evidence that the separate words "certified" and "therapeutic recreation specialist" in NCTRC's mark were generic was insufficient to prove that the complete phrase CERTIFIED THERAPEUTIC RECREATION SPECIALIST was generic.

Turning to the second part of the genericness test, the TTAB found that the PTO failed to show by clear evidence that the phrase CERTIFIED THERAPEUTIC RECREATION SPECIALIST was understood by the relevant public to refer to "recreational therapy and recreational therapy counselling." In other words, the PTO did not "demonstrate that the term designates, and is understood by those in the field of recreational therapy and persons who receive such services, as signifying a class or category of such therapy or therapy counselling."

Although the PTO submitted significant evidence of newspaper and magazine articles showing uses of "certified therapeutic recreation specialist" in lower-case letters in the manner of a generic term, NCTRC demonstrated that the vast majority of the persons named in those articles were in fact authorised by NCTRC to use the certification mark. The TTAB also noted that the PTO's searches for articles were designed to return only uses of the mark in all lower-case letters. Further, the TTAB found persuasive NCTRC's Internet evidence of more than 600 uses of "Certified Therapeutic Recreation Specialist" in all upper-case letters or initial caps, including uses by national associations, local municipalities, hospitals, rehabilitation centres, and universities that specifically referenced NCTRC's certification program. And NCTRC submitted excerpts from several state codes and regulations that recognised CERTIFIED THERAPEUTIC RECREATION SPECIALIST as NCTRC's certification mark.

Although the TTAB acknowledged that the PTO submitted significant evidence to support the refusal of registration, the TTAB held that the evidence was offset by NCTRC's evidence that showed not only a substantial amount of proper certification mark use but also recognition of the certification mark by persons in the recreational therapy field and persons receiving recreational therapy services. Further, the TTAB found the "mixed record" of evidence of proper and improper use of the certification mark (i.e., in upper-case versus lower-case letters) was insufficient to show, by clear evidence, that the relevant public understood and used the phrase CERTIFIED THERAPEUTIC RECREATION SPECIALIST as a generic, common descriptive term for recreational therapy and recreational therapy counseling services. Accordingly, the TTAB held that the mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST was not generic.

Evidence of Acquired Distinctiveness for Certification Marks

In support of its claim of acquired distinctiveness, NCTRC submitted 28 declarations from employers, consumers, and certificants who stated that they recognised the phrase CERTIFIED THERAPEUTIC RECREATION SPECIALIST as a certification mark. NCTRC also submitted multiple declarations from its officers attesting to, among other things:

its non-profit status

more than 15,000 certificants

20-plus years of use of the mark

more than $7 million in revenues over a five-year period

active promotion of its certification program under the mark

monitoring and policing of proper use of the certification mark; and

recognition of the certification mark by several states and a number of publications.

NCTRC argued that this evidence, taken as a whole, was more than enough to establish acquired distinctiveness, especially for a non-profit organisation operating in a specialised field.

The PTO, however, had rejected this evidence as insufficient because the mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST was allegedly "so highly descriptive." In particular, the PTO maintained that the evidence demonstrated only the "commercial success" of the certification program, and not that the relevant public had come to view the phrase CERTIFIED THERAPEUTIC RECREATION SPECIALIST as NCTRC's certification mark. The PTO also rejected the 28 declarations submitted by NCTRC as merely pre-typed forms signed by health-care providers "affiliated" with NCTRC.

The TTAB once again overruled the PTO's position, and held that NCTRC's evidence collectively was sufficient to prove acquired distinctiveness. Specifically, the TTAB found that NCTRC had engaged in significant marketing activities and earned "impressive" revenues for a certifying organisation in a specialised health-care field. Significantly for owners of professional-services certification marks, most of which are specialised non-profits like NCTRC, the TTAB stated: "We are mindful that this is not a case involving consumer goods or services where we would expect to see very large sums of sales and advertising figures in order to find that a term has become distinctive of a single source." Moreover, the TTAB also found the 28 declarations from employers, consumers, and certificants probative of acquired distinctiveness. Although these declarations were similar in content, and some declarants were certified by NCTRC, the TTAB nonetheless found them probative to show that persons with many years of experience in the recreational therapy field and persons who have received recreational therapy recognised that CERTIFIED THERAPEUTIC RECREATION SPECIALIST acted as a source indicator of NCTRC's certification program.

Conclusion

The proper use and protection of certification marks used by certified professionals in rendering services is important not only to credentialing and accreditation organisations, but also to the health, safety, and welfare of the public. To enhance protection of their certification marks, organisations should consider seeking federal registration of their marks. The TTAB's recent decision in the NCTRC case will hopefully make this task easier for owners of descriptive professional-services certification marks. But protecting certification marks does not end with registration. Organisations should also take affirmative steps to monitor and police improper uses of certification marks by certificants, employers, the public, and the media. Monitoring should also include use of the mark in lower-case letters, use of the certification mark by non-certified persons, and use of the certification mark as a "generic" job title without proper attribution to the mark owner. In addition, organisations should promote the recognition of their certification marks by key third parties, such as universities, colleges, hospitals, and local, state, and federal government agencies in printed materials, curricula, laws, and/or regulations. As shown by the NCTRC case, these actions should improve the prospects for federal registration of their certification marks and put credentialing and accreditation organisations in a stronger position to enforce their marks if the need arises.Footnotes

1 In re Council on Professional Standards for Kinesiotherapy, 2002 TTAB LEXIS 621 (TTAB Sept. 25, 2002).

2 In re National Council for Therapeutic Recreation Certification, 2006 TTAB LEXUS 411 (TTAB Sept. 15, 2006)

3 H. Marvin Ginn Corp. v. Int'l Assoc. of Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986).

4 In re Gould Paper Corp., 834 F.2d 1017 (Fed Cir. 1987).

5 In re American Fertility Society, 188 F.3d 1341 (Fed. Cir. 1999). The authors' law firm also handled the American Fertility

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