BrainLAB AG

Trademark Trial and Appeal Board

Jan 7, 2005

No. 78102336 (T.T.A.B. Jan. 7, 2005)

Mailing:
January 7, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re BrainLAB AG
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Serial Nos. 78102333 and 781023364
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Don W. Bulson of Renner, Otto, Boisselle & Sklar, LLP for
BrainLAB AG.
Marc J. Leipzig, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
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Before Seeherman, Bottorff and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
In separate applications, BrainLAB AG has applied to
register the marks "CardioSUITE" and "BrainSUITE,"
respectively. Each application was based on applicant's
stated intention to use the specified mark in commerce, see
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), and
claimed a priority filing date because of applicant's
having previously filed a corresponding application to
register the specified mark for the identified goods and
This Opinion is Not
Citable as Precedent
of the TTAB
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services in the Federal Republic of Germany, see Section
44(d) of the Trademark Act, 15 U.S.C. § 1126(d).1
The involved applications each list a broad range of
products in Classes 9 and 10, as well as numerous services
in Class 42. During the course of examination of the
applications, applicant and the examining attorney agreed
on certain amendments to the identifications, to obviate
concerns of the examining attorney. Eventually, however,
the examining attorney issued a final action in each
application, requiring further amendments of the
identifications in classes 10 and 42 as a prerequisite to
approval of each mark for publication. Applicant further
amended the Class 42 identification in each application, as
required, but refused to adhere to all the examining
attorney's requirements for amendment of the Class 10
identifications. Accordingly, the examining attorney made
final a requirement for an acceptable identification in
Class 10, and applicant appealed.
1 The USPTO inferred a secondary basis for registration in the
United States, distinct from applicant's stated intention to use,
based on applicant's anticipated receipt of German registrations
for its marks. See Section 44(e) of the Trademark Act, 15 U.S.C.
§ 1126(e). Currently, each application is based on applicant
having obtained a registration for the specified mark in Germany;
applicant no longer asserts Section 1(b) as a separate basis.
Applicant has maintained its claim to a priority filing date in
each application.
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After considering applicant's appeal briefs, the
examining attorney further narrowed the Class 10
identification issues to be considered on appeal by
withdrawing certain requirements. At this point, only four
specific identification issues remained unresolved. Next,
applicant and the examining attorney negotiated
satisfactory amendments obviating three of the remaining
four issues. Thus, the only issue to be considered on
appeal, in regard to each application, is the propriety of
the examining attorney's requirement that applicant amend,
to make more definite, the phrase "electronic apparatus and
image presentation apparatus for medical purposes."
The issue is fully briefed. Applicant did not request
a hearing at which to present oral arguments.
Apart from explaining the policies behind the USPTO's
requirement for a certain degree of specificity in
identifications of goods, the examining attorney
essentially argues that the disputed language encompasses
both "electronic apparatus … for medical purposes" and
"…image presentation apparatus for medical purposes"; that
the former is so broad as to encompass goods as diverse as,
for example, heating pads, electronic heart rate monitors,
hearing aids, medical electrodes, massage apparatus, and
electrocardiographs; that the latter is so broad as to
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encompass, for example, x-ray apparatus, urological imaging
systems, electromagnetic medical diagnostic imaging
apparatus, and microscopes for operations; that the breadth
of these phrases and, in their combined form, the breadth
of the disputed phrase in the identification, encompasses
very expensive items and relatively inexpensive items; that
other examining attorneys searching the register for
appropriate citations under Section 2(d) of the Trademark
Act would have difficulty assessing the import of a
registration including the disputed language; and that a
registration including the disputed language would provide
little practical notice as to the nature of applicant's
goods.
Applicant argues that it has utilized virtually
identical language in three other registrations that it has
obtained from the USPTO; that the office has, therefore,
determined that this language is acceptable; that Trademark
Examination Note 98/1 requires only that an identification
be clear enough that a non-expert in trademarks or in
applicant's field understand "what the item… is," that it
allow for proper classification, and that it adequately
define the parameters of the goods; that the disputed
language meets these requirements; and that Trademark
Examination Guide No. 1-01 states that an examining
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attorney should, in assessing a proposed identification,
act consistently with treatment accorded companion
applications that have matured into registrations.
Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6),
provides that an application must include a "list of the
particular goods." Section 1402.03 of the Trademark Manual
of Examining Procedure (TMEP) explains that when broad
terms are used, they generally must be readily understood
as to the scope of products identified by the terms, or
such terms must identify a "homogeneous group" of products,
and that circumstances presented by a particular
application should justify the use of broad terms. In
addition, when an application is based on Section 44 of the
Trademark Act, as are the involved applications, the scope
of the identification may not exceed the scope of the
foreign registration on which the corresponding United
States application is based. Trademark Rule 2.32(a)(6);
see also, TMEP Section 1402.01(b) and Board decisions cited
therein.
We agree with the examining attorney that the phrase
"electronic apparatus and image presentation apparatus for
medical purposes" is too broad and indefinite. It does not
meet the requirement of Trademark Rule 2.32(a)(6) that
"particular" goods be specified in an application.
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Further, we do not find the phrase to readily identify a
cognizable "homogenous group" of products or to be such
that its scope would be readily understood. Finally, we do
not find the circumstances presented by the involved
applications to warrant use of such a broad phrase and,
instead, find the phrase to exceed the scope of the foreign
registrations on which the involved applications are based.
In regard to the last point, we note that applicant's
corresponding German registrations, as shown by the
translations provided by applicant, employ the language
"electrical and electronic apparatus and image-presenting
apparatus for medical purposes, in particular medical
and/or surgical robots, also for application with image-
guided localization systems for surgical purposes." We
find this language to limit applicant's "electronic
apparatus and image presentation apparatus" not just by the
phrase "for medical purposes" but rather, to limit such
goods to "medical and/or surgical robots" for use on their
own or "for application with image-guided localization
systems for surgical purposes."
Accordingly, we affirm the examining attorney's
refusal to approve applicant's marks for publication so
long as the application identifications include the phrase
"electronic apparatus and image presentation apparatus for
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medical purposes" in the Class 10 identifications. That
applicant may have obtained approval of other applications
including the same or virtually identical language is no
justification for allowing its use in the applications now
before us. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (Though uniformity of
standards used to assess applications is encouraged, each
application must be assessed on its own merits).
Following expiration of the time for applicant to file
an appeal from this decision, if no appeal is filed, then
the referenced phrase shall be deleted from the Class 10
identification and the mark will be forwarded for
publication.
Decision: The requirement of the examining attorney
for a revised identification of goods is affirmed.