Dune Medical Devices Ltd.

Trademark Trial and Appeal Board

Mar 31, 2011

No. 77377330 (T.T.A.B. Mar. 31, 2011)

Mailed:
March 31, 2011
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dune Medical Devices Ltd.
________

Serial No. 77377330
_______

Gary D. Krugman, Jody H. Drake and Shahrzad Poormosleh of
Sughrue Mion, PLLC for Dune Medical Devices Ltd.

J. Brendan Regan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Bucher, Cataldo and Wolfson, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Dune Medical Devices Ltd. seeks registration on the
Principal Register of the mark MARGINPROBE (in standard
character format) for a “medical device, namely, a tissue
characterization device for use in surgical procedures” in
International Class 10.1
The Trademark Examining Attorney refused registration on
the ground that the term is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).

1 Application Serial No. 77377330 was filed on January 22, 2008
based upon applicant’s allegation of priority under Section 44(d) of
the Act based upon Israeli application No. 202736 filed on July 29,
2007.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77377330
- 2 -
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We reverse the refusal to register.
Applicant argues that even if the individual words “margin”
and “probe,” used in the context of the named goods, may convey
snippets of information, when the two are combined into a
composite term, the resulting designation is at worst,
suggestive. Applicant lists nine third-party registrations
where individual Trademark Examining Attorneys of the U.S.
Patent and Trademark Office in the past have evidently deemed “-
probe” formative marks (e.g., ones that are structured much like
applicant’s mark) to be inherently distinctive. Applicant also
points out that the involved mark was registered in Israel,
Korea, Japan and in the European Union. Finally, applicant
reminds us that any doubt on the issue of descriptiveness should
be resolved in favor of applicant, with the mark being published
for opposition so that any third party who believes it may be
damaged by the registration of applicant's mark can file an
opposition.
Applicant’s tissue characterization device
As described and pictured in this record, the involved
device is a system having several components. According to the
record, with this device (pictured herein), during the removal
Serial No. 77377330
- 3 -
of cancerous cell tissue like a breast lumpectomy, the surgeon
can apply the head of the probe to the excised tissue
in order to run a series of measurements on each
resection surface of the specimen, collecting
electromagnetic signature data on the
exposed surfaces of tissue. Applicant’s
proprietary system characterizes that signature and compares the
responses to an internal database of known signatures in healthy
and cancerous tissues. With an indication of cancerous cells at
the “margin” edges of the excised tissue, the surgeon can move
immediately to excise additional tissue. According to
applicant’s literature, this intraoperative assessment allows
the surgeon to balance the imperative towards aggressive
treatment with the desire to conserve tissue. This device helps
to detect “clean margins” – no cancer cells at multiple sites
along the surface of the removed tissue – during the surgical
procedure. Without such technology, if later a pathologist
discovers histologically that cancer is present at the border of
the specimen (a “positive margin”), patients will generally
require reoperation, with the attendant costs, emotional
distress and possible scarring.2

2 The Trademark Examining Attorney provided informative excerpts
for the record about applicant’s system from www.cbronline.com,
www.allbusiness.com and www.dotmed.com with the Office action of
September 22, 2009. In its responses to Office actions, applicant
also provided additional clarifying information for the Trademark
Examining Attorney.
Serial No. 77377330
- 4 -
“Merely descriptive” under Section 2(e)(1) of the Act
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. See 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 or
characteristic of the product or service.”]. Hence, the
ultimate question before us is whether the term MARGINPROBE
conveys information about a significant feature, function or
characteristic of applicant’s goods with the immediacy and
particularity required by the Trademark Act.
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
Serial No. 77377330
- 5 -
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.’”].
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 mark alone. In
re Abcor, 200 USPQ 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
is 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
Serial No. 77377330
- 6 -
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 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 descriptive of a coaster suitable for direct mailing].
The word “Probe”
Without a doubt, one of the primary components of the
MarginProbe system is a “probe.” The
actual tip of the probe (at right) is the
required interface between the excised
human tissue and the computerized
heart of the system. The external console component houses
applicant’s proprietary software that captures the signal,
compares it to the internal database and then characterizes the
Serial No. 77377330
- 7 -
specimen, reporting results on the high-resolution display. The
display provides a red (cancerous) or blue (healthy) indicator
for the surgeon. Without the probe, this system is inoperable.
The record supports the conclusion that the term “probe” is used
extensively as a noun in the treatment of breast cancer. Hence,
the word “probe” alone, when used as a noun, is descriptive of a
critical component of the involved system.
The word “Margin”
The word “margin” is also not an arbitrary designation in
the context of this system. As stated by applicant, “the word
‘margin’ has th[is] meaning: the distance between the tumor and
the resection surface, as defined by permanent pathology. A
margin has a numeric value in [millimeters].”
Applicant clarifies that a pathologist can later take the
excised tissue and provide a definite measurement of the
distance of tumor cells from the outer layer of cells on the
specimen. By contrast, in real time in the operating room, the
MarginProbe system provides only a binary indicator (blue or
red) on the condition of the tissue on the resection surface.
In fact, judging by the briefs in this case, it seems that
applicant and the Trademark Examining Attorney agree on all the
aforementioned, underlying facts of this case.3 In fact,

3 It seems there are two different way to discuss margins: either
as a measurement or in the binary – that is, positive or negative.
Serial No. 77377330
- 8 -
applicant concedes that “the separate terms “Margin” and “Probe”
may have individual meanings” in the context of these goods.
Where they disagree is the legal characterization of applicant’s
adopted source-indicator when these two arguably descriptive
terms are combined. The sole issue before us then, is whether
the composite mark also has a merely descriptive significance.
MarginProbe
The Trademark Examining Attorney argues that with this new
combination of terms, each component retains its merely
descriptive significance in relation to the goods and so the
combination results in a composite that is itself merely
descriptive, citing to a series of precedential cases.4 The

Depending upon the type of tumor, medical personnel may use one or
both ways of discussing it - but always the first question is positive
or negative. We should note at this point that whether the display of
the assessment device merely shows a picture of tissue on the
resection surface in contrasting blue and red colors, or if the
technology permitted a display of detailed measurements of any
positive margin to the nearest nanometer, is neither a relevant nor a
determinative factor in this decision.
4 In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006)
[THE BREATHABLE MATTRESS merely descriptive of “beds,
mattresses, box springs and pillows”]; In re Tower Tech, Inc.,
64 USPQ2d 1314 (TTAB 2002) [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; In re Sun Microsystems
Inc., 59 USPQ 1084 (TTAB 2001) [AGENTBEANS merely descriptive of
computer programs for use in developing and deploying application
programs]; In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996)
[FOOD & BEVERAGE ONLINE merely descriptive of news and information
services for the food processing industry]; In re Copytele, Inc., 31
USPQ2d 1540 (TTAB 1994) [SCREEN FAX PHONE merely descriptive of
facsimile terminals employing electrophoretic displays]; In re
Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) [OATNUT merely
descriptive of bread containing oats and hazelnuts], aff’d per
curiam, 928 F.2d 411 (Fed. Cir. 1991); and In re Associated Theatre
Serial No. 77377330
- 9 -
Trademark Examining Attorney initially determined that
“ … applicant’s device, insofar as it is a tumor detector, is by
that very fact a margin detector — in the form of a probe; thus,
a “margin-detecting probe.”
In response, applicant argues that prospective purchasers
would need to exercise mature thought or follow a multi-stage
reasoning process in order to determine what product
characteristics the term indicates, and hence that the term is
suggestive rather than merely descriptive.
Applicant argues that: “The combination ‘margin probe’ has
no meaning or usage in the industry (in the context of
lumpectomy procedures) or in the medical devices industry. The
term ‘probe the margin’ has no meaning and is never used in the
industry in the context of lumpectomy procedures or in the
medical devices industry.”5 Indeed, there is no indication in
the record that anyone else in the field of surgical
lumpectomies or in the medical devices industry uses the
combination “margin probe.”
The initial queries of the Trademark Examining Attorney do
highlight several possible connotations of the term “probe.” In
addition to the noun form discussed above, the word “probe” may
also be used as a verb, meaning “to examine or explore with a

Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) [GROUP SALES BOX OFFICE
merely descriptive of theater ticket sales services].
5 Applicant’s response to Office Action, March 17, 2010, at 1.
Serial No. 77377330
- 10 -
probe.”6 Applicant indicates that its product does not “probe
the margin” of cancerous cells, but is “pressed against [a]
freshly excised … specimen” in order to “detect the presence of
tumor cell clusters on these surfaces.”7 If indeed “probe the
margin” has no meaning, then relevant purchasers of applicant’s
product would be unlikely to immediately recognize the word
“probe” as a verb. This incongruity (i.e., that the device has
a probe, which does not probe) imparts applicant’s mark with a
non-descriptive, albeit highly suggestive, quality. See In re
Pennwalt Corporation, 173 USPQ 317, 318 (TTAB 1972) [holding
mark DRI-FOOT for an anti-perspirant deodorant for feet
registrable, as DRI-FOOT “is obviously not the usual or normal
manner in which the purpose of an anti-perspirant and deodorant
for the feet would be described”].
Whether the word “probe” is thought of as a noun or as a
verb in this context, we find that it follows uneasily
immediately behind the word “margin.” We agree with applicant
that the fact that there appears to be no competitive need to
use this term in describing similar goods is relevant to our
determination herein. See In re Shutts, 217 USPQ 363, 365 (TTAB
1983) [SNO-RAKE is not merely descriptive of a snow removal hand
tool, the head of which has a solid uninterrupted construction

6 THE RANDOM HOUSE DICTIONARY, 2011, taken from www.dictionary.com.
7 Applicant’s response to Office Action, March 17, 2010, at 1.
Serial No. 77377330
- 11 -
without prongs]; and In re Trek 2000 International, Ltd., 97
USPQ2d 1106, 1113 (TTAB 2010) [no competitors use THUMBDRIVE].
In response to the initial refusal, applicant clarified
that applicant’s “ … probe does not actually determine margins
or obtain margins. Rather, the probe assesses whether or not a
tissue is normal or abnormal for future potential measurement
and excision via lumpectomy.” With additional information, the
Trademark Examining Attorney reasoned that inasmuch as the real
time purpose of the probe in the operating room was “providing
margin information,” these two words when combined were still
merely descriptive.
We find that applicant’s device, as described herein, is a
medical device designed to detect abnormal human tissue. A
manufacturer or merchant of a competing device might need to use
the terms “cancer detector” or “tumor probe” to describe its
product. We concede that applicant’s mark conveys some meaning
concerning the product. While the composite term suggests the
function and characteristics of applicant’s medical device, we
are also struck by the vagueness8 or incompleteness9 of the

8 As a judge of this Board said more than twenty-five years ago:
“we agree with applicant that the term SPEEDI
BAKE only vaguely suggests a desirable
characteristic of frozen dough, namely, that it
quickly and easily may be baked into bread ….
[I]t is our view that SPEEDI BAKE falls within
the category of suggestive rather than
descriptive marks and that no disclaimer of the
term is necessary.” (emphasis supplied)
In re George Weston Limited, 228 USPQ 57, 58 (TTAB 1985).

Serial No. 77377330
- 12 -
combined term. That is, knowing well the descriptive meanings
of each of the words in the context of these goods, it has
understandably proven challenging for the Trademark Examining
Attorney to create congruity between the bare juxtaposition of
these two words and the function or characteristics of the
involved goods. Yes, the involved mark suggests cancer
detection using a portable probe. Yes, it suggests an
assessment device that provides information about the presence
of malignant tissue. But we find that given the syntax of the
combination of these two words, the term does not directly tell
consumers a characteristic or function of the goods – that is,
“it possesses redeeming features which raise doubt” about
refusing it registration under the terms of Section 2(e)(1). In
re Pennwalt Corp., 173 USPQ at 318 [the term DRI-FOOT is highly
suggestive of anti-perspirant deodorant for feet, but the

9 “ … [T]he meaning is not so direct, revealing or informative of
applicant's product as to be merely descriptive thereof. The
mark tells us that applicant's product comprises a blend of grape
and some type of berry juice. But which berry, strawberry,
boysenberry, raspberry, hip of the rose or perhaps cranberry? As
applicant states “a term which leaves so much unsaid is scarcely
merely descriptive.” Further, as stated by the court in Audio
Fidelity, Inc. v. London Records, Inc. [citation omitted]:
“The fact that a mark is suggestive and that persons in the
trade are capable of analyzing a mark and recognizing that
suggestion, does not render the mark descriptive.”
RJR Foods, Inc. v. Queen Spray Cranberries, Inc., 174 USPQ 244, 245-
46 (TTAB 1972) [GRAPE-BERRY for beverage consisting of concord
grape juice, some type of berry juice, water, and other ingredients
held not merely descriptive because the mark failed to indicate with
particularity which type of berry juice was in the beverage]
(emphasis supplied).

Serial No. 77377330
- 13 -
registration of DRI-FOOT could not preclude the use by
competitors of the ordinary descriptive phrase “keeps feet
dry”]. By analogy, competitors employing similar, advanced
technologies in the future would be able to use “margin
assessment probe” to describe similar products.
Hence, it is our view that the term MARGINPROBE is
suggestive of applicant’s medical device system. The combination
of “Margin” and “Probe” to form the mark “MarginProbe” suggests
some sort of device with a probe, and anyone trained in the field
of oncology might well suspect it has some relationship to the
specialized use of the word “margin” as a medical term of art.
Yet, applicant appears to have coined a somewhat nebulous term
whose meaning would not be grasped without some cogitation. That
is, when viewed in connection with applicant’s goods, we find
that MARGINPROBE does not immediately evoke a descriptive
function or characteristic of the product. Probes are an
integral part of many medical devices and also function as part
of composite marks therefore. Applicant confirms that the term
“margin” has never been inherently associated with tissue
characterization devices. The only evidence made of record by
the Trademark Examining Attorney consists of dictionary
definitions and information regarding applicant and its
product. The Trademark Examining Attorney has not made of
record any evidence that “margin probe” is used by anyone in the
industry, or that the term itself has a meaning beyond that
applied as a mark to applicant’s goods.
Serial No. 77377330
- 14 -
We should add that we do not find persuasive applicant’s
argument that the involved mark has been registered in Israel,
Korea, Japan and the European Union. As one can readily observe
from a review of the nuanced nature of the disagreements that
fill this record, the most able of English-speaking counselors
are challenged to defend the placement of the involved mark on
one side or the other of a most contentious but still subjective
line in U.S. trademark law.
We acknowledge that “positive margin detector,” “cancer
detector,” “tumor probe” or even “margin assessment probe” would
be merely descriptive of applicant’s goods, but that does not
make MARGINPROBE merely descriptive. In re Shop-Vac Corp., 219
USPQ 470, 471-472 (TTAB 1983) [WET/DRY BROOM suggestive for
domestic electric vacuum cleaners]. Under Section 2(e)(1) of
the Act, difficult fact patterns, such as this mark, involve
shades of gray but our determinations are necessarily reduced to
a binary decision. Hence, we recognize that the
suggestive/descriptive dichotomy requires the drawing of fine
lines based upon a good measure of subjective judgment where
reasonable persons may indeed differ. See In re Shutts,
217 USPQ at 365.
In view of the foregoing, we find that applicant’s mark
MARGINPROBE is suggestive, not merely descriptive, if used in
connection with this medical device. At the very least, we have
doubts about the “merely descriptive” character of MARGINPROBE,
Serial No. 77377330
- 15 -
and in determining whether a mark is merely descriptive, such
doubts are to be resolved in favor of applicant. In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). In such a case, it is the
practice of this Board to pass the application to publication.
See In re Gourmet Bakers Inc., 173 USPQ 565 (TTAB 1972). In
this way, anyone who believes that the term is, in fact, merely
descriptive, and that such a mark on the Principal Register will
hinder competition in this field, may oppose and present
evidence on this issue to the Board in the context of an
inter partes case.
Decision: The refusal to register under Section 2(e)(1) of
the Lanham Act is hereby reversed.