Masimo Corporation

Trademark Trial and Appeal Board

Aug 26, 2013

No. 85040352 (T.T.A.B. Aug. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: July 30, 2013 Mailed: August 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Masimo Corporation
_____

Serial Nos. 85040352
and 85047115
_____

Deborah S. Shepherd, Nicole A. Rossi, and Jeffrey Van Hoosear, Knobbe, Martens,
Olson & Bear, LLP for Masimo Corporation.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
_____

Before Grendel, Shaw and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Applicant Masimo Corporation (applicant) has applied to register the
following marks, in standard character form, on the Principal Register:
ADAPTIVE CONNECTIVITY ENGINE1

and

ADAPTIVE THRESHOLD ALARM2

1 Application Serial No. 85040352, filed May 17, 2010, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b); applicant claims ownership of Registration No. 3786366 on the
Supplemental Register for the mark ADAPTIVE PROBE OFF DETECTION.

Serial Nos. 85040352 and 85047115

2

for the following goods, as amended:
Medical devices, namely, patient monitors and patient
sensors for monitoring and measuring blood properties or
respiratory events in Class 10 (SN 85040352); and
Medical devices, namely, patient monitors and patient
sensors in Class 10 (SN 85047115).
The examining attorney has refused registration pursuant to Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the applied-for
marks merely describe the purpose or function of applicant’s goods. After the
refusals were made final, applicant timely appealed the refusals and filed requests
for reconsideration which have been denied. The appeals are fully briefed. For the
reasons set forth below, the refusals to register are affirmed.
Consolidation of Appeals
We have considered the arguments and evidence filed in both cases. The
applied-for marks, refusals to register, as well as the records and the briefs, contain
overlapping arguments and evidence, and the oral arguments on appeal were
consolidated. Thus, the appeals involve common factual and legal issues, and are
therefore considered and addressed in this consolidated opinion.
Applicant and the examining attorney have generally referred to applicant’s
goods as “patient monitors and sensors,” and we likewise adopt this shorthand
terminology to refer to the goods covered in both applications.

2 Application Serial No. 85047115 filed May 25, 2010, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b); applicant claims ownership of Registration No. 3786366 on the
Supplemental Register for the mark ADAPTIVE PROBE OFF DETECTION.

Serial Nos. 85040352 and 85047115

3

Descriptiveness
A term is merely descriptive within the meaning of § 2(e)(1) if it immediately
conveys knowledge of a quality, characteristic, function, feature, purpose or use of
the goods with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) and In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
The examining attorney has refused registration of the marks under § 2(e)(1)
on the grounds that the components of the applied-for ADAPTIVE CONNECTIVITY
ENGINE and ADAPTIVE THRESHOLD ALARM marks are descriptive and retain
their descriptive meanings when combined such that the overall composite marks
are descriptive. In support of this position, the examining attorney provided the
following definitions:
adaptive:
changing in order to deal with new situations.
www.macmillandictionary.com/dictionary/american/ada
ptive3
alarm:
a piece of electrical equipment that warns you of danger,
especially by making a loud noise.
http://www.onelook.com/?w=alarm&ls=a4
Applicant contends that the words “adaptive,” “alarm,” “connectivity” and
“engine” contained in the applied-for marks have multiple definitions such that
consumers would not be able to ascertain any information regarding applicant’s

3 See attachments to September 7, 2010 Office Actions for Serial Nos. 85040352 and
85047115.
4 See attachment to April 12, 2011 Office Action for Serial No. 85047115.
Serial Nos. 85040352 and 85047115

4

goods.5 The fact that a term may have different meanings in other contexts is not
controlling on the question of descriptiveness. 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 Franklin County Historical Society, 104 USPQ2d 1085,
1087 (TTAB 2012); In re Chopper Industries, 222 USPQ 258, 259 (TTAB 1984). The
definitions submitted by applicant, summarized on page 4 of its Appeal Briefs,
include at least one apt definition for each term when used in connection with
applicant’s goods.
Based on the definition set forth above, the word “adaptive” in each mark is
clearly descriptive of applicant’s goods.6 Applicant’s website indicates that its
ADAPTIVE THRESHOLD ALARM “helps reduce nuisance alarms by automatically
adjusting the audible alarm to the patient’s baseline” and “may reduce alarm
fatigue by dynamic adjustment of the audio alarms . . . ” (emphases added).7 At the
oral hearing, applicant argued that “adaptive” is not descriptive of its goods because
the sensor device adjusts to the patient, rather than adjusting the threshold alarm.
Although this argument appears to be inconsistent with the language on applicant’s
website, to the extent that applicant’s device adjusts to the individual patient in

5 See Applicant’s Appeal Brief pp. 4-5 for Serial No. 85040352 and p. 4 for Serial No.
85047115.
6 We note that one of the definitions for “adaptive” submitted by applicant is the same as
the definition submitted by the examining attorney. See October 12, 2011 Requests for
Reconsideration; Applicant’s Appeal Briefs pp. 4-5.
7 See attachments to November 28, 2011 Request for Reconsideration Denied for Serial No.
85047115.
Serial Nos. 85040352 and 85047115

5

order to avoid false alarms, the device can be considered to be “adaptive” as that
term is defined above.
With respect to the term ADAPTIVE CONNECTIVITY ENGINE, a
connectivity engine utilized in the medical industry by its very nature (as explained
more fully below), is “adaptive” inasmuch as it allows the addition of interfaces or
devices as may be required to capture and disseminate data concerning a patient’s
particular medical condition.
The descriptiveness of the word “adaptive” in connection with applicant’s
products involved in this consolidated appeal is further supported by applicant’s
ownership of Registration No. 3786366 issued on the Supplemental Register on May
4, 2010, for the mark ADAPTIVE PROBE OFF DETECTION for “medical devices,
namely, patient monitors and patient sensors for use in non-invasive blood
constituent monitoring.” Registration on the Supplemental Register is prima facie
evidence that at the time of registration, the registered mark was merely
descriptive. In re Central Soya Co., Inc., 220 USPQ 914-917 (TTAB 1984). To the
extent that the mark in applicant’s Registration No. 3786366 contains the word
“adaptive” and is for goods that are nearly identical to those involved in this
consolidated appeal, its ownership of this Registration provides further evidence of
the descriptiveness of the word “adaptive.”
Similarly, the descriptive meanings of the terms “threshold alarm” and
“connectivity engine” and their relatedness to applicant’s goods are well established
Serial Nos. 85040352 and 85047115

6

by the evidence.8 Applicant admits that many of the articles submitted by the
examining attorney show use of the term “connectivity engine” in connection with
computer software, over the internet, as well as in areas outside of the medical
industry.9 However, the examining attorney also submitted numerous articles from
various publications retrieved from the LexisNexis® database which show that
“connectivity engine” is a recognized descriptive term in the medical industry. For
example: 10
● Headline: Meeting of Major Healthcare IT Standards Groups
Sets New Initiative in Motion
. . . While there are many views and many different requirements, the
common understanding that is emerging holds that the EHR contains
information provided primarily from many health-related encounters,
and that the connectivity engine is the central concept of any
solution . . .
May 26, 2004, Business Wire.

● Headline: Practice Management System Promotes the
Exchange of Enterprise-Wide Data; The Medical Manager
offers HL7 Connectivity.
. . . To meet the need for connectivity, Systems Plus, Inc. announced
today the availability of The Medical Manager’s Health Level Seven
(HL7) connectivity engine. The connectivity engine provides the
central billing function of MSOs [managed service organizations] and
all of their practices with an industry standard HL7 electronic link
with hospitals and other remote organizations. . . .
April 26, 1996, Business Wire.

8 Evidence that a term is merely descriptive to the relevant purchasing public may be
obtained from any competent source, such as dictionaries, newspapers, surveys, trade
publications or other publications. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341,
57 USPQ2d 1807, 1810 (Fed. Cir. 2001) and In re Bed & Breakfast Registry, 791 F.2d 157,
229 USPQ 818, 819 (Fed. Cir. 1986). The record in this case contains a variety of evidence
from applicant’s website, third-party websites, and publications retrieved from the
LexisNexis® database.
9 Applicant’s Appeal Brief for Serial No. 85040352 p. 8.
10 See attachments to April 12, 2011 Office Action and November 28, 2011 Request for
Reconsideration Denied for Serial No. 85040352.
Serial Nos. 85040352 and 85047115

7

● Headline: Surgical Information Systems Selects Capsule
Technologie to Provide Universal Device Connectivity for its
Perioperative Information System.
Surgical Information Systems (SIS) and Capsule Technologie, the
leader in medical device connectivity solutions, today announced that
SIS will integrate Capsule Technologie’s DataCaptor(TM) solution to
collect and manage bedside medical device data in the SIS
perioperative information system. . . . “Integrating the DataCaptor
connectivity engine will allow us to offer our customers instant
connectivity to an extensive library of bedside monitors, ventilators,
and infusion pumps . . .” Capsule Technologie is the world’s leader in
Medical Device Connectivity software and solutions. The company’s
flagship product, called DataCaptor™, provides an interface between
standalone and/or networked medical devices and clinical/hospital
information systems.
February 18, 2004, Business Wire.

● Picis, Inc. . . . a vendor of software for operating rooms and critical care
units has filed a patent infringement suit . . . According to the suit,
the patent covers Click n’Link, a connectivity engine Picis developed
to capture data from physiological monitors, ventilators and anesthesia
machines for automated patient charting and storage in a database.
June 29, 2004 Business Wire.

● Headline: Cerner makes its moves beyond software
Cerner’s CareAware technology enables data from devices such as IV
pumps, anesthesia machines and physiological monitors to flow
directly into a Cerner “connectivity engine” and from there into a
patient’s electronic medical record. . . . Considering that more and
more medical devices are incorporating software and technology and
gathering data, it only makes sense for Cerner to . . . create plug-and-
play connectivity (with) electronic records in the hospital . . . .
July 1, 2008, The Kansas City Star; Business Dateline.

(emphases added).

As explained on Cerner’s website:

Healthcare organizations need to leverage clinical
information from both the EMR and devices in order to
make informed decisions. . . . The Cerner CareAware
iBus™ is the core component of the CareAware
Serial Nos. 85040352 and 85047115

8

architecture. The Care Aware iBus is much like a USB
port that quickly and easily connects peripheral devices to
a computer . . . ensuring that providers can connect
medical devices to the EMR quickly and better support
clinical workflow. . . . The CareAware Connectivity
Engine is a physical device hub which contains eight
USB ports. . . .from http://www.cerner.com/items/74
attached to 4/12/11 Office Action.
(emphasis added).
As shown above, the term “connectivity engine” has been used in a descriptive
manner by several third parties in the medical industry for more than a decade and
refers to an electronic device or feature that facilitates the connection of several
different medical devices, including patient monitors, to provide data to a host
information system.11
“Threshold alarm” is also a commonly used term both in the medical
industry as well as in several other industries, including the technology industry, as
indicated by the examining attorney’s evidence:12

11 Applicant argues on p. 8 of its Appeal Brief that some of the articles submitted by the
examining attorney show use of the term CONNECTIVITY ENGINE as a trademark.
Several of the articles to which applicant points (see Exhibit C to Appeal Brief for Serial
No. 85040352), reference an Adaptive Mesh Connectivity Engine, abbreviated as AMCE,
provided by Tropos Network to facilitate Wi-Fi connectability. Other than the use of initial
capital letters, none of these articles include any indication that Adaptive Mesh
Connectivity Engine is a trademark. Indeed, the legal statement at the bottom of the
Tropos Network website does not list Adaptive Mesh Connectivity Engine as one of the
company’s trademarks. See copy of
http://www.tropos.com/news/pressreleases/2006_07_13.php website attached to April 12,
2011 Office Action for Serial No. 85040352.
12 See attachments to November 28, 2011 Request for Reconsideration Denied for Serial No.
85047115. While applicant argues that much of this evidence shows use of the term
“threshold alarm” in connection with diabetes treatment (see Applicant’s Appeal Brief for
Serial No. 85047115 pp. 7-8) the description of applicant’s goods is unrestricted and is broad
enough to encompass monitors and sensors utilized in the connection with diabetes
treatment.
Serial Nos. 85040352 and 85047115

9

● Headline: Closing the clinical alarm gap: Networking
. . . clearly showed that false positive, or nuisance, alarms were the
biggest issue. Ideally, alarms would detect all impending and
occurring life-threatening situations while providing diagnostic
information and discrimination between patient and equipment
alarms. Traditional threshold alarms are sensitive but not specific
and produce an abundance of false positives. . . .
9/1/2010 from Gale Group Inc., Allied Media LLC.

● Headline: Practical aspects of real-time continuous glucose
monitoring; Report
Another frustrating feature for many patients is the high and low
glucose threshold alarms. While on the one hand these alarms
provide valuable safety features, if set inappropriately or if sensor
readings are very discrepant . . .
6/15/2009 Diabetes Technology & Therapeutics.

● Headline: Detection of hypoglycemia with continuous
interstitial and traditional blood glucose monitoring using the
freestyle navigator continuous glucose monitoring system;
Report
The FSN-CGM has two alarm features for detecting hypoglycemia.
Threshold alarms activate when the glucose descends below a
threshold set by the patient . . .
3/1/2009 Diabetes Technology & Therapeutics.

● Headline: Clinical application of emerging sensor technologies
in diabetes management: consensus guidelines for continuous
glucose monitoring; CGM
Traditional blood glucose testing must be performed: . . . (3) prior to
administering diabetes medication or responding to threshold
alarms; . . .
8/1/2008 Diabetes Technology & Therapeutics.

● Applicant’s website http://www.masimo.fr/adaptive-threshold-
alarm/index.htm:
Masimo’s innovative Adaptive Threshold Alarm helps reduce nuisance
alarms by automatically adjusting the audible alarm to the patient’s
baseline. Adaptive Threshold Alarm is an optional setting . . .
Adaptive Threshold Alarm Performance is Dependent Upon: . . . ›
Alarm Threshold Setting; [contains references to] Fixed Threshold
Alarm Event . . .

Serial Nos. 85040352 and 85047115

10

● Applicant’s website for its Rad-87 product
http://www.masimo.es/rainbow/rad87.htm:
› Adaptive Threshold Alarm™ option may reduce alarm fatigue by
dynamic adjustment of the audio alarms to the patient’s baseline value
and the fixed alarm threshold . . . Alarm and alerts can be modified
at the bedside or via the Masimo Patient SafetyNetRemote Monitoring
and Clinician Notification System.

In view of the descriptive meaning of the term “threshold alarm” as evidenced
by the foregoing, the arrangement of the words ADAPTIVE THRESHOLD ALARM
is such that “threshold alarm” would be recognized as a known term resulting in the
overall perception of the term as “adaptive” “threshold alarm.” Even a consumer of
applicant’s goods that was unfamiliar with the term “threshold alarm,” would
perceive “threshold” to modify the noun “alarm” and understand the descriptive
significance of the term ADAPTIVE THRESHOLD ALARM when presented with
applicant’s goods which contain an automatically adjusting alarm.13
Despite the evidence of the descriptiveness of the applied-for marks,
applicant argues that the marks are not descriptive relying on its One Look® online
dictionary search which returned no results for either of the applied-for marks.14 It
is fundamental that a mark does not have to appear in a dictionary in order for it to
be merely descriptive of an applicant’s goods. In re Thomas Collators, Inc., 158
USPQ 297, 298 (TTAB 1968). Nonetheless, as shown above, not only are the
components of the applied-for marks descriptive, they retain their descriptive
meanings in relation to applicant’s goods resulting in composite marks that are

13 See pages from applicant’s website, http://www.masimo.fr/adaptive-threshold-
alarm/index.htm, attached to November 28, 2011 Request for Reconsideration Denied.
14 See Exhibit A to October 12, 2011 Requests for Reconsideration.
Serial N

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Serial Nos. 85040352 and 85047115

12

1823 (TTAB 2012). “The question is not whether someone presented with only the
mark could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17
(TTAB 2002). Applicant’s website, as well as the evidence from the publications
discussed above, is directed to technological medical personnel. Based on the
content of these materials, such personnel would understand the applied-for marks
convey information describing the purpose and/or features of the goods. Therefore,
the persons who will encounter the goods in the marketplace are relatively
sophisticated and would understand the descriptive significance of the terms
ADAPTIVE CONNECTIVITY ENGINE and ADAPTIVE THRESHOLD ALARM.
Whether a term which is created by combining two or more unregistrable
words may achieve registration depends on whether, in combination, a new and
different commercial impression is achieved and/or the term so created imparts a
unique, incongruous or otherwise non-descriptive separate meaning as used in
connection with the goods or services. In re Colonial Stores, Inc., 394 F.2d 549, 157
USPQ 382, 384 (CCPA 1968). If each component retains its descriptive significance
in relation to the goods or services as is the case with respect to applicant’s applied-
for marks, the combination results in a composite that is itself descriptive.
DuoPross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely descriptive for
medical devices); also see, Petroglyph Games, 91 USPQ2d at 1341 (BATTLECAM
Serial Nos. 85040352 and 85047115

13

merely descriptive for computer game software); In re King Koil Licensing Co., 79
USPQ2d 1048, 1052 (TTAB 2006) (THE BREATHABLE MATTRESS held merely
descriptive of beds, mattresses, box springs, and pillows where the term
BREATHABLE retained its ordinary dictionary meaning when combined with the
term MATTRESS and the resulting combination was used in the relevant industry
in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663
(TTAB 1988) (GROUP SALES BOX OFFICE is merely descriptive of theater ticket
sales services because such wording is a combination of the two common descriptive
terms most applicable to applicant’s services which remains a common descriptive
compound expression”). In this case, the words in both marks retain their
descriptive meanings even when used in combination.
As to the alleged incongruity of the applied-for marks, applicant does not
explain the incongruity and we see none. The foregoing evidence demonstrates the
descriptive terms “adaptive,” “connectivity engine” and “threshold alarm” when
used together would not be perceived as unusual or incongruous. Additionally, the
fact that applicant may have been the first or only user of a merely descriptive
designation does not justify registration if the only significance conveyed by the
term is merely descriptive. See In re Alpha Analytics Investment Group LLC, 62
USPQ2d 1852, 1856 (TTAB 2002); In re National Shooting Sports Foundation, Inc.,
219 USPQ 1018, 1020 (TTAB 1983).
Serial Nos. 85040352 and 85047115

14

Conclusion:
Both the individual components and the composite results of the marks are
descriptive of applicant’s goods and do not create a unique, incongruous or non-
descriptive meaning in relation to the goods. When deciding the issue of
descriptiveness, it is the policy of this Board to resolve doubts in favor of the
applicant and allow the mark to be published. In re The Gracious Lady Service,
Inc., 175 USPQ 380, 382 (TTAB 1972). Here, however, there is no such doubt.
Decision: The refusals to register the applied-for ADAPTIVE
CONNECTIVITY ENGINE and ADAPTIVE THRESHHOLD ALARM marks in
Application Serial Nos. 85040352 and 85047115, under Section 2(e)(1) of the
Trademark Act, are affirmed.