Medipacs, LLC

Trademark Trial and Appeal Board

Sep 10, 2007

No. 78626047 (T.T.A.B. Sep. 10, 2007)

Mailed: September 10, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Medipacs, LLC
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Serial No. 78626047
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Norman P. Soloway of Hayes Soloway for Medipacs, LLC.

Carolyn V.C. Gray, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
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Before Walters, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Medipacs, LLC has filed an application to register on
the Principal Register the mark DIGITAL PUMP in standard
character format for “programmable metering pumps for
industrial, medical and laboratory use, and parts and
fittings therefor,” in International Class 9.1
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15

1 Serial No. 78626047, filed May 9, 2005, based on an allegation of a
bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78626047
2
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its goods.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Applicant contends that the mark is at most suggestive;
that a multi-stage reasoning process is necessary to
understand the nature of the goods identified by DIGITAL
PUMP; and that, because of the multitude of meanings of the
term “digital,” the mark could be understood as identifying
a virtual pump, a device that pumps digital signals in an
electronic circuit or computer program, a fanciful name for
an amplifier system, a shoe, or a shoe support based upon a
digital signal. Applicant also argues that the term “pump”
is usually used with another noun, such as “oil pump” or
“air pump,” and the examining attorney has not shown any
other use of “pump” with a verb or an adjective. Thus,
applicant concludes, the incongruous combination of the
adjective “digital” with the noun “pump” can only be
descriptive of a product that “pumps digits” or “use[s]
digitals to pump.”
Applicant states that its identified product is not “a
pump that represents magnitudes in digits” as characterized
by the examining attorney. Rather, applicant describes its
product as “a programmable pump formed around any base or
Serial No. 78626047
3
magnitude.” (Brief p. 8.) Applicant argues, further, that,
in reaching her conclusion that the mark is merely
descriptive, the examining attorney has improperly dissected
the mark.
In her final office action of July 6, 2006, the
examining attorney makes the following argument2:
Applicant’s proposed mark merely describes a pump
that represents magnitudes in digits. A digit is
defined as “one of the elements that collectively
forms a system.” The derivative digital then is
“merely to use or give a reading in digits.”
Applicant’s assertion that its “pump is not
designed to pump digits” clearly misinterprets
what the public would understand by its mark. The
average consumer would understand that applicant’s
goods are designed to measure digitally, that
which is being pumped.

In her brief, the examining attorney concludes that the mark
DIGITAL PUMP “would convey to the average consumer that
applicant’s goods are designed to measure digitally that
which is being pumped.” The examining attorney submitted a
definition of the noun “pump” as a “mechanical device that
moves fluid or gas by pressure or suction” (“quick
definitions” from the website www.onelook.com). The
examining attorney also submitted the following definition,
in pertinent part, of “digital” from The American Heritage
Dictionary of the English Language, 4th ed. 2000, as
appearing on the website www.dictionary.com:
Serial No. 78626047
4
2. Operated or done with the fingers: a digital
switch.
4. Expressed in numerical form, especially for use
by a computer.
5. Computer Science. Of or relating to a device
that can read, write, or store information
that is represented in numerical form.
6. Using or giving a reading in digits: a digital
clock.

Both applicant and the examining attorney submitted evidence
with their briefs on appeal. The examining attorney’s
evidence consists of excerpts of company names and profiles
from the website www.ThomasNet.com, showing use of the
phrase “digital control pump.” Applicant’s evidence
consists of excerpts of Internet websites showing
definitions of “digital,” a copy of a published patent
application for a pulse actuated activator pump system, and
the results of a search of the Google search engine for the
term “digital.” Neither applicant nor the examining
attorney complied with the established rule that the
evidentiary record in an application must be complete prior
to the filing of the notice of appeal or with a request for
reconsideration filed during the period for filing an
appeal. See, 37 CFR 2.142(d); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). Further, none of the non-

2 The quoted definition was submitted by the examining attorney from the
website www.onelook.com and was listed under the heading “quick
definitions.”
Serial No. 78626047
5
dictionary evidence3 submitted by either applicant or the
examining attorney is proper for judicial notice.
While neither applicant nor the examining attorney
objected to the improperly submitted evidence of the
other and, in fact, the examining attorney discussed
the patent submitted by applicant, we have not
considered the late-filed evidence. The Board has a
substantial interest in maintaining the orderly conduct
of proceedings before it. Allowing either an applicant
or an examining attorney to continue to submit evidence
during the appeal in the absence of a request for
remand undermines the orderly examination and appeal of
trademark applications.4
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not

3 To the extent that the dictionary evidence duplicates what is already
in the record, there is no need to take judicial notice of it. To the
extent that it consists of new definitions, these definitions do not
differ substantively from those in the record. Thus, the Board has not
taken judicial notice thereof.

4 We add that even if we had considered the evidence submitted by
applicant with its brief, our decision in this case would remain the
same.
Serial No. 78626047
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necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describes a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985).
Of particular relevance in this case is the well-
established rule that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or services
for which registration is sought, the context in which the
mark is used, and the impact that it is likely to make on
the average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977). For this reason,
applicant’s arguments about alternative meanings of the mark
are unpersuasive when the mark is considered in connection
with the identified goods.
Considering applicant’s own explanation of its
product as “a programmable pump” (supra), applicant’s
pump clearly incorporates computer technology for some
of its functioning, i.e., it is not purely mechanical.
Thus, the definition of “digital” as “Computer Science
- of or relating to a device that can read, write, or
store information that is represented in numerical
form” (supra) is particularly relevant to the goods as
characterized by applicant. In view thereof, we find
Serial No. 78626047
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that there is no multistep reasoning involved when the
relevant consumer views DIGITAL PUMP in connection with
the identified goods, “programmable metering pumps for
industrial, medical and laboratory use, and parts and
fittings therefore.” Consumers will immediately
understand that applicant’s pumps are programmable and
that its parts and fittings are for a programmable
pump.
Additionally, we find the definition of “digital”
as “expressed in numerical form, especially for use by
a computer” (supra) to be equally relevant. This
second definition would pertain to a digital pump in
which readings are given in digital, as opposed to
analog, form. Regardless of applicant’s contention
that the actual pump it intends to manufacture is not
“a pump that represents magnitudes in digits,” this
characterization of a “digital pump” by the examining
attorney falls within the scope of the goods as
identified in this intent-to-use application. As so
understood, the mark remains equally merely descriptive
of a significant feature of the identified goods.
We conclude that, when applied to applicant’s services,
the term DIGITAL PUMP immediately describes, without
conjecture or speculation, a significant feature or function
of applicant’s goods, namely that it is a programmable pump.
Serial No. 78626047
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Nothing requires the exercise of imagination, cogitation,
mental processing or gathering of further information in
order for purchasers of and prospective customers for
applicant’s services to readily perceive the merely
descriptive significance of the term DIGITAL PUMP as it
pertains to applicant’s programmable metering pumps.
We do not agree with applicant’s argument that reaching
this conclusion requires dissecting the mark. It is
appropriate to consider the definitions of the individual
terms prior to considering the mark as a whole, which is
what we have done. Then, considering the mark as a whole,
we have found it to be merely descriptive in connection with
the identified goods. There is no question that “digital
pump” is a combined term, where “digital” is an adjective
modifying the noun “pump” and it describes a significant
feature of the pump.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.