Advanced Neuro-modulation Systems, Inc.

Trademark Trial and Appeal Board

Sep 14, 2006

No. 76588517 (T.T.A.B. Sep. 14, 2006)

Mailed:
September 14, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Advanced Neuromodulation Systems, Inc.
________

Serial No. 76588517
_______

Michele P. Schwartz of Andrews Kurth LLP for Advanced
Neuromodulation Systems, Inc.

Dezmona J. Mizelle-Howard, Trademark Examining Attorney,
Law Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Advanced Neuromodulation Systems, Inc. seeks
registration on the Principal Register of the mark
ULTRACATH (in standard character format) for goods identified
in the application as “catheters” in International Class
10.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the

1 Application Serial No. 76588517 was filed on April 23, 2004
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76588517
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Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to applicant’s
identified goods, i.e., that the term “Ultracath”
immediately informs potential purchasers about a
characteristic of applicant’s goods.
Applicant and the Trademark Examining Attorney have
each filed a brief on the issues involved in this appeal,
but applicant did not request an oral hearing before the
Board. We reverse the refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes
or uses of the goods or services with which it is used or
is intended to be used. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) [GASBADGE
merely descriptive of a “gas monitoring badge”]. See also
In re MBNA America Bank N. A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA
CARD merely descriptive of “credit card services”]. The
Court found that a “mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
Serial No. 76588517
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or characteristic of the product or service”]. Hence, the
ultimate question before us is whether the term ULTRACATH
conveys information about a significant characteristic of
applicant’s goods with the immediacy and particularity
required by the Trademark Act.
On the other hand, a mark is suggestive, and therefore
registrable on the Principal Register without a showing of
acquired distinctiveness, if imagination, thought or
perception is required to reach a conclusion on the nature
of the goods or services. See In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987) [APPLE PIE merely descriptive
of potpourri mixture: “Whether a given mark is suggestive
or merely descriptive depends on whether the mark
‘immediately conveys … knowledge of the ingredients,
qualities, or characteristics of the goods … with which it
is used,’ or whether ‘imagination, thought, or perception
is required to reach a conclusion on the nature of the
goods.’” (citation omitted)].
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can
guess what applicant’s goods are after seeing applicant’s
Serial No. 76588517
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mark alone. In re Abcor, supra at 218 [“Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”]; In re Home Builders Association of
Greenville, 18 USPQ2d 1313
(TTAB 1990) [NEW HOME BUYER’S
GUIDE merely descriptive of
“real estate advertisement services”]; and In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) [APRICOT is
merely descriptive of apricot-scented dolls]. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the alleged mark in relation to
the goods or services for which registration is sought, the
context in which the mark is used, and the significance
that the mark is likely to have on the average purchaser
encountering the goods or services in the marketplace. See
In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) [the term
“first tier” describes a class of banks]; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
Serial No. 76588517
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VISUAL DESIGNER is merely descriptive of “computer programs
for controlling the acquisition of data from measurement
devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991) [MULTI-VIS is merely descriptive of “multiple
viscosity motor oil”]; In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986) [DESIGN GRAPHIX merely descriptive
of computer graphics programs]; and In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979) [COASTER-CARDS merely
descriptive of a coaster suitable for direct mailing].
The Trademark Examining Attorney herein argues:
… that the designation ULTRACATH, when used
in connection with “catheters” immediately,
and without conjecture or speculation,
describes a significant feature or
characteristic of applicant’s goods, namely,
a catheter that is beyond the ordinary or
normal. This mark is both descriptive and
laudatory.

Trademark Examining Attorney’s appeal brief, unnumbered pp.
5 – 6. As support for this position, the Trademark
Examining Attorney argues from a dictionary entry for the
word “ultra,” selecting “beyond the normal” as the most
relevant definition.
By contrast, applicant argues that this inventive
combination of the terms “ultra” and “cath” forms a unitary
mark that is either fanciful or, at worst, suggestive.
Serial No. 76588517
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Applicant also cites to In re WSI Corp., 1 USPQ2d 1570
(TTAB 1986) [SUPERSAT not merely descriptive for service of
collecting, formatting, analysis, and distribution of
meteorological information inasmuch as the Office had
failed to show purchaser recognition of the abbreviated
suffix “-SAT” for “satellite” given the nebulous
connotation for satellite in connection with the recited
services.] However, we find that applicant’s “–CATH”
suffix herein is different from the “-SAT” abbreviation.
Hence, WSI Corp. is distinguishable in that the root term
“-CATH” would be understood immediately as a common,
shortened form of the word “catheter” when used in
connection with applicant’s goods. In addition to
dictionary evidence, the third-party registrations that
applicant has placed into the record, discussed infra, also
make this point most clearly.
On the other hand, applicant argues that the position
of the Trademark Examining Attorney in finding ULTRACATH
to be merely descriptive is inconsistent with what the
United States Patent and Trademark Office has done in the
past with thirty-seven recited registrations having marks
where a variety of prefixes are combined with “-CATH.”
Serial No. 76588517
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Applicant summarizes its arguments, based on these third-
party registrations, as follows:
The Examining Attorney has argued that [in the
third-party registrations,] “-CATH” is paired
with non-descriptive wording. To the
contrary, these marks have [the term “-CATH”]
paired with descriptive terms. For example,
among the 25 marks registered between 1990 and
the present are the marks LUBRICATH for
catheters (Registration No. 1613687),
CARDIOCATH for thermodilution catheters for
measuring cardiac output (Registration No.
2463879), SPEEDICATH for catheters for
incontinence (Registration No. 2608545), and
SLIM-CATH for catheters (Registration No.
2518448). In the case of these recently
registered marks, the ending “-CATH” clearly
has been paired with readily or immediately
descriptive wording that describes
characteristics of the goods, whether the mark
directly describes the goods (“CARDIO” for a
catheter used for cardiac output) or
indirectly describes an attribute (SLIM-CATH
for a catheter that must be slim or narrow
though not described as such in the
registration). Moreover, the older registered
marks contain terms that were as descriptive
in the 1960’s and 1970’s as they are today;
e.g. ANGIOCATH registered in 1968, MINICATH
registered in 1968, QUIK-CATH registered in
1973, SELF-CATH registered in 1978. Terms such
as “ANGIO,” “MINI,” “QUIK” and “SELF” would
not have been deemed arbitrary or suggestive
when they were registered. In comparison to
these registered “-CATH” marks, the mark
ULTRACATH is not merely descriptive or
laudatory.

Applicant’s reply brief, pp. 1 – 2.
We have to agree with applicant that some of these
prefixes are at least as descriptive as the word “ultra” is
Serial No. 76588517
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in the instant case (e.g., prefixes such as LUBRI-, MICRO-,
UNI-, CARDIO-, FAST-, STERI-, CLEAN- and MINI- were
evidently not considered to be either laudatory or
descriptive, in their respective contexts). While each
case must be decided on the facts contained within that
record, it seems clear that this field is replete with
dozens of terms ending in “-CATH” that must be
characterized, at best, as being highly suggestive.
As applied to any type of goods, where the word
“ultra” falls on the continuum of distinctiveness is a
function of its context. For example, it should come as no
surprise that an expression like ULTRA PURE was held generic
when applied to biological interferons for medical use. In
re National Patent Development Corp., 231 USPQ 823 (TTAB
1986).
The Trademark Examining Attorney, in arguing that the
word “ULTRA has been consistently held as laudatory on the
Trademark Register,” placed into the record a variety of
composite marks in which the mark begins with an “ultra”
prefix, where this term is laudatorily descriptive inasmuch
as each of the composite marks is registered on the
Supplemental Register:
Serial No. 76588517
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ULTRA SHIELD for “ophthalmic lenses” in International
Class 9;2
ULTRA
ROASTER/BAKER
for “aluminum pans” in International Class
21;3
ULTRASPONGE for a “dry dusting/cleaning sponge” in
International Class 21;4
ULTRA BIBLE for “pre-recorded magnetic media in the
nature of CD ROMS featuring multiple Bible
versions, a collection of Biblical research
and reference works, computer games
programs, pre-record clip art, maps and
other information in the field of religion,
and containing interactive searching,
annotation and notepad software” in
International Class 9;5
ULTRA WIRELESS for “computer hardware and computer software
for wireless connectivity between computers,
peripherals and storage networking devices;
and instruction manuals packaged therewith”
in International Class 9;6
ULTRA QUIET for “massagers, namely, a foot bath
massager” in International Class 10;7

2 Registration No. 2092339 issued on the Supplemental
Register on August 26, 1997 claiming first use anywhere and first
use in commerce at least as early as January 15, 1997; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
3 Registration No. 2560729 issued on the Supplemental
Register on April 9, 2002, claiming first use anywhere and first
use in commerce at least as early as January 2000.
4 Registration No. 2584005 issued on the Supplemental
Register on June 18, 2002 claiming first use anywhere and first
use in commerce at least as early as May 2000.
5 Registration No. 2633714 issued on the Supplemental
Register on October 8, 2002, claiming first use anywhere and
first use in commerce at least as early as November 4, 2001.
6 Registration No. 2751505 issued on the Supplemental
Register on August 12, 2003, claiming first use anywhere and
first use in commerce at least as early as October 30, 2002.
7 Registration No. 2828705 issued on the Supplemental
Register on March 30, 2004, claiming first use anywhere and first
use in commerce at least as early as December 2001.
Serial No. 76588517
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ULTRA WEAVE for “cleaning rags; cloths for wiping,
cleaning or dusting; and polishing cloths”
in International Class 21; and
for “utility articles for cleaning purposes,
namely, dish cloths, kitchen towels,
cleaning towels, dusting towels, and
scrubbing towels” in International Class 24;8
ULTRA SPORT for “tires” in International Class 12;9
ULTRAHEAT for “heat guns” in International Class 11;10
ULTRASLIM for “electrical air filter and purifier for
domestic use” in International Class 11.11

On the other hand, in finding that ULTRA for “gasoline,
motor oil, automotive grease, general purpose grease,
machine grease and gear oil” would be likely to be confused
with ULTRA LUBE for “lubricating oils and greases,” and
for “chemicals-namely, engine oil additives, fuel additives,
radiator products and automatic transmission fluid,” the
Board volunteered in a footnote that “[w]e also recognize
that ‘ultra’ is a laudatorily suggestive word found in the

8 Registration No. 2885357 issued on the Supplemental
Register on September 14, 2004, claiming first use anywhere and
first use in commerce in International Class 21 at least as early
as May 15, 2002, and claiming first use anywhere in International
Class 24 at least as early as January 20, 2003 and first use in
commerce at least as early as March 2003.
9 Registration No. 2911843 issued on the Supplemental
Register on December 14, 2004, claiming first use anywhere and
first use in commerce at least as early as February 1, 2003.
10 Registration No. 2926056 issued on the Supplemental
Register on February 8, 2005, claiming first use anywhere and
first use in commerce at least as early as August 14, 2003.
11 Registration No. 2953853 issued on the Supplemental
Register on May 17, 2005, claiming first use anywhere and first
use in commerce at least as early as September 11, 2003.

Serial No. 76588517
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dictionary ….” In re Sunmarks Inc., 32 USPQ2d 1470, 1472
n.6 (TTAB 1994) [emphasis supplied].
As has often been stated, there is a thin line of
demarcation between a suggestive mark and a merely
descriptive one, with the determination of which category a
mark falls into frequently being a difficult matter
involving a good measure of subjective judgment. See In re
Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of
the Americas, 200 USPQ 57, 58 (TTAB 1978). The
distinction, furthermore, is often made on an intuitive
basis rather than as a result of precisely logical analysis
susceptible of articulation. See In re George Weston Ltd.,
228 USPQ 57, 58 (TTAB 1985).
After carefully considering the record before us in
this appeal in the context of the arguments presented by
both applicant and the Trademark Examining Attorney, we
find that the Trademark Examining Attorney has not
established that ULTRACATH would immediately and forthwith
convey significant information about applicant’s goods with
any specificity to prospective purchasers of catheters.
Other than asking us to extrapolate from a dictionary
entry, there is no evidence in the record demonstrating
that this term has descriptive significance in connection
Serial No. 76588517
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with catheters. Admittedly, this “inventive” (applicant’s
characterization) composite projects a vague but
unmistakable feeling of puffery. However, after the
exercise of considerable effort to relate the general
dictionary connotation to the involved goods, we find that
this composite mark belongs on the suggestive side of the
ledger. Even if a prospective purchaser should conclude
from the proposed mark that the involved catheter might be
“beyond the normal,” what information is being conveyed?
While the qualitative information conveyed by the word
“ultra” in the contest of ULTRA PURE for biological
interferons for medical use is precise and immediate, which
characteristic of the ULTRACATH catheter might be “beyond
the normal” is simply not clear.
The Trademark Examining Attorney has the burden of
proof on this issue, and any doubts we have must be
resolved in favor of the applicant. Inasmuch as the mere
definition of the word “ultra” submitted by the Trademark
Examining Attorney leaves us unsure that this term
describes a feature, function, characteristic or purpose of
the goods with which applicant intends to use it, we cannot
affirm the refusal to register under Section 2(e)(1) of the
Trademark Act.
Serial No. 76588517
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Of course, in the event that applicant’s competitors
need to use this term to describe their own products in
this field, they will be free to oppose registration to
applicant. If they could create a record that establishes
that this term has descriptive significance in connection
with these goods, such an opposition would be sustained.
Decision: The refusal to register under Section
2(e)(1) of the Lanham Act is hereby reversed.