National Association of Veterinary Technicians in America, Inc.

This Opinion Is a
Precedent of the TTAB

Mailed: July 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re National Association of Veterinary Technicians in America, Inc.

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Serial No. 87171093

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Anne E. Keenan-Yates of FisherBroyles LLP,
for National Association of Veterinary Technicians in America, Inc.

Michael L. Engel, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.

_____

Before Kuhlke, Bergsman, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background

National Association of Veterinary Technicians in America, Inc. (“Applicant”)

seeks registration on the Principal Register of the proposed certification mark

VETERINARY TECHNICIAN SPECIALIST in standard characters for “veterinary
Serial No. 87171093

medicine services” in Class B.1 The Trademark Act defines a “certification mark” as

“any word, name, symbol, or device, or any combination thereof [used] to certify

regional or other origin, material, mode of manufacture, quality, accuracy, or other

characteristics of [a] person’s goods or services . . . .” 15 U.S.C. § 1127. The application

includes the following certification statement: “The certification mark, as used or

intended to be used by persons authorized by the certifier, certifies that an individual

has completed the required curriculum of a defined body of veterinary technology

knowledge pertinent to that particular specialty.”

The Examining Attorney refused registration of Applicant’s mark under Section

2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely descriptive of the

identified services, and included an advisory that the mark appears to be generic.2

Certification marks are subject to the same statutory bars to registration as other

marks, including mere descriptiveness under Section 2(e)(1) of the Trademark Act.

See, e.g., In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB

2007) (affirming refusal to register merely descriptive certification mark on the

ground that it had not acquired distinctiveness); In re Nat’l Ass’n of Legal Secretaries

(Int’l), 221 USPQ 50, 52 (TTAB 1983) (certification marks subject to “the Section 2

qualifications and bans, including those of Section 2(e)”).

1Application Serial No. 87171093 has a filing date of September 14, 2016, and is based on
alleged use in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a).

2 TSDR December 30, 2016 Office Action at 1.

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Applicant argued against the refusal, but also claimed acquired distinctiveness

under Section 2(f), 15 U.S.C. § 1052(f), in the alternative.3 Applicant relied in part on

a supporting declaration by Julie Legred, Applicant’s Executive Director, stating that

there has been “substantially exclusive and continuous use and control of the Mark

in commerce by authorized parties for at least the five years immediately before the

date of this statement (since 1995).”4 Applicant also attached an article from the April

1997 issue of DVM Newsmagazine and a publication titled Lifeline, Official

Newsletter of Veterinary Emergency and Critical Care Society (March 1996), “as

further evidence supporting Applicant’s exclusive use of the Mark,” as well as

screenshots of the websites of third-party veterinary academies that conduct

educational programs for those seeking certification as a VETERINARY

TECHNICIAN SPECIALIST.5

The Examining Attorney characterized Applicant’s mark as highly descriptive and

deemed the Section 2(f) claim insufficient, eventually making the Section 2(e)(1)

refusal and the rejection of the Section 2(f) claim final. Applicant requested

reconsideration6 and appealed.7 The Examining Attorney denied the request for

reconsideration.8

3 TSDR June 30, 2017 Response to Office Action at 6-7.
4 Id. at 58 (Legred Declaration).
5 Id. at 59-116.
6 4 TTABVUE.
7 1 TTABVUE.
8 5 TTABVUE.

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Applicant’s Brief on appeal includes arguments against a genericness refusal,9

perhaps because the Examining Attorney gave a genericness advisory and at times

referred to the wording in Applicant’s mark as generic.10 However, the Examining

Attorney only refused the mark as merely descriptive,11 and never added a

genericness refusal, even after Applicant claimed acquired distinctiveness.12 The

Examining Attorney’s Brief confirms that the “sole issues” on appeal are

descriptiveness and acquired distinctiveness.13 Thus, genericness is not at issue in

this appeal.

We affirm the refusal to register the mark as merely descriptive and lacking

acquired distinctiveness for the reasons discussed below.

II. Descriptiveness

Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,

(1) when used on or in connection with the goods [or services] of the applicant is

merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is merely descriptive

9 7 TTABVUE 5-8 (Applicant’s Brief).
10 E.g., 5 TTABVUE 3; 9 TTABVUE 6; see also TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1209.02(a) (Oct. 2018) (directing examining attorneys initially to issue
only a descriptiveness refusal, not a genericness refusal, unless the applicant asserts
acquired distinctiveness, but allowing for inclusion of an advisory “statement that the subject
matter appears to be a generic name”).
11Advisory statements are not refusals subject to appeal. In re Harley, 119 USPQ2d 1755,
1757 (TTAB 2016); see also In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403-04
(TTAB 2018).
12See TMEP § 1209.02(a)(ii) (“If the applicant responds to a §2(e)(1) descriptiveness refusal
by amending its application to assert acquired distinctiveness,” and the examining attorney
considers the mark generic, “the examining attorney must issue a new nonfinal action
refusing registration” as generic.).
13 9 TTABVUE 4 (Examining Attorney’s Brief).

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within the meaning of the statute “if it immediately conveys knowledge of a quality,

feature, function, or characteristic of the goods or services with which it is used.” In

re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.

Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir.

2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir.

2015). In the case of a certification mark, the identified goods or services are those

provided by the certified users. See Council on Certification of Nurse Anesthetists, 85

USPQ2d at 1411 (considering whether the certification mark “refer[s] to anesthesia

services rendered and administered by certified registered nurse anesthetists”).

Descriptiveness must be assessed “in relation to the [services] for which registration

is sought, the context in which it is being used, and the possible significance that the

term would have to the average purchaser of the [services] because of the manner of

its use or intended use.” Bayer AG, 82 USPQ2d at 1831 (citing In re Abcor Dev., 588

F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). Here, the consumers of “veterinary

medicine services” include people seeking medical care for animals (e.g., pet owners,

zoos, farmers) and veterinarians seeking veterinary technicians.14

14 See Office Action dated Dec. 30, 2016, TSDR at 2 (veterinary technicians provide medical
care for animals); Response to Office Action dated June 30, 2017, TSDR at 68-69 (veterinary
technician specialists “provide your pet with exceptional anesthetic care”; “Anesthesia and
Your Pet” video targeted to pet owners); Office Action dated Aug. 2, 2017, TSDR at 2 (job
posting states that veterinary technicians assist veterinarians by “preparing animals for
surgery, restraining pets” and “monitor[ing] animal health”); TSDR at 9 (job posting for
veterinary technician states that they “evaluate and treat animals”); Office Action dated Mar.
3, 2018, TSDR at 41-42 (PetMD.com webpage targeted to pet owners, “When you drop your
pet off at the veterinary hospital, have you ever thought about who besides the veterinarians
is involved in their care? The answer to that question is the veterinary technician”).

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Serial No. 87171093

With a mark such as VETERINARY TECHNICIAN SPECIALIST, we may

consider the meaning of the components, and then determine whether the mark as a

whole is merely descriptive. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd.,

695 F.3d 1247, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012). If the components

VETERINARY TECHNICIAN and SPECIALIST are each individually merely

descriptive of the services, we assess whether their combination in “Applicant’s mark

‘conveys any distinctive source-identifying impression contrary to the descriptiveness

of the individual parts.’” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1515-

16 (TTAB 2016) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d

1370, 1372 (Fed. Cir. 2003)). If each component “retains its merely descriptive

significance in relation to the [services], the combination results in a composite that

is itself merely descriptive.” Fat Boys, 118 USPQ2d at 1516 (citing In re Tower Tech.,

Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)).

According to Applicant’s own explanation in its Brief, “Applicant’s Mark identifies

a level of qualification achieved by veterinary technicians completing defined

criteria and standards certified by Applicant” (emphasis added).15 As Applicant’s

certification statement in the application indicates, the criteria and standards are

“pertinent to [a] particular specialty” (emphasis added).

The record in this case includes ample evidence of the descriptiveness of

VETERINARY TECHNICIAN in the context of the veterinary medicine services

recited by Applicant because a “veterinary technician” is the recognized name of a

15 7 TTABVUE 6 (Applicant’s Brief).

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type of professional who participates in providing such services. Applicant’s own

promotional material repeatedly refers to “veterinary technicians” in a descriptive or

generic way, for example, stating that “Veterinary Technician Specialists (VTS) are

expert level veterinary technicians,”16 and referring to the opportunity “for newly

credentialed rehabilitation veterinary technicians wishing to learn more about the

specialty field.”17 In the background information about its history, Applicant’s

material discusses the objective “to further encourage specialization of veterinary

technicians in the field.”18 The nature of Applicant’s use of “veterinary technician”

shows that the term is a common name for a type of provider of veterinary medicine

services.

Third parties in the industry also use “veterinary technician” descriptively or

generically. For example:

The Pima Medical Institute website offers a veterinary
technician program, explaining that “[v]eterinary
technicians are animal nurses…. As a veterinary
technician, you will typically work under the supervision of
a licensed veterinarian doing clinical work. This includes
tasks such as performing various medical tests, and
treating animals with medical conditions and diseases.”19

The iHireVeterinary website offers a page to “Search
Veterinary Technician Jobs,” noting that “Veterinary
technicians observe and monitor animal health, collect
samples for analysis, run laboratory tests, and continually
update patient records.”20 The site includes postings by

16 TSDR February 2, 2018 Response to Office Action at 6.
17 Id. at 7.
18 Id. at 6.
19 TSDR December 30, 2016 Office Action at 2 (pmi.edu).
20 TSDR August 2, 2017 Office Action at 2 (ihireveterinary.com).

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several individual businesses seeking “veterinary
technicians,”21 and offers “Veterinary Technician Related
Career Advice Articles.”22

The Monster job search website offers a “Veterinary
Technician” filter to refine a job search, and gives a
“Veterinary Technician Job Overview” explaining that
“The role of the veterinary technician is similar to that of a
registered nurse in a doctor’s office.”23 The site includes
recruitment notices for various “veterinary technician” job
openings.24

This third-party evidence also supports the descriptiveness refusal.

Turning to SPECIALIST, the term is defined as “one who specializes in a

particular occupation, practice, or branch of learning.”25 As noted above, Applicant’s

own certification statement and promotional materials use “specialty” and

“specialization” in a descriptive or generic manner in connection with the relevant

services.26 Applicant’s certified users also make similar statements, such as:

The Academy of Laboratory Animal Veterinary
Technicians and Nurses’ materials state that its mission is,
inter alia, “[t]o promote excellence by specialization in
veterinary technology/nursing in the distinct field of
Laboratory Animal Medicine….”27

21 Id. at 2-4.
22 Id. at 8.
23 TSDR August 2, 2017 Office Action at 9 (monster.com).
24 Id. at 9-12.
25See TSDR December 30, 2016 Office Action at 44 (merriam-webster.com). This definition
appears to be embedded in a search result, and previously was not submitted as a screenshot
directly from the Merriam-Webster website. For clarity, we grant the Examining Attorney’s
request that we take judicial notice of the same definition as shown directly from merriam-
webster.com. 9 TTABVUE 13.
26 February 2, 2018 Response to Office Action at 6-7.
27 Id. at 8.

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One certified user touted its provisional approval by
Applicant, stating “[w]e are pleased to become the eleventh
veterinary technician specialty recognized….”28

Another certified user announced itself as “a provisionally
approved specialty” for “[v]eterinary technicians who
successfully meet the credential requirements and pass the
AVZMT examination.”29

Another certified user describes how it “petitioned
[Applicant’s committee] for recognition as a certifying body
of veterinary technician specialists in anesthesia. The
announcement includes background about the
development of a “process by which certification of
veterinary technicians as specialists in anesthesia” and
support received from another “veterinary technician
specialty group” previously recognized by Applicant.30

The Academy of Veterinary Surgical Technicians states
that it seeks “to increase the competence of those who
perform specialty duties in the field of veterinary
surgery.”31

The Examining Attorney also introduced third-party registrations into the record

that include disclaimers of SPECIALIST in the context of medical (and other)

services, including several certification mark registrations.32 Most of these

registrations with disclaimers of SPECIALIST are on the Supplemental Register,

such that the disclaimers reflect the treatment of SPECIALIST as a generic term. See

TMEP § 1213.03(a) (“If a mark is comprised in part of matter that, as applied to the

goods or services, is generic or does not function as a mark, the matter must be

28 TSDR February 2, 2018 Response to Office Action at 11.
29 Id. at 15.
30 Id. at 16 (avtaa-vts.org).
31 TSDR June 30, 2017 Response to Office Action at 108.
32 TSDR December 30, 2016 Office Action at 5-43.

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disclaimed to permit registration on the Principal Register (including registration

under §2(f) of the Act) or on the Supplemental Register.”). Applicant countered with

numerous third-party registrations of marks that contain SPECIALIST, including

those for medical services, but do not have disclaimers of SPECIALIST.33 However,

they mostly are consistent with SPECIALIST being considered a descriptive term, as

21 of the 25 registrations issued under Section 2(f), based on acquired distinctiveness.

Thus, the record shows that in this context, the term SPECIALIST describes or

refers to a person who specializes in a particular type of veterinary medicine. Like

the component VERTERINARY TECHNICIAN, the component SPECIALIST on its

own is not inherently distinctive for veterinary medicine services.

When a mark combines two descriptive terms, such as VETERINARY

TECHNICIAN and SPECIALIST, the descriptiveness analysis turns on whether the

combination of terms evokes a new and different commercial impression. We find that

the combination in this case does not. The terms retain their ordinary meanings, and

when combined, the entire proposed mark VETERINARY TECHNICIAN

SPECIALIST refers to a veterinary technician who has become a specialist in a

particular field of veterinary medicine.34 This is further confirmed by a DVM

Newsmagazine article that discusses Applicant and refers to the development of

33 TSDR June 30, 2017 Response to Office Action at 8-57.
34Each of these terms is used in the industry to refer to those who practice veterinary
medicine. “Our society is better served if … highly descriptive or generic terms remain
available for use among competitors.” In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89,
91 (CCPA 1980) (footnote omitted).

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“specialty status for veterinary technicians.”35 Where, as here, the combination

retains the descriptive significance of the individual parts, the mark as a whole is

merely descriptive. In re Petroglyph Games Inc., 91 USPQ2d 1332, 1337 (TTAB 2009)

(BATTLECAM merely descriptive for computer game software); see also In re Phoseon

Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR

LIGHT MATRIX merely descriptive of light and UV curing systems composed

primarily of light-emitting diodes for industrial and commercial applications).

Overall, the evidence shows that to consumers of veterinary medicine services,

VETERINARY TECHNICIAN SPECIALIST immediately conveys knowledge of a

significant feature of the services, namely, that they are provided by a veterinary

technician who specializes in a type of veterinary medicine. Given the nature and

volume of evidence, we find Applicant’s mark is not only merely descriptive of the

identified services but highly descriptive as well. See Royal Crown Co. v. Coca-Cola

Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (instructing Board to

first determine whether a proposed mark is highly descriptive rather than merely

descriptive before assessing acquired distinctiveness).

III. Acquired Distinctiveness

Descriptive marks may be registered on the Principal Register under Trademark

Act Section 2(f) with a showing of acquired distinctiveness. 15 U.S.C. § 1052(f).36 We

35 TSDR June 30, 2017 Response to Office Action at 125.
36The statute also provides that the USPTO “may accept as prima facie evidence … proof of
substantially exclusive and continuous use thereof as a mark by the applicant in commerce
for the five years before the date on which the claim of distinctiveness is made.” 15 U.S.C.
§ 1052(f).

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determine whether Applicant’s asserted mark has acquired distinctiveness based on

the entire record, keeping in mind that “[t]he applicant … bears the burden of proving

acquired distinctiveness.” In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d

1262, 1264 (Fed. Cir. 2015) (citation omitted).

To establish secondary meaning, or acquired distinctiveness for certification

marks, the focus of the evidentiary showing differs from that for trademarks because

certification marks indicate that goods or services provided by persons other than the

mark owner adhere to specified standards set by the mark owner, whereas

trademarks indicate the source of the goods or services. See Section 45 of the

Trademark Act, 15 U.S.C. 1127 (defining “trademark” and “certification mark”); see

also TMEP §1306.01(b) (“[T]he purpose of a certification mark is to inform purchasers

that the goods or services of a person possess certain characteristics or meet certain

qualifications or standards established by another person. A certification mark does

not indicate origin in a single commercial or proprietary source the way a trademark

or service mark does”). The focus for certification marks is on whether the evidence

shows that in the minds of consumers of the applied-for goods or services, the primary

significance of the designation is to indicate certification of the goods or services, i.e.,

that the goods or services meets certain standards set by the applicant. “[W]hen an

applicant seeks registration of a certification mark, it is the use by persons other than

the owner of the mark, subject to the owner’s control, which is the primary

consideration in determining how members of the relevant public will perceive the

mark.” Council on Certification of Nurse Anesthetists, 85 USPQ2d at 1406.

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The types of evidence to be assessed and weighed in determining acquired

distinctiveness of a certification mark are for the most part the same as those for

trademarks and include: (1) actual purchasers’ association of the mark with

indicating certification; (2) length, degree, and exclusivity of use; (3) amount and

manner of advertising; (4) amount of sales and number of customers; (5) intentional

copying; and (6) unsolicited media coverage. See Converse, Inc. v. Int’l Trade Comm’n,

907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018). We weigh all of the factors

for which there is evidence in the record in this case to determine the existence of

secondary meaning. Id.

Applicant bears a high evidentiary burden for acquired distinctiveness because

Applicant’s proposed mark is highly descriptive. See, e.g., Royal Crown, 127 USPQ2d

at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ 1420, 1424 (Fed. Cir.

2005) (“[T]he applicant’s burden of showing acquired distinctiveness increases with

the level of descriptiveness; a more descriptive term requires more evidence of

secondary meaning.”)); Council on Certification of Nurse Anesthetists, 85 USPQ2d at

1415 (initialism CNRA for “Certified Registered Nurse Anesthetist” found to be

highly descriptive, increasing “the evidentiary burden on the user to establish

acquired distinctiveness”). With this backdrop, we consider Applicant’s Section 2(f)

claim.

After a careful review of the record, we find that Applicant’s evidence does not

show that users of veterinary medicine services have come to recognize the applied-

for mark as indicating that the person performing the services has met certain

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standards set by Applicant (i.e., that the person “has completed the required

curriculum of a defined body of veterinary technology knowledge pertinent to that

particular specialty”) in connection with the services. Applicant’s use since 1995,

despite appearing to have been exclusive use, the existence of 16 certified users,37 and

examples of their webpages or promotional materials that refer to the mark do not

convince us otherwise. See, e.g., Council on Certification of Nurse Anesthetists, 85

USPQ2d at 1414-15 (although there was no evidence of third-party use of the same

or similar highly descriptive designation, nearly 50 years of use deemed insufficient

to establish acquired distinctiveness where the applicant failed to establish its

recognition by consumers as a certification mark); In re Kalmbach Publ’g Co., 14

USPQ2d 1490, 1492 (TTAB 1989) (deeming Section 2(f) claim with more than 10

years of use insufficient for a highly descriptive mark “without specific evidence of

the extent of the mark’s exposure to the purchasing public and of the purchasers’

perception of the asserted mark”); In re Synergistics Research Corp., 218 USPQ 165,

167 (TTAB 1983) (“we have consistently held that a declaration or affidavit of

continuous and exclusive use as a mark for an extended period of years is insufficient

in and of itself to support registrability under Section 2(f) of the Trademark Act where

the term sought to be registered is highly descriptive in character”). The existence of

37Applicant certifies veterinary schools and academies to provide educational programs that
instruct in specialty areas of veterinary medicine for veterinary technicians and oversee a
certifying examination. TSDR June 30, 2017 Response to Office Action at 59 (Legred
Declaration); TSDR February 2, 2018 Response to Office Action at 32-34 (specimen). It
appears that the veterinary schools and academies provide the educational component,
application oversight, and examination, then certify the graduating veterinary technicians
with the degree of “veterinary technician specialist.” Id. at 32-33.

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the 16 certified users does not suffice to show acquired distinctiveness. Council on

Certification of Nurse Anesthetists, 85 USPQ2d at 1415 (existence of 40,000 certified

users reflects commercial success of certifying program but not how the relevant

public has come to view the designation). We have no information about the reach of

the third-party materials and cannot assume that they have been widely

disseminated to consumers. Some materials do not even use the applied-for mark,38

referring instead, for example, merely to “VTS.” Similarly, the two articles provided

date from the mid-1990’s and we lack information on the circulation of these

publications.39 Moreover, the merely explanatory nature of some of the references to

the mark in Applicant’s evidence does not persuade us that users of veterinary

medicine services who encounter those materials would understand that the

veterinary technician providing the services has been certified as having met certain

standards rather than as describing that the provider of the services is a veterinary

technician who works in a particular specialty. Overall, Applicant’s evidence falls

short of meeting its burden to show acquired distinctiveness of this highly descriptive

proposed certification mark.

Decision: The refusal to register the mark on the ground that it is merely

descriptive under Trademark Act Section 2(e)(1) and has not acquired distinctiveness

under Trademark Act Section 2(f) is affirmed.

38E.g., TSDR June 30, 2017 Response to Office Action at 104 (Academy of Veterinary
Nutrition Technicians), 108 (Academy of Veterinary Surgical Technicians), 119 (Academy of
Dermatology Veterinary Technicians).
39 Id. at 125-30.

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