Alveologic, LLC

Trademark Trial and Appeal Board

Mar 28, 2013

No. 85306982 (T.T.A.B. Mar. 28, 2013)

Mailed:
March 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alveologic, LLC
________

Serial No. 85306982
_______

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 OSTEOPERFORATION (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
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85306982
2
shave the inside of a root canal; Drilling jigs for
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 both the Class 10 goods and the
Class 44 services identified in the application. See
Trademark Act Section 2(e)(1), 15 U.S.C. §2052(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 to register 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

1 Serial No. 85306982, filed on April 28, 2011. The application
is based on applicant’s allegation of a bona fide intention to
use the mark in commerce, pursuant to Trademark Act Section 1(b),
15 U.S.C. §1051(b).

Ser. No. 85306982
3
in connection with the goods [and/or services] of the
applicant is merely descriptive or deceptively
misdescriptive of them....”
Considering the evidence of record and the arguments
raised by counsel, 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
Ser. No. 85306982
4
product or service characteristics the term indicates, the
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. 85306982
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. 85306982
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,
OSTEOPERFORATION, is a composite designation consisting of
two merely descriptive components, i.e., “osteo” and
“perforation.”
The record establishes that “osteo” is defined as “a
combining form meaning ‘bone,’ used in the formation of
compound words.”2 Applicant’s goods include goods
identified as “dental and medical drill bits for cutting
teeth or bone.” We find that “osteo” merely describes this
feature of applicant’s goods, i.e., that they are or may be
used for cutting bone.
Applicant contends and has presented evidence showing
that “osteo” also has significance in contexts other than

2 Random House Unabridged Dictionary (1997), at
dictionary.infoplease.com. (March 9, 2012 Final Office action.)
Ser. No. 85306982
7
those referring to “bone,” including its use in the term
“osteo-odonto-deratoprosthesis (“tooth-in-eye” disease) and
its use as the name of a flower, the “osteo,” a type of
daisy. However, as noted above, our mere descriptiveness
determination must be based on the significance of the term
in connection with applicant’s goods, not in the abstract.
Here, we find that “osteo” is merely descriptive of a
feature, characteristic or function of applicant’s goods,
which, inter alia, are specifically identified as being for
use in cutting bone.
The record also establishes that “perforation” is
defined as “The act of perforating or the state of being
perforated.”3 Applicant’s goods include “dental and medical
drill bits,” “drilling jigs for surgical and dental
applications,” and “drills for dental applications.” We
find that drills, drill bits and drill jigs, by their
nature and as comprised in applicant’s goods, are used in
connection with making holes, and “perforation” merely
describes this feature of applicant’s goods.
Next, we find that combination of these two merely
descriptive terms into the composite OSTEOPERFORATION does
not negate the mere descriptiveness of either of them, nor

3 Collins English Dictionary, at www.collinsdictionary .com.
March 9, 2012 Final Office action.)
Ser. No. 85306982
8
does it create a composite which is unique, incongruous or
otherwise inherently distinctive. Applicant’s goods, as
identified, are used, inter alia, for drilling holes into
bone, i.e., for bone perforation. The composite
designation OSTEOPERFORATION directly and merely describes
this feature and function of applicant’s goods.
In addition to the dictionary meanings of the merely
descriptive terms “osteo” and “perforation” and their
continuing mere descriptiveness after being combined into
OSTEOPERFORATION, the record establishes that
“osteoperforation” is a merely descriptive term of art in
the medical, dental and orthodontic fields. The evidence
submitted by the Trademark Examining Attorney includes the
following examples of what clearly is merely descriptive
usage of “osteoperforation” in the orthodontic field
(emphasis added):
Dr. Edmund Khoo (current orthodontic resident)
received the prestigious Charley Schultz Resident
Award, 1st Place Prize for Excellence in Clinical or
Basic Science Research, for his work “Cytokine
expression, bone remodeling and tooth movement in
response to osteoperforations.”4

After an osteoperforation procedure alveolar bone
releases rich deposits of calcium. In this
transient state, braces can move your teeth very

4 At www.orthodonticscientist.org. (Sept. 26, 2012 Denial of
Reconsideration.)

Ser. No. 85306982
9
quickly because the bone is softer and there is less
resistance to the force of the braces.5

Mani Alikhani, Asst. Professor of Orthodontics.
Expertise: Innovative approaches to accelerate
tooth remodeling and shorten the length of
orthodontic treatment time, including the use of
osteoperforation, or the creation of tiny holes
through the cortical surface of the bone without the
need for gingival flap therapy.” “... with his
colleague Dr. Cristina Teixeira, holds two patents,
one for their osteoperforation technique…”6

The present invention provides methods for moving a
tooth to a desired position within a patient’s mouth
using orthodontics including perforating tissue in
the oral cavity sufficient to induce an inflammatory
response. The perforations may be made in any area
of the maxilla or mandible, and any number of
perforations may be made that are preferably 0.5 to
1.5 mm diameter, and preferably 1 to 3mm deep. The
invention also provides a device that may be used in
conjunction with slow-speed rotary instruments or
with manual drivers for providing the perforations.
The device has a drill that makes the perforations
and a stop that prevents the drill from penetrating
the jaw bone beyond a predetermined depth. The
invention also provides a kit that supplies the
professional with the necessary components in a
sealed container to carry out the osteoperforations.
The kit may include hand held and rotary perforating
devices, anesthetic and a soft tissue punch. …
Study Design: … The randomization process used in
this study is stratified randomization. Group A
control patients will not receive any
osteoperforations and Group B experimental patients

5 MidAtlantic Fund Venture Investing website, at
midatlanticfund.com. (August 16, 2011 Office action.)

6 NYU College of Dentistry website, at
www.nyu.edu/dental/mediaexperts/braces. (Sept. 26, 2012 Denial
of Reconsideration.)

Ser. No. 85306982
10
will receive right side or left side
osteoperforations.”7

Applicant’s goods as identified also include
instruments for use in medical and surgical procedures
other than orthodontics. The Trademark Examining
Attorney has submitted Internet evidence showing merely
descriptive usage of “osteoperforation” as a term of art
in connection with the medical treatment of bone defects
and diseases in areas other than orthodontics:
The method of laser osteoperforation was
developed in experiment and then applied for
treatment of 508 patients with osteomyelitis, 51
patients with nonunion and pseudo-joint and 34
patients with different forms of
osteochondropathy. The clinical trial proved the
efficacy of laser osteoperforation for treatment
of both inflammatory and destructive bone
diseases.8

The clinical-morphological estimation of the
results of laser osteoperforation in treatment of
chronic osteomyelitis. … The method of laser
osteoperforation was approved in 135 patients
with chronic osteomyelitis. … The method is
minimally invasive and allows to considerably
shorten the terms of treatment and
rehabilitation.9

7 From Patent Application Number 20110065060, at Patentdocs
website, www.faqs.org/patents/app. (August 16, 2011 Office
action.)

8 From the website Adsabs.harvard.edu. (Sept. 26, 2012 Denial of
Reconsideration.)

9 From the PubMed.gov website for U.S. National Library of
Medicine/National Institutes of Health, at
www.ncbi.nim.nih.gov/pubmed. (August 16, 2011 Office action.)

Ser. No. 85306982
11
The underlying factor of the development of a
bone cyst is dysplasia of vessels filling the
bone-marrow canal and a concomitant dystrophic
process in the surrounding bone tissue. The
nonneoplastic nature of the cysts led to the
search for sparing methods of treatment, namely,
the puncture method. The administration of
demineralized bone shavings during therapeutic
puncture (after osteoperforation of the wall,
scraping off the fibrous membrane) produces good
results.10

We find that all of this Internet evidence showing
merely descriptive usage of the composite term
“osteoperforation” as a term of art in connection with
orthodontic and general medical surgical procedures
establishes the mere descriptiveness of the term as applied
to applicant’s goods.
Applicant has submitted TESS printouts of third-party
registrations of OSTEO-formative marks which apparently
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

10 “Mendeley” website, at www.mendely.com. (August 16, 2011
Office action.)
Ser. No. 85306982
12
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.
For the reasons discussed above, we find that the
record in this case, including the dictionary evidence and
the Internet evidence of use of “osteoperforation” as a
term of art in the field, clearly establishes the mere
descriptiveness of OSTEOPERFORATION as applied to the goods
identified in applicant’s application. We have carefully
considered all of applicant’s arguments to the contrary
(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.”
Ser. No. 85306982
13
For the same reasons as those discussed above in
connection with Class 10, we find that the dictionary
definitions of “osteo” and “perforation” and the Internet
evidence submitted by the Trademark Examining Attorney
establish the mere descriptiveness of each of those terms
as applied to applicant’s identified services. We also
find, again, that the combination of those merely
descriptive terms into the composite OSTEOPERFORATION does
not negate the mere descriptiveness of each of the terms,
nor does it create a unique, incongruous, or otherwise
inherently distinctive designation.
We also find that the Trademark Examining Attorney’s
Internet evidence, showing that “osteoperforation” is a
term of art in the orthodontics and surgical fields,
supports a finding that applicant’s mark is merely
descriptive of applicant’s services, which essentially
involve utilization of the technique of osteoperforation.
Based on this evidence, we find that OSTEOPERFORATION
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.
Ser. No. 85306982
14

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.