Mark A. Fisher

Trademark Trial and Appeal Board

Jan 31, 2014

No. 85496960 (T.T.A.B. Jan. 31, 2014)

Mailed:
January 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Fisher
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Serial No. 85496960
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Jaconda Wagner of Wagner Law LLC for Mark A. Fisher.

Sophia S. Kim, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Kuhlke and Masiello, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Mark A. Fisher, a U.S. citizen, has appealed from the
refusal of the trademark examining attorney to register
ABDOMINAL ELEVATOR, in standard characters, with the word
ELEVATOR disclaimed, as a trademark for “Surgical and
medical apparatus and instruments for use in general
surgery; Surgical devices and instruments; Surgical
instruments and apparatus.”1

1 Application Serial No. 85496960, filed December 16, 2011,
based on Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85496960
2
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s mark is merely descriptive of
his identified goods. In support of this refusal, the
examining attorney made of record several definitions for
“elevator,” including the following:
An instrument for raising a depressed
portion of a bone.
Mondofacto, www.mondofacto.com

A surgical instrument used to elevate tissues or
to raise a sunken part, such as a depressed
fragment of bone.
The American Heritage Medical Dictionary, © 2007.

An instrument for elevating tissues for removing
osseous fragments or roots of teeth.
Dorland’s Medical Dictionary for Health Consumers
© 2007

The latter two definitions were reported in The
Free Dictionary by Farlex, http://medical-
dictionary.the freedictionary.com

The examining attorney also submitted a definition of
“abdominal,” meaning “of or relating to the abdomen.”
Reported at Yahoo! Education, http://education.yahoo.com.
Applicant has explained that “the ABDOMINAL ELEVATOR
is a surgically sterile pannus retractor that retracts and
retains the pannus while providing a completely sterile
field with an unobstructed view of the incision site for
the physician.” Response filed September 27, 2012, p. 1.
In his brief, he provided further information as disclosed
Ser. No. 85496960
3
in his patent application, namely that the goods provide
“an unobstructed view of the incision site along the
abdomen for the medical staff,” TTABVue p. 6, although the
patent application itself was never submitted.2 An
abdominal pannus, as described by a third-party patent
submitted by applicant, is “an overhanging flap of
abdominal tissue consisting of skin, fat, and sometimes
contents of the internal abdomen.” This can develop in
“obese patients with large body habitus.” Patent
Application Pub. No. US2010/0145155A1.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered to be merely
descriptive; rather, it is sufficient that the term
describes one significant attribute, function or property

2 In his response applicant stated that he explained his device
in his pending patent application 13/303,149. In his brief he
provided the further information that the application has now
been published, No. 2013133668A1.

Ser. No. 85496960
4
of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a 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 the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use; that a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, if
the mark is descriptive of any of the goods or services for
which registration is sought, it is proper to refuse
registration as to the entire class. In re Analog Devices
Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d without pub. op.,
871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
Applicant’s own statement shows that his goods are
used in the area of the abdomen (“an unobstructed view of
the incision site along the abdomen”). One definition of
“elevator” submitted by the examining attorney, “a surgical
instrument used to elevate tissues,” directly describes
what applicant’s identified goods do, and also shows that
“elevator” is a generic term for such an instrument.
Moreover, we note that applicant disclaimed the word
Ser. No. 85496960
5
ELEVATOR in response to the examining attorney’s statement
that, if applicant amended his application to the
Supplemental Register3 or sought registration pursuant to
Section 2(f), he would have to disclaim ELEVATOR “because
such wording appears to be generic in the context of
applicant’s goods.” Office action mailed March 29, 2012.
Although applicant did not amend his application to the
Supplemental Register, or make a Section 2(f) claim, he did
provide the disclaimer in response to this statement by the
examining attorney, indicating that he agreed that ELEVATOR
is generic or, at least, descriptive.
When ABDOMINAL and ELEVATOR, with their respective
definitions, are combined to form the mark ABDOMINAL
ELEVATOR, the mark immediately and directly tells relevant
consumers that the goods are used to elevate abdominal
tissue.
Applicant has made a number of arguments in his appeal
brief and reply brief as to why his mark is not merely
descriptive, but we do not find them to be persuasive.
First, applicant points to one of the definitions of
“elevator” as “a dental instrument used to remove teeth or

3 Because the application is based on Section 1(b), applicant
would have to file an amendment to allege use before he could
amend the application to the Supplemental Register.

Ser. No. 85496960
6
parts of teeth that cannot be gripped with a forceps or to
loosen teeth and roots before using forceps.” Brief,
TTABVue p. 8. Applicant explains that in this context, the
instrument is a blade, which is not the purpose or function
of his device.
As stated above, the determination of whether a term
is merely descriptive is made in relation to the goods for
which registration is sought. When used in connection with
devices or apparati that are used to lift an abdominal
pannus, consumers will not ascribe to the term the meaning
of a dental instrument used to remove teeth or parts of
teeth.
Applicant has made a variation of this same argument
in saying that “the consumer, a surgeon or surgical nurse,
without seeing the device or having a description of it,
would not know which version of ‘ELEVATOR’ was being
utilized by the proposed mark given the multiple meanings
of ‘ELEVATOR’ in the surgical context.” Brief, TTABVue p.
10. Again, whether a term is merely descriptive is
determined not in the abstract. In the context of the
goods, consumers would understand “elevator” in ABDOMINAL
ELEVATOR to have the meaning of a surgical instrument or
device used to elevate abdominal tissue. We point out
that, whether or not applicant’s particular device is not
Ser. No. 85496960
7
made of “steel as is typically the case for surgical
instruments,” Reply brief, TTABVue p. 3, applicant has
identified his goods very broadly in his application,
including the items “surgical and medical apparatus and
instruments for use in general surgery” and “surgical
devices and instruments,” and therefore the goods would
include surgical instruments made of steel, and surgical
instruments used to elevate tissues - which is the
definition of an “elevator.”
Applicant also asserts that his mark is a double
entendre, pointing to the term “elevator speech,” which he
says is used in the business world to convey “that a
speaker must convey relevant information to a listener
within the time that it takes to ride an elevator.” Brief,
TTABVue p. 8. As a result, applicant contends that
“elevator” means rapid, swift, instant or prompt, and that
with regard to the identified goods, ABDOMINAL ELEVATOR
“conveys the convenience and speed with which the abdominal
area can be retracted and prepared for surgery.” Brief,
TTABVue p. 9. Applicant has changed this argument slightly
in his reply brief, saying that “This concept of a lift is
embodied in the term ‘ELEVATOR,’ which also serves to
connote the speed with which the device is applied in
Ser. No. 85496960
8
comparison to the current surgical method for retracting a
pannus.” Reply brief, TTABVue pp. 3-4.
In order to be considered a double entendre, the mark
must have a second, non-descriptive meaning that will be
readily apparent to the consumer. In re Brown–Forman
Corp., 81 USPQ2d 1284 (TTAB 2006); In re The Place, Inc.,
76 USPQ2d 1467 (TTAB 2005). ABDOMINAL ELEVATOR does not
have a clear meaning of convenience and speed. In fact, it
is not clear to us why the word ELEVATOR per se would
connote “speed,” nor is the word ELEVATOR the same as
ELEVATOR SPEECH. When ELEVATOR is used in combination with
ABDOMINAL it strains credulity that a consumer would
understand ABDOMINAL ELEVATOR as having the meaning
“speed.”
Finally, even if we were to treat applicant’s goods as
being the device he has described in his patent
application, and therefore the definition of ELEVATOR as “a
surgical instrument used to elevate tissues” may not be the
generic name for the goods, the definition of “elevator” as
meaning “a person or thing that elevates or raises” is
sufficient for us to find that applicant’s mark is
descriptive.4 As applicant has explained numerous times in

4 Definition taken from Dictionary.com Unabridged,
http://dictionary.reference.com, based on the Random House
Ser. No. 85496960
9
his briefs, his goods are a “mechanism for lifting the
pannus.” Reply brief, TTABVue p. 3. Thus, consumers would
immediately understand, when seeing ABDOMINAL ELEVATOR in
connection with applicant’s surgical apparatus and devices,
that the goods elevate or lift abdominal tissue, and
therefore the mark describes the purpose of the goods.
Having considered all the evidence of record, and the
examining attorney’s and applicant’s arguments, including
those not directly addressed herein, we find that ABDOMINAL
ELEVATOR is merely descriptive of applicant’s goods as
identified in his application.
Decision: The refusal of registration is affirmed.

Dictionary, © 2013. The Board may take judicial notice of
dictionary definitions, including online dictionaries with
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375
(TTAB 2006); University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co, Inc., 213 USPQ 594 (TTAB 1982) aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).