No. 85959623 (T.T.A.B. Jan. 16, 2015)

MAKO Surgical Corporation

Trademark Trial and Appeal BoardJan 16, 2015

No. 85959623 (T.T.A.B. Jan. 16, 2015)

This Opinion is Not a Precedent of the TTAB Mailed: January 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re MAKO Surgical Corporation _____ Serial No. 85959623 _____ Eugene J. Rath, III of Flynn, Thiel, Boutell & Tanis, P.C., for MAKO Surgical Corporation. Lyndsey Kuykendall, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Bucher, Cataldo and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: MAKO Surgical Corporation (“Applicant”) seeks registration on the Principal Register of the mark MICS (in standard characters) for Surgical robotic arm instrument system integrated with computer hardware, software, cameras, and tracking arrays to provide visual, auditory, and tactical feedback to control surgical resection and improve surgical accuracy, in International Class 10.1 1 Application Serial No. 85959623 was filed on June 13, 2013, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 85959623 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on the ground that MICS merely describes the purpose for which Applicant’s surgical robotic arm instrument systems may be used (i.e., minimally invasive cardiac surgery). Applicant, on the other hand, contends that MICS is an acronym of MAKO Integrated Cutting Systems. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. A term is merely descriptive of goods within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and every specific feature of the goods in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 Serial No. 85959623 - 3 - (TTAB 1973). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods, and the possible significance that the mark would have to the average purchaser of the goods in the relevant marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what characteristics the term identifies, 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, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). A word, term, or letters that are a recognized abbreviation for the goods in the application is/are merely descriptive. In re Thomas Nelson Inc., 97 USPQ2d 1712, Serial No. 85959623 - 4 - 1715 (TTAB 2011); Foremost Dairies, Inc. v. The Borden Company, 156 USPQ 153, 154 (TTAB 1967); Calgon Corporation v. Hooker Chemical Corporation, 151 USPQ 359, 360 (TTAB 1966). However, not all abbreviations are necessarily merely descriptive. While each case must be decided on the basis of the particular facts involved, it would seem that, as a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith. Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA 1956). See also In re Thomas Nelson Inc., 97 USPQ2d at 1715; Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 573 (TTAB 1977). Accordingly, for MICS to be merely descriptive of Applicant’s surgical robotic arm instrument systems, we have to find the following: 1. MICS is an abbreviation for “minimally invasive cardiac surgery”; 2. “Minimally invasive cardiac surgery” is merely descriptive of surgical robotic arm instrument systems; and 3. A relevant consumer viewing MICS in connection with surgical robotic arm instrument systems would recognize it as an abbreviation of the term “minimally invasive cardiac surgery.” In re Thomas Nelson Inc., 97 USPQ2d at 1716; In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984). Serial No. 85 A. 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MICS use nize that t nter CLA oups form se it tem d in erm Serial No. 85959623 - 11 - as an abbreviation of the term “minimally invasive cardiac surgery.” In addition to the above-noted evidence, the record includes other evidence. For example, the websites listed below are representative of the evidence in the record: 1. Cardiothoracic and Vascular Surgeons (ctvstexas.com).13 Minimally Invasive Cardiac Surgery (MICS) Traditionally, surgeons access a patient’s heart by performing a sternotomy, which involves opening the breast bone to gain exposure to the heart. Minimally invasive heart surgery is performed through a small incision made under the patient’s breast, whereby the surgeon uses special instruments to access the heart through the rib cage. … Minimally invasive cardiac surgery can be used as an approach to valve repair, valve replacement, coronary artery bypass graft (CABG) surgery and the treatment of arterial fibrillation. 2. Gundersen Health System (gundersenhealth.org).14 Minimally Invasive Heart Bypass Gundersen Health System is using an innovative technique, called minimally invasive coronary surgery (MICS), to perform multiple heart bypasses through a small incision. That means surgeons do not have “to crack open the chest” as they do with traditional open heart surgery, and patients recover in about half the time. 3. Harrison Medical Center (harrisonmedical.org).15 Minimally Invasive Cardiac Surgery New techniques in heart surgery mean that common open-heart operations can be performed through smaller, 13 December 17, 2013 Office Action. 14 December 17, 2013 Office Action. 15 December 17, 2013 Office Action. Serial No. 85959623 - 12 - less traumatic incisions. Harrison Medical Center surgeons use Minimally Invasive Cardiac Surgery (MICS) for aortic and mitral valve cardiac surgery – when it offers a good option with optimum results and easier recovery for the patient. Our surgeons use MICS when it is the right time, the right patient, the right treatment. In view of the foregoing, we find that in the context of surgical robotic arm instrument systems, the term MICS merely describes the purpose of Applicant’s products. See In re Box Solutions Corp., 79 USPQ2d 1953, 1956 (TTAB 2006) (as used in the mark BOX SOLUTIONS, “SOLUTIONS is a term that is used to describe the purpose of the computer to resolve a problem” and, therefore, the required disclaimer is appropriate); In re Nat’l Presto Indus., Inc., 197 USPQ 188, 190 (TTAB 1977) (BURGER in the mark PRESTO BURGER held merely descriptive of cooking utensils and was required to be disclaimed because it immediately informs purchasers that the product may be used for cooking hamburgers); In re M B Associates, 180 USPQ 338, 339 (TTAB 1973) (STUN-GUN is descriptive of a non-lethal weapon because it is designed to stun or make a person senseless or unconscious and, therefore, describes the purpose of the product). See also In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1198 (TTAB 1998) (ATTIC held to be generic for sprinklers installed primarily in attics). The fact that Applicant’s product may be used for other procedures does not make its mark suggestive. In re Nat’l Presto Indus., Inc., 197 USPQ at 190; In re M B Associates, 180 USPQ at 339. Applicant argues that MICS is not merely descriptive because it is the acronym for MAKO Integrated Cutting Systems. However, as noted above, the determination Serial No. 85959623 - 13 - of whether a mark is merely descriptive is determined in connection with the identification of goods in the application sought to be registered. The fact that MICS may have another meaning is not controlling because if it has a primary significance that is descriptive in relation to the recited goods, and does not create any double entendre or incongruity, then the term is merely descriptive. See In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984) (“the fact that the term ‘CHOPPER’ [for a ‘wood splitting tool’] has other meanings which are not descriptive is not an adequate defense against the Examining Attorney's contention that the term is merely descriptive. It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979) (“since the question of descriptiveness must be determined in relation to the goods or services for which registration is sought, the fact that a term may have meanings other than the one the Board is concerned with is not controlling on the question.”); In re Champion Int’l Corp., 183 USPQ 318, 320 (TTAB 1974) (“the fact that a word or term may have more than one meaning is not controlling on the question of descriptiveness since this question must be determined, not in the abstract, but in relation to the goods for which registration is sought, the context or purpose for which it is being used on or in connection with such goods, and the reaction of the average purchasers of the goods as a consequence of the manner of use.”). Applicant also argues, in essence, that because MICS has other definitions in the medical field (e.g., minimally inflammatory cataract surgery, minimally invasive Serial No. 85959623 - 14 - colectomies, micro-ionisation cross section, etc.), relevant consumers will have to use a multiple step reasoning process to select which of the multiple meanings is applicable. However, as noted above, whether a mark is merely descriptive is determined in relation to the goods sought to be registered. The issue is whether someone who knows what the products are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1757; In re Tower Tech, Inc., 64 USPQ2d at 1316-1317. “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012). Thus, when surgeons encounter a surgical robotic arm instrument system identified by the term MICS, they immediately know that it is a product that may be used for minimally invasive cardiac surgery. Decision: The refusal to register Applicant’s mark MICS is affirmed.