Applicant got off on the wrong foot when it attempted to submit into evidence, via its brief, certain Google brand search results. Not only was the submission untimely, but applicant did not submit the actual web pages, only summaries.
Also in its brief applicant asked that, in the event that the Section 2(e)(1) refusal was upheld, the subject mark be registered on the Supplemental Register. However, the Examining Attorney correctly pointed out that the application was filed under the intent-to-use provision of Section 1(b), and no amendment to allege use was file. Therefore the mark is ineligible for registration on the Supplemental Register, and the Board gave applicant’s request no consideration.
As to the merits, the Examining Attorney argued that the proposed mark merely describes a function or purpose of the goods, namely, that they monitor or sense the existence of a fetal human being (i.e, “life”). The Examining Attorney relied on four websites from medical and medical technical trade journals wherein the term “fetal life” is used in the context of various aspects of prenatal health.
This evidence shows use of the term “fetal life” in connection with the challenges of detecting, monitoring and assessing health signals from fetuses. Further, we agree with the Examining Attorney that Applicant’s goods may be used, inter alia, to detect and monitor various fetal health signals.
However, the Board agreed with Applicant that the Examining Attorney’s evidence was insufficient to show that FETAL LIFE merely describes a particular function or feature of Applicant’s goods. As to the four journal articles, they are technical in nature and there was no evidence regarding their readership of circulation.
“Fetal life” is a nebulous term in these four articles. It is impossible to determine whether its use in them simply represents use of the term in context, or indicates use of the term to describe some particular aspect of neonatal health. As a result, the Examining Attorney’s slim record evidence fails to demonstrate that “fetal life” describes a significant feature, aspect or characteristic of the recited goods or their purpose such that the mark FETAL LIFE as a whole may be merely descriptive of thereof. To the extent that Applicant’s goods may be used, inter alia, to detect or monitor “fetal life,” imagination or additional thought is required to reach that conclusion.
Noting that doubts as to mere descriptiveness are to be resolved in an applicant’s favor, the Board reversed the refusal.
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TTABlog comment: Seems descriptive to me. A proposed mark can be merely descriptive even if no one else uses it, and the Examining Attorney is not required to show that the phrase is already in use. Looking at the mark in the context of the goods, I think it conveys immediate information that the purpose of the goods is to check on the life of the fetus.
Text Copyright John L. Welch 2020.