Medical Telepresence, P.A.

This Opinion Is Not a
Precedent of the TTAB

Hearing: July 2, 2019 Mailed: July 5, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Medical Telepresence, P.A.
_____

Application Serial No. 87819361
_____

Michael Spradley of Spradley PLLC for Medical Telepresence, P.A.

Howard B. Levine, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Bergsman, Greenbaum and Lynch, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Medical Telepresence, P.A. (Applicant) filed an application on the Principal

Register that included a claim of acquired distinctiveness under Section 2(f) of the

Trademark Act, 15 U.S.C. § 1052(f), for the mark VIRTUAL ERS (in standard

characters) for “medical consultations provided via phone, online chat or

videoconferencing; telemedicine services,” in Class 44.1 Applicant claimed that

VIRTUAL ERS “has become distinctive of the goods/services through applicant’s

1Serial No. 87819361 filed March 4, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), based on Applicant’s claim of first use anywhere as of May 16, 2012 and first use
in commerce as of June 1, 2012.
Serial No. 87819361

substantially exclusive and continuous use in commerce that the U.S. Congress may

lawfully regulate for at least the five years immediately before the date of this

statement.” In its August 30, 2018 Response to an Office Action, Applicant claimed

ownership of Registration No. 4279657 for the mark VIRTUAL ERS and design,

shown below, for “online medical services,” in Class 44.

In the registration, Applicant disclaimed the exclusive right to use the term “Virtual

ERs.”

The Examining Attorney refused to register Applicant’s mark under Sections 1, 2,

3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053 and 1127, on the grounds that

Applicant’s mark for the identified services is generic and, in the alternative, that it

is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

§ 1052(e)(1), and has not acquired distinctiveness under Section 2(f).

After the Examining Attorney made the refusals final, Applicant appealed to this

Board. The case is fully briefed, and an oral hearing was held on July 2, 2019. We

affirm the refusals to register.

I. Evidentiary Issue.

Applicant, in its brief, cited a link to the New York-Presbyterian health system

website to rebut a news article reporting that New York-Presbyterian is rendering a

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Serial No. 87819361

virtual emergency room service.2 The Examining Attorney objects to the link to the

New York-Presbyterian website on the ground that the evidence is untimely.3

Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that the record in an

application should be complete prior to the filing of an appeal. Applicant should have

filed a request for reconsideration prior to or with its Notice of Appeal. Applicant’s

objection is sustained and we will not consider the link to the New York-Presbyterian

website.4

More to the point, however, is that providing only a website address or hyperlink

to Internet materials is insufficient to make such materials of record. In re Olin Corp.,

124 USPQ2d 1327, 1332 n.15 (TTAB 2017); In re Powermat Inc., 105 USPQ2d 1789,

1791 (TTAB 2013); In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB

2012). Because of the transitory nature of Internet postings, websites referenced only

by address or hyperlinks may be modified or deleted at a later date without

notification. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).

2 Applicant’s Brief, p. 8 (4 TTABVUE 12).
3 Examining Attorney’s Brief (6 TTABVUE 3).
4 For the same reason, the list of third-party registrations consisting, in part, of the word
“Virtual” Applicant included in its Reply Brief is not timely and will not be considered.
Applicant’s Reply Brief, pp. 3-5 (7 TTABVUE 4-6). Moreover, the submission of a list of
registrations does not make these registrations part of the record. See In re Compania de
Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third-
party registrations in brief insufficient to make them of record); In re 1st USA Realty Prof’ls,
Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974). To make registrations of record, copies of the registrations or the complete electronic
equivalent (i.e., complete printouts taken from the USPTO’s Trademark database) must be
submitted. See In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re
Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531,
1532 n.3 (TTAB 1994).

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Serial No. 87819361

Thus, information identified only by website address or hyperlink would not be

subject to verification by the applicant or the Examining Attorney to corroborate or

refute, or by the Board or a reviewing court considering the record. See In re HSB

Solomon Assocs. LLC, 102 USPQ2d at 1274.

II. Whether VIRTUAL ERS is generic?

A generic term “is the common descriptive name of a class of goods or services.”

Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir.

2018) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987,

228 USPQ 528, 530 (Fed. Cir. 1986)). The Examining Attorney has the burden of

proving that a term is generic by clear evidence. In re Nordic Naturals, Inc., 755 F.3d

1340, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); In re Merrill Lynch, Pierce, Fenner &

Smith Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). “The critical

issue in genericness cases is whether members of the relevant public primarily use

or understand the term … to refer to the genus of goods or services in question.” Royal

Crown, 127 USPQ2d at 1046 (quoting Marvin Ginn, 228 USPQ at 530); Princeton

Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed.

Cir. 2015).

The Federal Circuit has set forth a two-step inquiry to determine whether a mark

is generic: First, what is the genus (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 of services? Marvin Ginn, 228 USPQ at 530. The perception of the

relevant public is the chief consideration in determining whether a term is generic.

See Princeton Vanguard, LLC, 114 USPQ2d at 1833. Evidence of the public’s
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Serial No. 87819361

understanding of a term may be obtained from “any competent source, such as

consumer surveys, dictionaries, newspapers and other publications.” Id. at 1830

(quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963

(Fed. Cir. 1985)). “[A] term can be generic for a genus of … services if the relevant

public … understands the term to refer to a key aspect of that genus.” Royal Crown,

127 USPQ2d at 1046 (quoting In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d

1632, 1637 (Fed. Cir. 2016)).

With respect to the first part of the Marvin Ginn inquiry, the genus may be defined

by the services identified in the application. See In re Reed Elsevier Props. Inc.,

482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); Magic Wand Inc. v. RDB Inc.,

940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (a proper genericness inquiry

focuses on the identification set forth in the application or certificate of registration).

Applicant’s description of services, “medical consultations provided via phone, online

chat or videoconferencing; telemedicine services,” accurately defines the genus of the

services. While Applicant does not expressly address the genus, it contends that “[t]he

generic term for such services is ‘online medical services’ or more commonly

‘telemedicine.’”5

Telemedicine is the use of telecommunications for
healthcare. Today telemedicine technology allows for the
provision of medical services to sites that are physically
separated from the provider. Telemedicine is used to
provide decision making aids, remote sensing, and

5 Applicant’s Brief, p. 7 (4 TTABVUE 11).

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Serial No. 87819361

collaborative real-time management of patients at a
distance.6

The second part of the Marvin Ginn inquiry requires us to consider whether the

term sought to be registered is understood by the relevant public primarily to refer

to that genus of services. The relevant public encompasses “actual [and] potential

purchasers of . . . goods or services” identified in the application or registration.

Loglan Inst. Inc. v. Logical Language Grp. Inc., 962 F.2d 1038, 22 USPQ2d 1531,

1533 (Fed. Cir. 1992) (citation omitted); Sheetz of Del., Inc. v. Doctor’s Assocs. Inc.,

108 USPQ2d 1341, 1351 (TTAB 2013). The relevant public includes ordinary

consumers who would avail themselves of telemedicine, as well as healthcare

providers who render telemedicine services and healthcare insurance providers.

We now turn to the manner in which the relevant consumers perceive the term

VIRTUAL ERS when it is used in connection with the identified services.

The terms comprising the designation VIRTUAL ERS have the following

definitions:

“Virtual” is defined, inter alia, as

3. Computers

a. Existing as or by means of digital media; a virtual
classroom.

6 “Virtual Online Doctor – Telemedicine,” Bellaire ER (bellaireer.com) attached to the June
18, 2018 Office Action (TSDR 66); see also “What is Telemedicine?” Chiron Health
(chironhealth.com) (“Telemedicine allows health care professionals to evaluate, diagnose and
treat patients at a distance using telecommunications technology.”). Id. at TSDR 94.
All citations to documents contained in the Trademark Status & Document Retrieval (TSDR)
database are to the downloadable .pdf versions of the documents.

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Serial No. 87819361

b. Relating to or existing in virtual reality; a virtual
encounter in a chatroom.

c. Emulating the function of another device.7

“ER” is defined, inter alia, as an abbreviation for “emergency room.”8 “Emergency

room” is defined as “[t]he section of a health care facility for providing rapid treatment

to victims of sudden illness or trauma.”9

The Examining Attorney submitted the evidence listed below showing third- party

use of VIRTUAL ER.10

1. Modern Healthcare (modernhealthcare.com)

New York-Presbyterian starts offering virtual ER visits
(July 27, 2016)

The New York-Presbyterian health system has created a
platform to provide a variety of telehealth services to
patients across its network and across the country.

New York-Presbyterian says its new NYP On Demand
platform provides virtual emergency and will begin
offering virtual urgent-care visits by the end of the
summer. It anticipates the program will reduce wait times

7AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (ahdictionary.com) (5th ed.
2018) attached to the June 18, 2018 Office Action (TSDR 62); see also MERRIAM-WEBSTER
(merriam-webster.com) attached to the June 18, 2018 Office Action (TSDR 99) (“occurring or
existing primarily online – virtual shopping).
8 AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (ahdictionary.com) (5th ed.
2018) attached to the June 18, 2018 Office Action (TSDR 60); see also “Why your next ER
visit may be virtual,” Cardinal Health (cardinalhealth.com) (“Emergency departments – or
what’s commonly referred to as Emergency Rooms (ERs) – in the United States see a lot of
traffic.”).
9 Id. at TSDR 64.
10While each trademark must always be evaluated individually, pluralization commonly does
not alter the meaning of a mark. See In re Cordua Rests., Inc., 118 USPQ2d at 1637 (citing
In re Belgrade Shoe, Co., 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969); Wilson v.
Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957)). There is nothing in the record to
indicate that the addition of the letter “S” to “ER” alters its meaning other than making it
plural.
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Serial No. 87819361

in their emergency department and provide patients with
more convenient care options. The system says it’s the first
health system in New York to provide virtual ER services.11

2. FierceHealthcare (fiercehealthcare.com)

Texas Heath Aetna launches virtual ER care app
(September 8, 2017)

Texas Health Aetna, a joint venture between Texas Health
Resources and Aetna, has launched a new app aimed at
providing patients with more immediate, virtual
emergency care.

* * *

Patients with the app can text, send photos or video chat
with an emergency doctor and are guaranteed a response
within three minutes, she said. Most (90%) of patents’
needs can be resolved in these conversations.12

3. NBC4 (nbcwashington.com)

Virtual ER Cuts Down on Wait Times at MedStar (August
2, 2017)

A Washington, D.C., hospital is using technology to cut
down on emergency room waiting time.

Dr. Ethan Booker helped develop Tele-triage at MedStar
Washington Hospital Center. From a command center in
another part of the hospital, Booker can virtually visit
patients who show up at the ER.

* * *

11 June 18, 2018 Office Action (TSDR 7). As noted above, Applicant attempted to introduce a
link to the New York-Presbyterian health system website to rebut that New-York
Presbyterian renders emergency room services. Even if New York-Presbyterian did not
render emergency room services, the article is probative for what it shows on its face (i.e., the
author believes and wrote that New York Presbyterian health system renders emergency
room services and the readers read that it did).
12Id. at TSDR 11-12; see also Becker’s Hospital Review (beckershospitalreview.com) attached
to the October 10, 2018 Office Action (TSDR 14) reporting on the Texas Health Aetna joint
venture.

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Serial No. 87819361

In the spring Maryland Physicians Care rolled out an app
with the capability to let patients text and video chat with
ER doctors. The app allows members to ask the doctors
questions and determine whether a trip to an emergency
room is necessary.13

4. Big Think (bigthink.com)

The Virtual ER Is Here Today, Saving Time and Money
(August 14, 2013)

Twenty years ago, I predicted that … we’d start seeing
virtual hospitals, which would lower costs, improve
efficiency, and ultimately change healthcare. … I wrote
that the digital accelerators are now here, and so is the
virtual ER.

Of course, a virtual ER can’t treat broken legs or
emergencies that need hands-on medical procedures. But
every day there are a large number of people in U.S.
hospital ER waiting rooms who don’t need that sort of high-
level medical attention.

* * *

Stat Doctors is a virtual ER offering anytime, anywhere
care that can treat conditions such as allergies, arthritic
pain, asthma, bronchitis, cold and flu, ear infections, insect
bites, pink eye, rashes, respiratory infection, sinusitis, sore
throat, sprains and strains, sport injuries, skin
inflammation or cellulitis, and may more. All of these
conditions and more can be treated using the virtual ER.

Stat Doctors is a web-based virtual ER. … Stat Doctors has
a national network comprised solely of board certified
emergency room doctors and many now practice
telemedicine full time.14

13 June 18, 2018 Office Action (TSDR 15-17).
14October 10, 2018 Office Action (TSDR 22-24). The article was reposted at BigThink.com
attached to the June 18, 2018 Office Action (TSDR 25-28); see also “Could Virtual Care Heal
The Health Care System?” Wired.com by the same author referring to “virtual ER” as well
as “virtual house calls.” Id. at TSDR 38.

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Serial No. 87819361

5. Globecomm Press Release (globecomm.com)

Globecomm and Future Care create ‘virtual ER’ to deliver
emergency medical response to seafarers (March 8, 2014)

Globecomm Maritime, a leading provider of maritime
communications solutions, has formed a strategic
relationship with Future Care, Inc. to create Future Care
Live, a video-enabled telemedicine solution integrated into
Globecomm’s popular Access Chat service.

Future Care Live combines Future Care’s Caring for the
Crew® program with Globecomm’s Access Chat Plus live
video streaming software to provide a revolutionary level
of medical care to commercial shipping and maritime
personnel during emergency illness or injury at sea, as well
as to respond to routine healthcare needs.

Using the video streaming properties of Access Chat Plus,
Future Care live creates a ‘virtual ER’ which allows for the
simultaneous remote participation of general and
specialist physicians, hospital treatment staff, Future Care
case manager, shipowner [sic] representatives and family
members while the patient is onboard ship.15

6. CBS Philly (Philadelphia.cbslocal.com)

Health: Jefferson Hospital App For Virtual ER Visit
(September 21, 2015)

Jefferson Hospital has unveiled a new app that connects
you with an emergency physician in minutes for a virtual
ER visit.16

15June 18, 2018 Office Action (TSDR 34); see also Cision PR Newswire (prnewswire.com)
which reposted the Globecomm press release. Id. at TSDR 73.
16 Id. at TSDR 69.

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Serial No. 87819361

7. United Concierge Medicine – Virtual ER (linkedin.com)

United Concierge Medicine provides emergency medicine
expertise with a personal touch. By combining world-class
technology and innovations with compassionate, expert
virtual acute medical care, it is our mission to drive the
highest quality acute healthcare and cost savings for our
patients and partners.17

8. Ancor (ancor.com)

Virtual ER Services (August 8, 2018)

… That’s why the advent of the virtual ER has become such
a positive disruptor in the care model for people with
intellectual or developmental disabilities. Through modern
technology, many providers are now at the fingertips of
staff and patients, ensuring fast and customized care at a
faction of the cost of traditional brick and mortar
engagement.

* * *

By offering access to virtual ER care, UCM is able to meet
the medical needs of people supported by service providers
remotely, eliminating the need for a disruptive trip to the
ER in most cases. This means faster medical assessment
and treatment, fewer staffing challenges and disruptions,
and cost savings for the patient and service provider.18

17 October 10, 2018 Office Action (TSDR 9). We disagree with Applicant’s assertion that
United Concierge Medicine is using Virtual ER as a mark. Applicant’s Brief, p. 6
(4 TTABVUE 10). As the text on the LinkedIn page shows, United Concierge is using Virtual
ER to identify its services (i.e., emergency medicine).
18 October 10, 2018 Office Action (TSDR 18-19).

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Serial No. 87819361

9. CBS New York (YouTube.com)

Virtual ER Doctors Make Emergency Visits Faster & Less
Stressful (August 15, 2017)19

Finally, Applicant’s website uses the term VIRTUAL ERS in a manner that

consumers will be sure to perceive that term as generic because Applicant is

advertising that Virtual ERs provides telemedicine services (i.e., virtual emergency

room services). An excerpt from Applicant’s website is reproduced below:20

Virtual Emergency Room

Virtual ERs provides high quality emergency room level
telemedicine consultation and treatment plans that may
include a prescription. With Virtual ERs the Emergency
Room calls you. Connect directly with highly trained
Emergency Room staff when it is convenient, all from the
comfort of home, office or even your favorite vacationing
spot.

On another webpage, Applicant explains that it provides a “Virtual ER.”21 Finally,

Applicant advertises that patients should choose VIRTUAL ERs because

With Virtual ERs you call directly into an emergency room,
you connect directly with highly trained Emergency Room
staff when it is convenient for you, all from the comfort of
your home or office.22

19 Id. at TSDR 25.
20 Id. at TSDR 59.
21 Id. at TSDR 62.
22 Id. at TSDR 65.

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Serial No. 87819361

As noted above, VIRTUAL ERS is generic if the consumers who use telemedicine

services primarily use or understand the term VIRTUAL ERS to refer to a genus,

category, or class of services when it is used in connection with “medical consultations

provided via phone, online chat or videoconferencing; telemedicine services.” In

making this determination, we assess the term as a whole, taking into account the

meaning of the terms that comprise it:

“An inquiry into the public’s understanding of a mark
requires consideration of the mark as a whole. Even if each
of the constituent words in a combination mark is generic,
the combination is not generic unless the entire
formulation does not add any meaning to the otherwise
generic mark.” In re Steelbuilding.com, 415 F.3d 1293,
1297 [75 USPQ2d 1420, 1421] (Fed. Cir. 2005); see In re
Am. Fertility Soc’y, 188 F.3d 1341, 1347 [51 USPQ2d 1832,
1837] (Fed. Cir. 1999) (“[I]f the compound word would
plainly have no different meaning from its constituent
words, and dictionaries, or other evidentiary sources,
establish the meaning of those words to be generic, then
the compound word too has been proved generic. No
additional proof of the genericness of the compound word
is required.”).

In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir.

2009).

The term VIRTUAL ERS identifies a class of telemedicine services, namely, the

subclass of emergency medical services rendered using telecommunication

technology. The record shows that the components of the term VIRTUAL ERS retain

their original, separate meanings when used together. The combination of the term

“Virtual” with “ERS” does not create a new meaning or engender a different

commercial impression. See Princeton Vanguard, 114 USPQ2d at 1832 (a proposed

mark is generic if “it can be shown that the ‘public understands the individual terms
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Serial No. 87819361

to be generic,’ and the joining of those terms into one compound word provides no

additional meaning.”); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112

(Fed. Cir. 1987) (the words “screen” and “wipe” are “as generic in the compound as

individually, and the compound thus created is itself generic.”); In re Mecca Grade

Growers, LLC, 125 SUPQ2d 1950, 1959 (TTAB 2018). The record includes many

third-party uses of “Virtual ER” as a whole. For example,

Future Care live creates a ‘virtual ER’ which allows for the
simultaneous remote participation of general and
specialist physicians, hospital treatment staff, Future Care
case manager, shipowner [sic] representatives and family
members while the patient is onboard ship.23

___

New York-Presbyterian starts offering virtual ER visits

New York-Presbyterian says its new NYP On Demand
platform provides emergency [sic] and will begin offering
virtual urgent care visits by the end of the summer.24

___

Texas Health Aetna launches virtual ER care app

Texas Health Aetna, a joint venture between Texas Health
Resources and Aetna, has launched a new app aimed at
providing patients with more immediate, virtual
emergency care.25

Also, we reject Applicant’s argument that VIRTUAL ERS does not have a clearly

defined meaning26 and that VIRTUAL ERS cannot be generic because there is no

23 June 18, 2018 Office Action (TSDR 34).
24 Id. at (TSDR 7)
25 Id. at TSDR 11-12.
26 Applicant’s Brief, p. 7 (4 TTABVUE 11).

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Serial No. 87819361

such thing as a virtual emergency room because “only some urgent care can be

completed virtually.”27 Those arguments fly in the face of the evidence discussed

above. We take particular note of Applicant’s own website which provides the

following information:

We are About to make your life easier with our Virtual ER.

With Virtual ERs you connect directly with an emergency
room and you only interact with highly trained Emergency
Room staff. …

Virtual ERs offers organizational plans for on-demand
Telemedicine consultations via phone or online video when
you need it, wherever you are and at a fraction of the cost
of a clinic or emergency room visit. We can connect to any
business, school, prison system or even an isolated remote
location that might require an emergency consultation.
Our American Board Certified Virtual ERs physicians
provide high quality emergency room level telemedicine
consultation and will also provide a treatment plan that
may include a prescription.28

Applicant asserts that VIRTUAL ERS is not generic because Applicant coined the

term.29 Even if Applicant were the first user of a generic designation, that does not

justify registration if the only significance conveyed by the term is that of a category

of goods. In re Empire Tech, Dev. LLC, 123 USPQ2d 1544, 1549 (TTAB 2017) (citing

In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010). See also In re

Merrill Lynch, Pierce, Fenner, & Smith, 4 USPQ2d at 1142 (“To allow trademark

protection for generic terms, i.e., names which describe the genus of goods being sold,

27 Applicant’s Brief, p. 10 (4 TTABVUE 14).
28 October 10, 2018 Office Action (TSDR 62).
29 Applicant’s Brief, p. 5 (4 (TTABVUE 9).

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Serial No. 87819361

even when these have become identified with a first user, would grant the owner of

the mark a monopoly, since a competitor could not describe his goods as what they

are.”). Moreover, the record clearly shows that Applicant is not the only user of the

term.

Applicant contends that VIRTUAL ERS is not generic because there are other

generic terms that describe telemedicine services, including emergency medicine

rendered through remote technology.30 However, there can be more than one generic

term for a particular genus of goods or services. Any term that the relevant public

understands to refer to the genus is generic. See In re 1800Mattress.com IP LLC,

92 USPQ2d at 1685 (“We also disagree with [the] assertion that there can only be one

generic term … Instead, any term that the relevant public understands to refer to the

genus … is generic.”); see also In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1464

(TTAB 2015) (“more than one term may be generic with respect to a particular

product or service.”).

In view of the foregoing, we find that the term VIRTUAL ERS is generic for

“medical consultations provided via phone, online chat or videoconferencing;

telemedicine services.”

For completeness we consider the alternative refusal of whether the merely

descriptive term VIRTUAL ERS for “medical consultations provided via phone, online

chat or videoconferencing; telemedicine services” has acquired distinctiveness.

30 Applicant’s Brief, p. 10 (4 TTABVUE 14).

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III.Whether VIRTUAL ERS for “medical consultations provided via phone,
online chat or videoconferencing; telemedicine services” has acquired
distinctiveness?

Despite the facts that Applicant applied to register VIRTUAL ERS under the

provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and that it

disclaimed the exclusive right to use the term VIRTUAL ERS in Registration No.

4279657 for the mark VIRTUAL ERS and design for “online medical services,”

Applicant argues that VIRTUAL ERS is suggestive, not descriptive and certainly not

generic.31 Applicant’s claim that VIRTUAL ERS has acquired distinctiveness is a

concession that the term is not inherently distinctive and, therefore, unregistrable in

the absence of a showing of acquired distinctiveness.

Where, as here, an applicant seeks a registration based on
acquired distinctiveness under Section 2(f), the statute
accepts a lack of inherent distinctiveness as an established
fact. When registration is sought under Section 2(f),
therefore, it is idle to continue to speak of an opposer’s
burden to establish that fact, or to say that the applicant
“conceded” that fact. Similarly, in cases where registration
was initially sought on the basis of distinctiveness,
subsequent reliance by the applicant on Section 2(f)
assumes that the mark has been shown or conceded to be
merely descriptive. Whether in ex parte proceedings under
Section 2(f), In re McIlhenny Co., 278 F.2d 953, 957, 126
USPQ 138, 141 47 CCPA 985 (1960), General Foods Corp.
v. MGD Partners, 224 USPQ 479, 485 (TTAB 1984),
Sunbeam Corp. v. Battle Creek Equipment Co., 216 USPQ
1101, 1102 (TTAB 1982), or in subsequent oppositions,
neither party bears any burden on inherent
distinctiveness, as it is a nonissue under that subsection of
the statute. The only remaining issue under Section 2(f)
relating to the proposed mark itself is acquired
distinctiveness

31Applicant’s Brief, p. 11 (4 TTABVUE 15); August 30, 2018 Response to an Office Action
(TSDR 1).

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Serial No. 87819361

Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed.

Cir. 1988); see also Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d

1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant seeks registration

on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s

reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”);

In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994).

Under Section 2(f) of the Trademark Act, matter that is merely descriptive under

Section 2(e)(1) may nonetheless be registered on the Principal Register if it “has

become distinctive of the applicant’s goods [or services] in commerce.” Thus, the

proposed mark may be registered on the Principal Register if Applicant proves that

the merely descriptive matter has acquired distinctiveness (also known as “secondary

meaning”) as used in connection with the Applicant’s services in commerce. See Coach

Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1728-30

(Fed. Cir. 2012); Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123

USPQ2d 1844, 1848 (TTAB 2017). Acquired distinctiveness is generally understood

to mean an acquired “mental association in buyers’ minds between the alleged mark

and a single source of the product.” Apollo Med. Extrusion Techs., 123 USPQ2d at

1848 (quoting 2 McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION

§ 15:5 (4th ed., June 2017 Update)). In this regard, in analyzing above whether

VIRTUAL ERS is a generic term, we considered all of the evidence touching on the

public perception of that term.

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Serial No. 87819361

An applicant seeking registration of a mark under Section 2(f) bears the ultimate

burden of establishing acquired distinctiveness. In re La. Fish Fry Prods., Ltd.,

797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (“The applicant … bears the

burden of proving acquired distinctiveness.”) (citation omitted).

A. Degree of Descriptiveness

The initial question before us in our analysis of whether VIRTUAL ERS has

acquired distinctiveness is the degree of descriptiveness of that term as used in

connection with Applicant’s services. See Royal Crown Cola, 127 USPQ2d at 1048

(“the Board must make an express finding regarding the degree of the mark’s

descriptiveness on the scale ranging from generic to merely descriptive, and it must

explain how its assessment of the evidentiary record reflects that finding.”); Nazon v.

Ghiorse, 119 USPQ2d at 1178, 1187 (TTAB 2016). “[A]pplicant’s burden of showing

acquired distinctiveness increases with the level of descriptiveness; a more

descriptive term requires more evidence of secondary meaning.” In re

Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). As the

Board has explained:

[T]he greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. The sufficiency of the evidence offered to
prove acquired distinctiveness should be evaluated in light
of the nature of the designation. Highly descriptive terms,
for example, are less likely to be perceived as trademarks
and more likely to be useful to competing sellers than are
less descriptive terms. More substantial evidence of
acquired distinctiveness thus will ordinarily be required to
establish that such terms truly function as source-
indicators.

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Serial No. 87819361

In re Greenliant Sys. Ltd., 97 USPQ2d at 1085 (internal citations omitted); see also

La. Fish Fry Prods., 116 USPQ2d at 1265 (Board has discretion not to accept an

applicant’s allegation of five years of substantially exclusive and continuous use as

prima facie evidence of acquired distinctiveness when the proposed mark is “highly

descriptive”); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 SUPQ2d 1056, 1058 (Fed.

Cir. 1999) (“[C]onsidering the highly descriptive nature of the proposed mark,

[Applicant] has not met its burden to show that the proposed mark has acquired

secondary meaning.”).

Based on the evidence discussed above in connection with the genericness refusal,

we find that each of the terms comprising the subject matter that Applicant seeks to

register, “Virtual” and “ERS,” is highly descriptive of “medical consultations provided

via phone, online chat or videoconferencing; telemedicine services.” Moreover, when

combined, the record also shows that the composite proposed mark VIRTUAL ERS

is, at the very least, highly descriptive of those services. See, e.g., Real Foods Pty Ltd.

v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)

(CORN THINS and RICE THINS are highly descriptive); La. Fish Fry Prods., Ltd.,

116 SUPQ2d at 1265; Apollo Med. Extrusion Techs., 123 USPQ2d at 1851 (MEDICAL

EXTRUSION TECHNOLOGIES is highly descriptive of “polyurethanes in the form

of sheets, films, pellets, granules, and tubes for use in the manufacture of medical

devices, medical diagnostic devices, artificial vascular grafts, stents, pacemaker

leads, artificial heart pump diaphragms, catheters, drug delivery devices, orthopedic

and spinal implants, blood glucose monitors, and blood gas analyzers”); In re Positec

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Serial No. 87819361

Grp. Ltd., 108 USPQ2d 1161, 1173 (TTAB 2013) (holding SUPERJAWS merely

descriptive for tools). Clearly, no thought or imagination is required to immediately

understand that telemedicine services rendered under the mark VIRTUAL ERS are

just that, emergency medical services rendered using telecommunication technology.

Accordingly, Applicant’s proposed mark VIRTUAL ERS is highly descriptive of

Applicant’s services under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

§ 1052(e)(1).

B. Acquired Distinctiveness

Because we have found that the term VIRTUAL ERS is highly descriptive of

Applicant’s services, Applicant’s burden of establishing acquired distinctiveness

under Section 2(f) is commensurately high. See Steelbuilding.com, 75 USPQ2d at

1424; In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed. Cir.

1990); In re LC Trademarks, Inc., 121 USPQ2d 1197, 1199 (TTAB 2016); In re

Greenliant Sys. Ltd., 97 USPQ2d at 1085.

“To show that a mark has acquired distinctiveness, an applicant must

demonstrate that the relevant public understands the primary significance of the

mark as identifying the source of a product or service rather than the product or

service itself.” Steelbuilding.com, 75 USPQ2d at 1422; see also Coach Servs., 101

USPQ2d at 1729. Our ultimate Section 2(f) analysis and determination in this case

is based on all of the evidence considered as a whole, guided by the following factors:

(1) association of the trade[mark] with a particular source
by actual purchasers (typically measured by customer
surveys); (2) length, degree, and exclusivity of use; (3)
amount and manner of advertising; (4) amount of sales and

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Serial No. 87819361

number of customers; (5) intentional copying; and (6)
unsolicited media coverage of the product embodying the
mark. … All six factors are to be weighed together in
determining the existence of secondary meaning.

In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc.

v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)). See

also Steelbuilding.com, 75 USPQ2d at 1424; Cicena Ltd. v. Columbia Telecomms.

Grp., 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed. Cir. 1990). On this list, no single

fact is determinative. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB

2009); see also In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283 (TTAB 2000)

(“Direct evidence [of acquired distinctiveness] includes actual testimony, declarations

or surveys of consumers as to their state of mind. Circumstantial evidence, on the

other hand, is evidence from which consumer association might be inferred, such as

years of use, extensive amount of sales and advertising, and any similar evidence

showing wide exposure of the mark to consumers.”).

In this appeal, the only evidence that VIRTUAL ERS has acquired distinctiveness

is Applicant’s claim that its use of that term has been substantially exclusive and

continuous for the last five years. Because, for purposes of this section, we are

assuming that VIRTUAL ERS — which we found to be generic — is, at very best,

highly descriptive, we find that five years of substantially exclusive and continuous

use is not sufficient to prove that VIRTUAL ERS has acquired distinctiveness. See

La. Fish Fry Prods., 116 USPQ2d at 1265 (Board has discretion not to accept an

applicant’s allegation of five years of substantially exclusive and continuous use as

prima facie evidence of acquired distinctiveness when the proposed mark is “highly

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Serial No. 87819361

descriptive”); see also Real Foods Pty v. Frito-Lay N. Am., 128 USPQ2d at 1378 (“while

evidence of substantially exclusive and continuous use may be sufficient to prove a

prima facie case of acquired distinctiveness, this is not always the case. …

‘Particularly for a mark that is … highly descriptive like [Real Foods’ proposed

marks], the [TTAB] was within its discretion not to accept [Real Foods’] alleged five

years of substantially exclusive and continuous use as prima facie evidence of

acquired distinctiveness.’”) (internal citations omitted). This claim also fails because

the record shows that Applicant has not made substantially exclusive use of the

proposed mark. See Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Serv.,

118 USPQ2d 1392, 1404 (TTAB 2016).

Thus, the record falls short of establishing acquired distinctiveness.

In view of the foregoing, Applicant has failed to meet its burden of showing that

the highly descriptive term VIRTUAL ERS has acquired distinctiveness.

Decision: The refusal to register the designation VIRTUAL ERS on the ground

that it is generic is affirmed and the refusal to register that designation on the ground

that it is merely descriptive and has not acquired distinctiveness is also affirmed.

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