California Ultrasound, Inc.

Trademark Trial and Appeal Board

Feb 21, 2002

No. 75809046 (T.T.A.B. Feb. 21, 2002)

2/12/02 Paper No. 13
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re California Ultrasound, Inc.
________

Serial No. 75/809,046
_______

James C. Wray, Esq. for California Ultrasound, Inc.

Marlene D. Bell, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hanak, Hohein and Rogers, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

California Ultrasound, Inc. has filed an application
to register the phrase "WELLNESS THROUGH ULTRASOUND SCREENING"
for "medical testing and screening services, namely providing
ultrasound screening services."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the

1 Ser. No. 75/809,046, filed on September 27, 1999, which alleges a
date of first anywhere and first use in commerce of December 7, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/809,046
2
basis that, when used in connection with applicant's services,
the phrase "WELLNESS THROUGH ULTRASOUND SCREENING" is merely
descriptive of them.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a phrase or term is considered
to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it forthwith
conveys information concerning any significant ingredient,
quality, characteristic, feature, function, purpose or use of
the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is
not necessary that a phrase or term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the phrase or term describes a significant
attribute or idea about them. Moreover, whether a phrase or
term is merely descriptive is determined not in the abstract but
in relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with those goods or services and the possible

Ser. No. 75/809,046
3
significance that the phrase or term would have to the average
purchaser of the goods or services because of the manner of its
use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Thus, "[w]hether consumers could guess what the product
[or service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
Applicant, citing "McCarthy on Trademarks, Section
11.10(1)," for the proposition that "[t]he combination of two or
more admittedly descriptive elements as a composite mark may
result in a composite which is non-descriptive," contends that
the phrase "WELLNESS THROUGH ULTRASOUND SCREENING," when
considered as a whole, is suggestive of its ultrasound screening
services rather than merely descriptive thereof. Noting, in
particular, that none of the two searches of the "LEXIS/NEXIS"
database conducted by the Examining Attorney revealed use "in
any way by anyone" of the phrase "WELLNESS THROUGH ULTRASOUND
SCREENING," applicant asserts that:
Nonuse of the mark by competitors is an
indication that the mark is not descriptive
because competitors do not need to use the
mark in advertising their competing
products. Thus, lack of use of Applicant's
mark by competitors shows that Applicant's
mark is suggestive of the qualities and
characteristics of the services, not merely
descriptive.

Ser. No. 75/809,046
4
Applicant likewise argues that "[t]he evidence of
record (applicant's specimens, dictionary definitions and Nexis
stories) simply does not establish that the mark, when
considered in its entirety, is merely descriptive given the
absence of any evidence that "others in the relevant field have
used or would need to use the four-word combination WELLNESS
THROUGH ULTRASOUND SCREENING to describe their services." Any
doubt as to whether such phrase is merely descriptive or
suggestive of its ultrasound screening services, applicant
insists, should be resolved in its favor by "allowing
publication of the mark so that any third-party may file an
opposition to develop a more comprehensive record. See In re
Atavio, 25 USPQ2d 1361 (TTAB 1992)."
The Examining Attorney, on the other hand, maintains
that the phrase "WELLNESS THROUGH ULTRASOUND SCREENING" merely
describes "a feature and/or the purpose of the applicant's
services." Specifically, she contends that:
Here, the applicant provides ultrasound
screening, which is a test used to detect
the presence of disease or infection, as a
method of medical testing and screening
services, to determine an individual's
physical health and/or wellness. As such,
the proposed mark is not suggestive as the
applicant contends but is instead merely
descriptive of the applicant's services.

In support of her position, the Examining Attorney has
made of record the following relevant definitions from The
Ser. No. 75/809,046
5
American Heritage Dictionary of the English Language (3rd ed.
1992):
"wellness," which is defined as a noun
meaning "[t]he condition of good physical
and mental health, especially when
maintained by proper diet, exercise, and
habits";

"through," which is listed as a
preposition signifying, inter alia, "[b]y
way of: climbed in through the window";

"ultrasound," which is set forth as a
noun connoting, in "Medicine," "[t]he use of
ultrasonic waves for diagnostic or
therapeutic purposes, specifically to
visualize an internal body structure,
monitor a developing fetus, or generate
localized deep heat to the tissues," with
such term as an attributive noun being
"[o]ften used to modify another noun:
ultrasound pictures; ultrasound waves; an
ultrasound test"; and

"screening," which is defined as a verb
meaning "[t]o test or examine for the
presence of disease or infection: screen
blood for the presence of a virus; screen
patients in an epidemic zone."

In addition, the Examining Attorney has made of record
excerpts from her searches of the "LEXIS/NEXIS" database, the
most pertinent of which are as follows (emphasis added):
"Five cases of osteoporosis were
uncovered, while 17 people were alerted to
blood circulation problems found in the
ankle brachial ultrasound screening." --
Sarasota Herald-Tribune, November 20, 1999;

"Doppler ultrasound screenings will be
among the activities at the grand opening of
Rosalind Hall's Downtown Fitness Center
Ser. No. 75/809,046
6
...." -- Fort Pierce News, November 12,
1999;

"There will be a free ultrasound
screening for osteoporosis" -- Times-
Picayune, October 21, 1999;

"Chiropractor Jim Wagner recently
opened the center, providing ... ultrasound,
... X-rays and wellness classes." -- The
Capital (Annapolis, MD), April 20, 1997; and

"The center ... will provide outpatient
medical services by family and specialty
physicians, including ultrasound,
electrocardiograms and health screening and
wellness programs." -- Asbury Park Press
(Neptune, NJ), November 19, 1996;

"Dr. Jason Birnholz used an ultrasound
machine to save J.J Howard's twins after a
life-threatening tumor was discovered. He
said ultrasound serves as a "wellness check"
for millions of couples each year." --
Chicago Sun-Times, April 9, 1995; and

"The center would provide outpatient
laboratory services, stress testing,
ultrasound, mammography, basic radiology,
wellness services and outpatient
rehabilitation services ...." -- Atlanta
Journal & Constitution, June 15, 1993.

According to the Examining Attorney, the above
evidence confirms that applicant "has merely put together the
descriptive terms WELLNESS, THROUGH, ULTRASOUND and SCREENING to
create its mark." While acknowledging that "[a] mark that
combines descriptive terms may be registrable if the composite
creates a ... separate, nondescriptive meaning,"2 the Examining

2 See, e.g., In re Ampco Foods, Inc., 227 USPQ 331, 333 (TTAB 1985).
Ser. No. 75/809,046
7
Attorney urges that, "i[n] this case, the combination of
WELLNESS THROUGH ULTRASOUND SCREENING does not lend itself to
any other meaning or significance other than identifying a
feature and/or purpose of the Applicant's services." The
Examining Attorney points out, in this regard, that "[n]o novel
spellings or unique juxtapositions are apparent in the mark to
support a finding of a nondescriptive or suggestive meaning."
Furthermore, the Examining Attorney correctly notes
that, while the registrability of a phrase or term "created by
combining two or more unregistrable words depends on whether in
combination, a new and different commercial impression is
created, and/or the [phrase or] term so created imparts a
bizarre or incongruous meaning as used in connection with the
goods [or services],"3 she maintains that such is clearly not the
case here. She consequently concludes that the phrase "WELLNESS
THROUGH ULTRASOUND SCREENING" is merely descriptive of
applicant's ultrasound screening services.
In the present case, we agree with the Examining
Attorney that, when used in connection with applicant's "medical
testing and screening services, namely providing ultrasound
screening services," the phrase "WELLNESS THROUGH ULTRASOUND
SCREENING" immediately describes, without conjecture or

Ser. No. 75/809,046
8
speculation, significant information concerning a feature or
purpose of such services, namely, that they are designed to
achieve for the users thereof the state of wellness through
ultrasound screening. In addition to the dictionary definitions
and "LEXIS/NEXIS" excerpts noted above, which make clear that
the meaning of the individual terms which form the phrase
"WELLNESS THROUGH ULTRASOUND SCREENING" retain their ordinary
meaning when used in combination, applicant's specimens of use
of such phrase demonstrate the merely descriptive significance
thereof. The specimens, which consist of various pieces of
promotional literature, explain that applicant's services
provide "WELLNESS THROUGH ULTRASOUND SCREENING." Among other
things, its advertising states that "[w]e provide non-invasive,
completely painless screenings using the most advanced
Ultrasound and Doppler technology"; that applicant's "[g]oal is
to Screen At-Risk People in an Effort to Prevent Stroke and
Vascular Disease"; that as "SOUTHERN CALIFORNIA'S OLDEST AND
LARGEST SCREENING SERVICE," applicant provides "STROKE/CAROTID
VASCULAR SCREENING," an "ABDOMINAL AORTIC ANEURYSM (AAA)
SCREENING TEST," an "ANKLE BRACHIAL INDEX (ABI)" (which "test
screens for blocked leg arteries using blood pressure readings

3 See, e.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662
(TTAB 1988); and In re Metcal Inc., 1 USPQ2d 1334, 1336 (TTAB 1986).

Ser. No. 75/809,046
9
obtained with a hand held Doppler") and an "OSTEOPOROSIS
SCREENING TEST"; and that (bold in original):
For more information about these
PAINLESS AND NON-INVASIVE TESTS, ... CALL
TODAY and register for our next screening
event -- maintain your wellness through
ultrasound screening!

Plainly, when viewed in the context of applicant's
ultrasound medical testing and screening services, there is
nothing about the phrase "WELLNESS THROUGH ULTRASOUND SCREENING"
which, to purchasers and potential consumers thereof, is
ambiguous, incongruous or susceptible, perhaps, to any plausible
meaning other than immediately conveying information as to what
applicant's services provide for its customers. Nothing
requires the exercise of imagination, cogitation or mental
processing or the gathering of further information in order for
such customers to readily understand that wellness through
ultrasound screening is a principal feature or purpose of
applicant's services.
Finally, even if applicant, as it appears from the
lack on this record of any use of the phrase "WELLNESS THROUGH
ULTRASOUND SCREENING" by third parties, is the first to use such
phrase in connection with ultrasound screening services, that
fact does not justify registration thereof where, as here, the
phrase is merely descriptive of applicant's services. See,
e.g., In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ
Ser. No. 75/809,046
10
505, 507 (CCPA 1980) at n. 8; and In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983).
Accordingly, because the phrase "WELLNESS THROUGH
ULTRASOUND SCREENING" conveys forthwith significant information
concerning a feature or purpose of applicant's "medical testing
and screening services, namely providing ultrasound screening
services," it is merely descriptive thereof within the meaning
of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.