Alveologic, LLC

Trademark Trial and Appeal Board

Apr 29, 2013

No. 85306948 (T.T.A.B. Apr. 29, 2013)

Mailed:
April 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alveologic, LLC
________

Serial No. 85306948
_______

Sherry Flax of Saul Ewing LLP for Alveologic, LLC.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Kuhlke and Masiello, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Alveologic, LLC (applicant) seeks registration on the
Principal Register of the mark MICROPERFORATION (in
standard character form) for goods and services identified
in the application as “Dental and medical drill bits for
cutting teeth or bone; Dental instruments, namely, dental
root files used in root canal therapy procedures; Dental
instruments, namely, root canal therapy instruments used to
shave the inside of a root canal; Drilling jigs for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85306948
2
surgical and dental applications; Drills for dental
applications; Drills for dental use; Orthodontic
appliances; Orthodontic machines and instruments; Surgical
apparatus and instruments for medical, dental or veterinary
use,” in Class 10, and “Dental services, namely, performing
restorative and cosmetic procedures; Oral surgery and
dental implant services; Orthodontic services,” in Class
44.
1

The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark, on the ground that it
is merely descriptive of the goods and services identified
in the application. See Trademark Act Section 2(e)(1), 15
U.S.C. §1052(e)(1). Applicant has appealed the final
refusal.
After careful consideration of all of the evidence of
record and the arguments of counsel, we AFFIRM the Section
2(e)(1) refusal as to both Class 10 and Class 44.
Trademark Act Section 2(e)(1) prohibits registration
on the Principal Register of a mark which “when used on or
in connection with the goods [and/or services] of the
applicant is merely descriptive or deceptively
misdescriptive of them....”

1
Serial No. 85306982, filed on April 28, 2011. The application
is based on applicant’s allegation of a bona fide intention to
Ser. No. 85306948
3
Considering the evidence of record and the arguments
raised by counsel in this case, we find that the following
well-settled legal principles are especially pertinent to
our mere descriptiveness analysis in this case.
To be refused registration as merely descriptive, the
mark in question need not describe all of the goods and/or
services identified in each of the classes in the
application; it need only be merely descriptive of one of
them in each class. See In re Chamber of Commerce of the
United States of America, 675 F.3d 1297, 1300, 102 USPQ2d
1217, 1219 (Fed. Cir. 2012); In re Stereotaxis Inc., 429
F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
A term is considered to be merely descriptive 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, supra, 102
USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d
960, 963, 82 USPQ2d 1828 (Fed. Cir. 2007); In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). “On the
other hand, if one must exercise mature thought or follow a
multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the

use the mark in commerce, pursuant to Trademark Act Section 1(b),
15 U.S.C. § 1051(b).
Ser. No. 85306948
4
term is suggestive rather than merely descriptive.” In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978);
see also In re Shutts, 217 USPQ 363 (TTAB 1983).
It is not necessary that the term describe all of the
purposes, functions, characteristics or features of the
goods or services to be deemed merely descriptive; it is
enough if the term describes one significant function,
attribute, or property. See In re Chamber of Commerce,
supra, 102 USPQ2d at 1219.
The determination of whether a term is merely
descriptive must be made in relation to the goods or
services for which registration is sought, not in the
abstract. See id. Thus, the question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them. In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The fact that a term may have different meanings in other
contexts is not controlling on the question of whether the
term is merely descriptive of the applicant’s goods or
services at issue. See In re IP Carrier Consulting Group,
84 USPQ2d 1028, 1034 (TTAB 2007).
Ser. No. 85306948
5
The fact that a term is not found in a dictionary is
not determinative on the question of mere descriptiveness.
See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987); In re Zanova Inc., 59 USPQ2d 1300, 1305
(TTAB 2001); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977). Likewise, the fact that the applicant may be the
first and/or only user of the term is not determinative if
the only significance conveyed by the term in relation to
the goods and/or services is merely descriptive. See In re
Zanova Inc., supra, 59 USPQ2d at 1305.
When two or more descriptive terms are combined, the
determination of whether the composite mark also has a
descriptive significance depends on whether the combination
of terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods and/or services, the combination
results in a composite that is itself merely descriptive.
See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd.,
___ F.3d ___, 103 USPQ2d 1753 (Fed. Cir. 2012); In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed.
Cir. 2004); In re IP Carrier Consulting Group, supra; In re
Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002). However, if
the combination of the descriptive terms creates a
composite which is unique, incongruous or otherwise
Ser. No. 85306948
6
inherently distinctive as applied to the goods and/or
services, then the composite mark will not be found to be
merely descriptive. See In re Shutts, supra; In re Tennis
in the Round, Inc., supra.
In this opinion, we first shall address the mere
descriptiveness refusal as to applicant’s Class 10 goods,
and then the refusal as to applicant’s Class 44 services.

Class 10 Goods.
We find that the mark applicant seeks to register,
MICROPERFORATION, is a composite designation consisting of
two merely descriptive terms, i.e., “micro” and
“perforation.”
The record establishes that “micro” is defined as
“very small”
2
and “anything extremely small in scope or
capability.”
3
The record also establishes that
“perforation” is defined as “the act or process of
perforating” and/or as “a hole or pattern made by or as if
by piercing or boring.”
4

Applicant’s goods as identified include “dental and
medical drill bits for cutting teeth or bone,” “drilling

2
Merriam-Webster.com. (August 16, 2011 Office action.)

3
Dictionary.com Unabridged, based on the Random House Dictionary
(2012) (April 27, 2012 Request for reconsideration.)

Ser. No. 85306948
7
jigs for surgical and dental applications,” and “drills for
dental use.” We find that drills, drill bits and drill
jigs, by their nature and as comprised in applicant’s
goods, are used to “perforate,” i.e., to create “a hole or
pattern made by or as if by piercing or boring.”
We also find that the combination of “perforation”
with the prefix “micro-” creates a composite,
MICROPERFORATION, which itself is neither unique nor
incongruous, but rather is merely descriptive. The term,
as applied to applicant’s goods, immediately and directly
conveys to relevant purchasers the information that the
goods comprise drills which are used in medical, surgical
and dental procedures to drill or perforate very small
holes in teeth or bone. Applicant’s product brochure shows
that applicant’s drills may be used to perforate holes in
bone at depths of 0 mm to 6 mm.
Also, the record includes evidence which establishes
that “microperforation” is a term of art in the medical,
surgical and dental fields which is used to describe the
perforation of small holes in bone or teeth. This evidence
includes the following (emphasis added).

4
Merriam-Webster.com. (August 16, 2011 Office action.)
Ser. No. 85306948
8
An article from the Journal “Techniques in Knee
Surgery” (Sept. 2002)
5
entitled “Medial Collateral
Ligament Healing Response Technique:
Microperforation,” with the following text: “The
current surgical options that address laxity on the
medial side of the knee require significant surgical
exposure and mobilization of the tissues.
Alternatively, the MCL healing response technique –
microperforation - reestablishes an acute biologic
healing environment for the chronically injured
MCL.”

A page from the website of Los Angeles Orthopaedic
Institute, “The Cartilage Restoration Center,”
6
with
the following text: “Arthroscopic microperforation
restores articular cartilage to the knee and
shoulder. Multiple openings in the bone marrow
stimulate the growth of new cartilage by creating a
new blood supply. The new cartilage serves as a
shock absorber for the joints. When the articular
cartilage loss is too large to be treated by
microperforation, an alternative treatment program
may be used.”

Book entitled “Spinal Deformities: the Comprehensive
Text.”
7
Selected text: “This partially
demineralized femoral bone has been found to have
osteoinductive properties with the microperforation
to provide multiple sites for stimulation of the
undifferentiated mesnchymal cells to form cartilage
and bone-producing cells.”

Paper from The Preliminary Program for
IADR/AADR/CADR 87
th
General Session and Exhibition
(2009)
8
, entitled “New method for intrinsic tooth
whitening using laser microperforation.”

5
At http://journals.lww.com/techknee. (August 16, 2011 Office
action.)

6
At http://laortho.org. (August 16, 2011 Office action.)

7
(Nov. 5, 2011 Final Office action.)

8
At http://confex.com. (August 16, 2011 Office action.)

Ser. No. 85306948
9
Patent Application 20100015576:
9
Title: Method and
apparatus for diagnostic and treatment using hard
tissue or material microperforation. Selected text:
“A method of modifying, treating or diagnosing of
biological tissue by microperforating hard tissue…”
“A device for microperforating incisions with a
diameter from a range of 0.001 mm to 0.5 mm and an
aspect ratio from a range of 1 to 100 times hard
biological tissue…”
“The target area of the site to be
microperforated can be marked in advance and then a
video camera or reflectivity sensor combined with
the handpiece can be used to initiate the laser
operation when the tip is pointing to the target.”
“Selective delivery of a substance into the
apical area can be performed by microperforation
with a laser, through the attached gum, and then
through the bone into the root apex area. Selective
delivery into the periodontal area can be performed
by laser microperforation of the free gum into the
periodontum, or into the epithelial attachment.
Alternative selective delivery into the periodontal
area can be performed by laser microperforation of
the attached gum and bone.”
“Dental Whitening”: “The inventors performed
theoretical and experimental evaluation of internal
dental bleaching by introduction of peroxide or a
similar material into the laser microperforated
incisions.”

We find that this evidence showing clear use of
“microperforation” as a term of art in connection with
medical, surgical and dental procedures involving bone or
teeth establishes the mere descriptiveness of the term as
applied to applicant’s goods.
Applicant has submitted TESS printouts of third-party
registrations of MICRO-formative marks which apparently

9
From www.freepatentsonline.com. (Nov. 5, 2011 Final Office
action.)
Ser. No. 85306948
10
were found by the Office to be inherently distinctive and
thus registrable on the Principal Register. Applicant
argues that its mark, as well, should be found to be
inherently distinctive and registrable on the Principal
Register. However, it is settled that the registrability
of applicant’s mark must be determined based on the
evidence of record in this case, and that the existence on
the Register of other marks which might share some of the
same characteristics as applicant’s mark is not
dispositive. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001); In re theDot
Communications Network LLC, 101 USPQ2d 1062 (TTAB 2011); In
re Finisar Corp., supra, 78 USPQ2d at 1621-22.
10

For the reasons discussed above, we find that the
record in this case, including the dictionary evidence and
the Internet evidence of use of “microperforation” as a
term of art in the field, clearly establishes the mere
descriptiveness of MICROPERFORATION as applied to the goods
identified in applicant’s application. We have carefully
considered all of applicant’s arguments to the contrary

10
Moreover, in response to the several third-party
registrations submitted by applicant, the Trademark Examining
Attorney has submitted many more TESS printouts of third-party
registrations of “micro”-formative marks where “micro” has
been found to lack inherent distinctiveness, having been
registered on the Supplemental Register, pursuant to Section
2(f), or with a disclaimer of the MICRO element of the mark.
Ser. No. 85306948
11
(including any arguments not specifically addressed in this
opinion), but we find them to be unpersuasive.
Accordingly, we affirm the Section 2(e)(1) refusal to
register applicant’s mark in Class 10.

Class 44 Services.
Applicant also seeks registration of its mark for
Class 44 services identified in the application as “Dental
services, namely, performing restorative and cosmetic
procedures; Oral surgery and dental implant services;
Orthodontic services.”
For the same reasons as those discussed above in
connection with Class 10, we find that the evidence of
record establishes that “micro” and “perforation” are
merely descriptive of applicant’s services, and that the
combination of the merely descriptive terms “micro” and
“perforation” into the composite designation
MICROPERFORATION does not negate the mere descriptiveness
of each of those terms, nor does it create a unique,
incongruous, or otherwise inherently distinctive mark as
applied to applicant’s services, which utilize the
technique of microperforation.
We also find that the Trademark Examining Attorney’s
Internet evidence, showing that “microperforation” is a
Ser. No. 85306948
12
term of art in the dental, medical and surgical field,
including in the field of cosmetic dentistry, establishes
that the term is merely descriptive of applicant’s
services.
Based on this evidence, we find that MICROPERFORATION
is merely descriptive of applicant’s Class 44 services. We
have carefully considered applicant’s arguments to the
contrary (including any arguments not specifically
addressed in this opinion), but we are not persuaded by
them. We therefore affirm the Section 2(e)(1) refusal as
to Class 44.

Decision: The Section 2(e)(1) refusal as to Class 10
is affirmed. The Section 2(e)1) refusal as to Class 44
likewise is affirmed.