Active Ankle Systems, Inc.

Trademark Trial and Appeal Board

Apr 17, 2007

No. 78349181 (T.T.A.B. Apr. 17, 2007)

Date: April 17, 2007

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Active Ankle Systems, Inc.
________

Serial No. 78349181
_______

Scot A. Duvall of Middleton Reutlinger for Active Ankle
Systems, Inc.

Lana H. Pham, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Hairston, Taylor and Bergsman, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

On January 8, 2004, Active Ankle Systems, Inc. filed
an application to register on the Principal Register the
mark DORSAL NIGHT SPLINT for “orthopedic splints for the
foot and ankle.”1 The examining attorney refused
registration on the ground that the mark is merely
descriptive under Section 2(e)(1) of the Trademark Act, 15

1 Application Serial No. 78349181, reciting a bona fide intention
to use the mark in commerce. On November 2, 2004 applicant filed
an amendment to allege use, claiming March 15, 2004 as the date
of first use of the mark anywhere and in commerce.
THIS OPINION
IS A PRECEDENT
OF THE TTAB
Ser No. 78349181

2
U.S.C. §1052(e)(1). After filing an amendment to allege
use, applicant amended its application to the Supplemental
Register and the refusal under Section 2(e)(1) was
withdrawn. In response to a request from the examining
attorney, applicant disclaimed the term “NIGHT SPLINT.”
The examining attorney then refused registration, under
Section 23 of the Trademark Act, 15 U.S.C. § 1091, on the
ground that applicant’s mark is generic and thus incapable
of registration on the Supplemental Register.
When the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
June 2, 2006, the examining attorney denied the request for
reconsideration and the appeal was resumed. Applicant and
the examining attorney have filed briefs and applicant has
filed a reply brief.2
Preliminary Matter
Before turning to the merits of the case, we must
address a dispute between the examining attorney and
applicant concerning the governing case law by which we
will be guided in determining genericness. Throughout the

2 Applicant attached Exhibits 1-11 to its reply brief, filed
November 20, 2006. While certain of the exhibits are Internet
printouts previously submitted by applicant during prosecution,
other exhibits are newly submitted. The newly submitted material
will not be considered. The record should be complete prior to
appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).

Ser No. 78349181

3
examination of the application, the examining attorney took
the position that the applied-for-mark is a compound word,
and thus the determination of genericness should be guided
by In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987) and In re Leatherman Tool Group, Inc., 32
USPQ2d 1443 (TTAB 1994). In her appeal brief, the
examining attorney added the alternative rationale that,
even if the applied-for-mark is considered a phrase, it is
generic under In re American Fertility Society, 188 F.3d
1341, 51 USPQ2d 1832 (Fed. Cir. 1999).
Applicant, on the other hand, has taken the position
throughout the case that the applied-for-mark is a phrase
and thus the determination of genericness should be guided
by American Fertility. Applicant accordingly contends that
the only means by which the Board may find the designation
DORSAL NIGHT SPLINT to be generic is if the evidence of
record clearly establishes that the entire phrase is
generic.
We agree with applicant that the designation DORSAL
NIGHT SPLINT is a phrase. Therefore, the examining
attorney’s reliance on Gould and Leatherman is misplaced.
In the present case, “dorsal,” “night,” and “splint” are
multiple words joined together as a phrase. Thus, in
Ser No. 78349181

4
reaching our decision, we have been guided by American
Fertility, supra.
However, as a result of this dispute, applicant
requested that the Board augment the panel assigned to this
case and expressly overrule Leatherman. Applicant contends
that in view of the Federal Circuit’s 1999 decision in
American Fertility, and the examining attorney’s reliance
on the 1994 decision in Leatherman to support the refusal,
Leatherman should be expressly overruled to the extent that
it permits the Gould “dissection/recombination” analysis in
the context of multi-word marks.3 The Board has considered
the request but has determined that a panel of judges
larger in number than the usual three-member panel is not
warranted. See generally, TBMP § 540 (2d ed. rev. 2004).
Applicant’s request for an augmented panel is accordingly
denied. We further comment that an examining attorney’s
reliance on a Board decision that is not or may no longer
be good law does not require an express overruling of that
decision. Examining attorneys and parties before the Board
occasionally cite inapposite or outdated cases. The Board,
being thoroughly familiar with current case law, will apply
the correct case law, which, in this case, is American
Fertility.

3 Leatherman, 32 USPQ2d at 1449.
Ser No. 78349181

5
We turn then to the merits of the case and review the
evidence.
The Evidence
a. The Examining Attorney’s evidence
To demonstrate that the designation “dorsal night
splint” is generic, the examining attorney submitted two
excerpts from the NEXIS database shown below (emphasis
supplied):
Brown Medical Industries introduces the new PF
Convertible Splint[TM]. This orthosis is a removable
walking splint with a dorsal night splint component.
Designed specifically for plantar fasciitis...
(Podiatry Management, August 1, 2005; and

I have found a cheap and quick alternative to a
dorsal night splint for plantar facia pain
and/or foot cramping.
(Physician and Sportsmedicine, January, 2002).

The examining attorney also submitted printouts from
Internet websites found through a search of the “Google”
search engine. The first three excerpts are from the web
site PodiatryNetwork.com (http://podiatrynetwork.com), the
relevant portions of which are set forth below (emphasis
supplied):
The dorsal night splint is a new
revolutionary treatment modality for several
foot and ankle disorders, I highly recommend
it to my patients.

Dr. Kirk Koepsel, Houston, TX.
The dorsal night splint is effective in the
treatment of several common foot and ankle
Ser No. 78349181

6
disorders including but not limited to heel
pain, plantar fasciitis ….
A night splint can’t be effective
unless a patient wears it. Now there’s a
brace so comfortable you will use it. The
A-Force Dorsal Night Splint has been
designed to hold the foot in a neutral
position during sleep ….

… Recently a new design for the night splint
has been offered. It is called the dorsal
night splint produced by Active Ankle
Systems, Inc. … Combined with proper and
adequate calf muscle stretching the dorsal
night splint is an effective and cost
effective means of treating an array of foot
and ankle disorders.

Additional printouts from other websites
include, in relevant part:
FREEDOM Dorsal Night Splint: The FREEDOM
Dorsal PF Night Splint helps heal plantar
fasciitis in comfort. This low-profile
splint cradles the foot in [a] neutral
position, gently stretching the plantar
fascia through the night to relieve heel
pain. (www.buyusa.gov),

Alimed Dorsal Night Splint. Holds foot
comfortably in [a] neutral position
while patient sleeps ….(www.medco-
athletics.com),

They all work, but the A-Force dorsal night
splint is the best overall in terms of ease
of use, comfort, and durability. The
Strassburg sock is second best
overall.(www.drnelsonclinic.com),

The Royce Medical Airform Night Splint is
an effective treatment for achilles
tendonitis, plantar fascitis [sic], and
drop foot injuries. The dorsal night
splint treats the problem differently than
braces or supports by applying a mild
Ser No. 78349181

7
passive stretch to the Achilles tendon and
plantar fascia to keep it in a lengthened
state much like during a stretch.
(www.dme-direct.com); and

The company makes six versions of the
Active Ankle product, along with other
products like a new dorsal night splint for
people with plantar fasciitis, a painful
heel inflammation.
(www.courier-journal.com).

The examining attorney also introduced a printout from
applicant’s web site, (http://www.activeankle.com),
the relevant portion is:
Dorsal Night SplintTM

Active Ankle’s Dorsal Night SplintTM has
been designed to hold the foot in a neutral
position during sleep ….

The examining attorney also introduced Internet
evidence of web pages that were obtained as a result of a
search of the Google search engine of the terms “dorsal
splints foot” presumably to show that dorsal splints are
used in connection with the foot. The following are
representative samples:
Ankle Fracture Reference List
Post-operative management of ankle fractures:
... Active ankle movement with weight
bearing in an orthosis was compared with
active ankle movement without weight bearing
using a dorsal splint.
(http://home.gwu.edu);

Ser No. 78349181

8
Foot Talk Forums
Hi Kris and welcome.

... Honestly, I don’t think that you’ll see all
that much improvement with the dorsal splints.
(www.myfootshop.com); and

Chronic Achilles Tendon Overuse Injury
Complications After Surgical Treatment
American Journal of Sports Medicine, Jan, 2000

Postoperative Regimen

... In the cases of partial Achilles tendon
rupture or tendinosis (cases where excision of
the tendon tissue was extensive), the limb was
immobilized with a dorsal splint for two weeks
with the ankle joint in slight plantar flexion.
(www.findarticles.com).

To show that the term “dorsal” is used generically,
the examining attorney submitted Internet evidence showing
that the term “dorsal” is used in connection with the foot
and ankle. The following is a representative sample:
Virtual Naval HospitalTM
Orthopedics
III. Ankle and Foot
Physical Examination:
6. Dorsal Refers to the top of the foot.
(www.vnh.org)
The examining attorney submitted definitions from the
American Heritage Dictionary of the English Language (3d ed.
1992) of “dorsal,” “night” and “splint.”
Dorsal is defined, in relevant part, as:
Ser No. 78349181

9
1. Anatomy. Of, toward, on, in or near the back or upper
surface of an organ, a part, or an organism.

Night is defined, in relevant part, as:

1. a. The period between sunset and sunrise, especially
the hours of darkness.
2. The period between bedtime and morning.
3. Intended for use at night.

Splint is defined, in relevant part, as:

1. A rigid device used to prevent motion of a joint or
of the ends of a fractured bone.

b. Applicant’s evidence
Applicant has submitted copies of four registrations
as evidence that the term “night splint” and not “dorsal
night splint” has been used in the identification of goods
for orthopedic products.
Analysis
To be registrable on the Supplemental Register, the
matter sought to be registered must be “capable of
distinguishing applicant’s goods or services.” Trademark
Act §§ 23(a), 23(c). “Generic terms are common names that
the relevant purchasing public understands primarily as
describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular
source of the goods or services.” In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2001)(citations omitted). Because they are incapable
Ser No. 78349181

10
of indicating a particular source, generic terms are not
registrable on the Supplemental Register.
Our primary reviewing court has set forth a two-step
inquiry to determine whether a mark is generic: First,
what is the genus (category or class) of goods or 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 goods or services? H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F. 2d 987, 989, 228 USPQ 528, 530 (Fed.
Cir. 1986). As stated in American Fertility, 51 USPQ2d at
1837, “[t]he correct legal test” for genericness “is set
forth in Marvin Ginn” and “is to be applied to a mark … as
a whole, for the whole may be greater than the sum of its
parts.” The burden of proving genericness falls on the
trademark examining attorney, who must present “clear
evidence of generic use.” See In re Merrill Lynch, Pierce,
Fenner, and Smith, Inc., 828 F.2d 1567, 1571, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). “Any competent source
suffices to show the relevant purchasing public’s
understanding of a contested term, including purchaser
testimony, consumer surveys, dictionary definitions, trade
journals, newspapers and other publications.” In re Dial-
A-Mattress Operating Corp., supra, 57 USPQ2d at 1810.
Ser No. 78349181

11
With respect to the first part of the Marvin Ginn
inquiry, applicant defines the class of goods as
“orthopedic splints for the foot and ankle to be worn while
sleeping,” and the examining attorney, in her brief,
acknowledges that this is the appropriate class of goods.
We agree that applicant’s definition is sufficiently
definite to serve as the identification of the genus of
applicant’s goods for purposes of our genericness analysis
in this case.
Next, we must determine the relevant public for
applicant’s goods. Contrary to applicant’s assertion that
the relevant public for its goods consists only of medical
doctors, and in particular, podiatrists, we find the
relevant public also includes the general public. While
physicians/podiatrists may recommend the use of applicant’s
product to their patients, and even assuming that
applicant’s orthopedic splints may only be obtained from a
physician/podiatrist, the general public is still the
ultimate consumer and, thus, included in the relevant
public. Moreover, the evidence of record shows that
applicant’s orthopedic splints sold under the designation
DORSAL NIGHT SPLINT are available for purchase by the
general public via the Internet at (www.alimed.com) and
(www.drnelsonclinic.com).
Ser No. 78349181

12
We next must determine whether the relevant public
understands DORSAL NIGHT SPLINT to refer to the genus of
goods at issue. See H. Marvin Ginn, supra. We note,
first, that the dictionary definition of “dorsal” quoted
previously is “… [o]f, toward, on, in or near the back of
the upper surface of an organ.” We find this definition
applies to and names the part of the foot and ankle on
which applicant’s orthopedic splints are worn. Indeed, the
Internet evidence shows that “dorsal” is also used to refer
to the upper surface area of the foot. Therefore, “dorsal”
is a generic term for applicant’s type of orthopedic
splint, or any other orthopedic splint that would be used
on that surface of the foot.
We also note that the previously quoted dictionary
definition of “night” includes “[i]ntended for use at
night.” We find this definition directly applies to the
“worn while sleeping” aspect of applicant’s goods and is,
therefore, generic for applicant’s type of orthopedic
splint.
Further, we note that the previously quoted dictionary
definition of “splint” is “[a] rigid device used to prevent
motion of a joint or of the ends of a fractured bone.” We
find this word names applicant’s goods.
Ser No. 78349181

13
Moreover, during the prosecution of the application,
applicant admitted that the term “NIGHT SPLINT” is generic
in relation to its goods. (Applicant’s Request for
Reconsideration at p. 16).
In addition to finding that each of the words DORSAL,
NIGHT and SPLINT and the term NIGHT SPLINT are generic as
applied to the genus of goods at issue, we also find, as we
must under American Fertility, supra, that the phrase
DORSAL NIGHT SPLINT, as a whole, is generic for the goods.
The two Nexis excerpts and the eight Internet excerpts
previously quoted show that orthopedic splints for the foot
and ankle worn while sleeping are referred to generically
as “dorsal night splints.” Contrary to applicant’s
assertion, we find the quoted excerpts sufficient to
establish that the phrase DORSAL NIGHT SPLINT, as a whole,
is generic for applicant’s orthopedic splints for the foot
and ankle worn while sleeping.
Applicant has failed to introduce evidence to rebut
the examining attorney’s evidence of genericness. Instead,
applicant merely argues that when each item of evidence is
viewed in context, they do not establish genericness. We
disagree.
Applicant argues that several of the cited references
to “Dorsal Night Splint” refer to applicant’s product.
Ser No. 78349181

14
While that may be true, the designation DORSAL NIGHT SPLINT
primarily has been used in those excerpts in a generic
manner to identify applicant’s type of goods and not the
source of such goods. Further, where one could arguably
point to a mixed use of DORSAL NIGHT SPLINT (i.e., the
second excerpt from podiatrynetwork.com; and the excerpts
from drnelsonclinic.com, medco-athletics.com and
applicant’s website), the designation appears with other
source indicating matter, e.g., “A-Force,” “Alimed,” and
“Active Ankle.” As such, the relevant public will not
readily perceive DORSAL NIGHT SPLINT, in and of itself, as
source indicating, and is more likely to rely on the other
matter as indicating source.
We also are not persuaded that the evidence is somehow
lacking because only one medical professional used the
designation in a generic manner without a direct reference
to applicant. As indicated earlier in this decision, the
relevant public includes the general public. See In re
American Institute of Certified Public Accountants, 65
USPQ2d 1972 (TTAB 2003) (The term "CPA Examination" held
generic notwithstanding that some members of the relevant
public appeared to associate the term with applicant.).
Further, while applicant asserts that the other reference
by a medical professional was in regard to applicant’s
Ser No. 78349181

15
goods, there is no actual reference in the excerpt to
applicant and the designation DORSAL NIGHT SPLINT was used
by that professional in a generic manner.
Moreover, the evidence shows that three of applicant’s
competitors use the designation “dorsal night splint” in a
generic manner.
The manner in which the designation DORSAL NIGHT
SPLINT appears on the specimens of record bolsters our
finding that the designation is not capable of identifying
the source of applicant’s products. In particular, we note
that the applied-for-mark is used on the product inserts as
follows:

In the phrase, “Tips for getting the greatest benefits from
your new Dorsal Night Splint,” “Dorsal Night Splint” is
used as the generic name of the product. Further, because
the letters “DNS” appear above DORSAL NIGHT SPLINT in a
larger typeface and with an integral design of a crescent
moon and star, the letters “DNS” would be perceived as
Ser No. 78349181

16
indicating the source of applicant’s dorsal night splints.4
This is so despite applicant’s use of the barely noticeable
“TM” symbol in connection with the second use of DORSAL
NIGHT SPLINT.5
Similarly, as noted above, the record shows that
applicant’s goods are sold under the designation “A-Force
Dorsal Night Splint,” with the term “A-Force” prominently
displayed on the splints themselves. Such usage by
applicant diminishes any possible source-identifying
significance of the designation DORSAL NIGHT SPLINT.
In this case, the evidence of record establishes the
genericness of DORSAL NIGHT SPLINT as applied to
applicant’s orthopedic splints for use on the foot and
ankle. Even if applicant was the first and/or sole user of
a generic term or phrase, as it claims, that does not
entitle applicant to register such a term or phrase as a
mark. See In re National Shooting Sports Foundation, Inc.,
219 USPQ 1019 (TTAB 1983). Moreover, while other terms
such as “Night Splint,” “Plantar Fasciitis Night Splint,”

4 We hasten to add that we are not making a ruling as to whether
the letters “DNS” are, or are not, generic for applicant’s
products.

5 The presence of the letters “TM” cannot transform an otherwise
unregistrable designation into a mark. In re Remington Products
Inc., 3 USPQ2d 1714 (TTAB 1714); In re Anchor Hocking Corp., 223
USPQ 85 (TTAB 1985); and In re Minnetonka, Inc., 212 USPQ 772
(TTAB 1981).
Ser No. 78349181

17
“Night Passive Splint,” and “Night Foot Splint” may be used
to identify applicant’s type of product, it is well settled
that there can be more than one term to name a product.
Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc.,
299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962). See also: In
re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA
1970)(Rich, J., concurring)[“All of the generic names for a
product belong in the public domain.”](emphasis in
original).
We therefore find that the designation DORSAL NIGHT
SPLINT is generic and incapable of distinguishing
applicant’s goods, and that it therefore is not registrable
on the Supplemental Register.
Decision: The refusal of registration on the
Supplemental Register is affirmed.