Metalwerks PMD, Inc.

Trademark Trial and Appeal Board

Dec 10, 2009

No. 77362611 (T.T.A.B. Dec. 10, 2009)

_______

Mailed:
10 December 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Metalwerks PMD, Inc.
________

Serial No. 77362611
_______

Lynn J. Alstadt of Buchanan Ingersoll & Rooney PC for
Metalwerks PMD, Inc.

Eugenia K. Martin, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Drost, Zervas, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 2, 2008, applicant Metalwerks PMD, Inc.
filed an intent-to-use application to register the mark
STENTALLOY (in standard character form) on the Principal
Register for wrought and unwrought metal alloys in sheet,
bar, coil, wire, strip and plate form having mechanical
properties, purity and corrosion resistance suitable for
use in medical devices in Class 6. Serial No. 77362611.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77362611
2
The examining attorney has refused to register
applicant’s mark on the ground that it is merely
descriptive of the identified goods under Section 2(e)(1)
of the Trademark Act. 15 U.S.C. § 1052(e)(1).
The examining attorney’s argument is that the “word ‘alloy’
describes the specific goods themselves, as identified by
the Applicant – metal alloys… [T]he word ‘stent’ is
descriptive because it identifies the purpose of the
alloys, namely, for use in medical devices, a class of
goods which includes stents.” Brief at unnumbered pp. 3-4.
“The goods are alloys for use in stents.” Brief at 5.
Applicant maintains that the examining attorney has
“redefined the goods as ‘alloys suitable for use in
stents’… The goods recited in the present application are
alloys having specific properties, not stents, or stents
made from an alloy, or alloys formed into stents. The word
‘stent’ does not describe these properties.” Brief at 2.
After the examining attorney made the refusal final,
applicant appealed to this board.
For a mark to be merely descriptive, it must
immediately convey “knowledge of a quality, feature,
function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007). See also In re MBNA America Bank
Ser. No. 77362611
3
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
(“A mark is merely descriptive if it immediately conveys
information concerning a quality or characteristic of the
product or service”); In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1009 (Fed. Cir. 1987). To be merely descriptive, a
term need only describe a single significant quality or
property of the goods. Gyulay, 3 USPQ2d at 1009; Meehanite
Metal Corp. v. Int’l Nickel Co., 262 F.2d 806, 120 USPQ
293, 294 (CCPA 1959). While we must consider the mark in
its entirety, it “is perfectly acceptable to separate a
compound mark and discuss the implications of each part
thereof … provided that the ultimate determination is made
on the basis of the mark in its entirety.” In re Hester
Industries, Inc., 230 USPQ 797, 798 n.5 (TTAB 1986).
The examining attorney has submitted a definition of
stent as “Medicine/Medical. A small, expandable tube used
for inserting in a blocked vessel or other part.”
www.dictionary.com. A stent is a type of medical device.
Applicant has also identified its goods as “metal alloys.”
An alloy is “a substance composed of two or more metals, or
a metal or metals with a nonmetal, intimately mixed, as by
fusion or electro-deposition.” The Random House Dictionary
of the English Language (unabridged) (2d ed. 1987). We
take judicial notice of this definition. University of
Ser. No. 77362611
4
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213
USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Applicant argues that the term stent “does not
describe a wrought or unwrought alloy because a stent could
be molded or extruded plastic.” Brief at 3. The evidence
(emphasis added) does show that medical stents can be made
of plastic or metals and that metal stents are often, if
not normally, made from metal alloys.
Nitinol1 alloy stents are in frequent use in
recanalizing malignant airway stenoses.
www3.interscience.wiley.com/journal

Coronary Stenting with Magnesium-Alloy Absorbable
Metal Stent…
The alloy stent is made of 93% magnesium and 7% rare-
earth metals.
www.medscape.com

Presenting data on a new bioabsorbable magnesium-alloy
stent, investigators showed that the bare-metal stents
met its primary end point…
www.theheart.org

Cobalt-chromium-molybdenum alloy stent and stent-
graft…
Other materials used for self-expanding stent
filaments are 316 stainless steel and MP35N alloy…
Pat. No. 4,800,882 relates to a stent assembled from a
drawn stainless steel wire. Other known stents are
fabricated from drawn, extruded, or rolled nickel-
titanium alloy ribbon.
www.freepatentonline.com

1 Nickel-titanium alloy. http://jtcs.ctsnetjournals.org.
Ser. No. 77362611
5
The authors developed ABI alloy, which mechanically
resembles stainless steel 316. The main elements of
ABI alloy are palladium and silver…
In the third examination, the ABI alloy stent model
was compared with the nitinol stent…
The struts of the ABI alloy stent model are visible as
black dots.
http://radiology.rsnajnls.org.

Dr. Levy’s team created a unique-water-soluble
compound polyallylamine biphosphonate, that binds to
the stent’s metal alloy surface in a layer with the
thickness of only one molecule.
http://stokes.chop.edu.

The titanium alloy intratracheal stent adequately
fulfilled the requirements of a temporary intraluminal
airway splint…
http://jtcs.ctsnetjournals.org

The Absorbable Magnesium-Alloy Stent
www.circ.ahajounals.org

Evaluation of new plastic stents for malignant biliary
obstruction…
www3.interscience.wiley.com/journal

Prospective evaluation of a new, self expanding
plastic stent for inoperable esophageal strictures…
It would be ideal if optimal dysphagia relief were
achieved that combined the advantages of the plastic
and metallic stents… We report our experience with
this new self-expanding plastic stent, the cost of
which is half that of metal stents.
http://resources.metapress.com

Plastic stents for heart patients
Researchers … in Japan have developed biodegradable
plastic stents… The development was led by Hideo
Tamai, who was searching for an alternative to the
metallic stents currently used.
www.designnews.com

The evidence shows that stents are made of metal
alloys and that there is nothing unusual about the use of
Ser. No. 77362611
6
the term “alloy stent” to describe a stent made with a
metal alloy. While applicant’s goods are not stents
themselves, they are metal alloys in sheet, bar, coil,
strip and plate form that are suitable for medical devices.
Applicant identifies its goods as metal alloys having the
“mechanical properties, purity and corrosion resistance
suitable for use in medical devices.” Thus, applicant’s
term describes alloys that can be used to make a particular
type of stents, i.e., stents made from metal alloys. In re
Viventia Biotech Inc., 80 USPQ2d 1376, 1380 (TTAB 2006)
(The term biological preparations for use in the
manufacture of biopharmaceutical and biotechnology products
“can encompass preparations that are used to make armed
antibodies, and therefore it directly conveys information
about a significant feature of the preparations… Thus,
ARMED ANTIBODIES directly describes a characteristic of
these goods”).
We add that we have considered not only the meaning of
the individual terms but the mark as a whole because the
combined terms may have a non-descriptive meaning. See In
re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968) (SUGAR & SPICE not merely descriptive of bakery
products inasmuch as it is suggestive of a nursery rhyme).
Furthermore, we must determine whether a mark is merely
Ser. No. 77362611
7
descriptive by considering the mark in relation to the
particular goods for which registration is sought and not
in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) (“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”). It is clear that
in the context of metal alloys for use in medical devices,
the purchasers of metal alloys would understand that the
term STENTALLOY is merely descriptive of these alloys that
could be used to manufacture metal stents.
Applicant also argues that “there is no evidence of
any use of ‘stentalloy’ or ‘stent alloy.’” Brief at 4. We
point out that there are many uses of record of the term
“alloy stent.” The reverse of the order in this case is
not significant because the terms “alloy stent” or “stent
alloy” for metal alloys that can be used to make stents
would have the same meaning. Also, the absence of a space
between the words is not significant. In re Carlson, 91
USPQ2d 1198, 1200 (TTAB 2009) (“We find, first, that the
compression of the words URBAN HOUSING into a single term,
URBANHOUZING, still conveys the commercial impression of
two words. In other words, consumers would recognize the
Ser. No. 77362611
8
mark as consisting of the separate elements URBAN and
HOUZING”); In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043
(TTAB 2007) (“THEATL is simply a compressed version of the
descriptive term THE ATL without a space between the two
words. Without the space, THEATL is equivalent in sound,
meaning and impression to THE ATL and is equally
descriptive of applicant’s goods”).
Even if applicant is the only user of the term, that
fact does not mean that its mark is suggestive rather than
merely descriptive. In re Sun Microsystems, Inc., 59
USPQ2d 1084, 1087 (TTAB 2001) (“The fact that AGENTBEANS
does not appear in a dictionary is not determinative.
Likewise, the fact that applicant may be the first and/or
only entity using the phrase AGENTBEANS is not dispositive
where, as here, the term unequivocally projects a merely
descriptive connotation”) (citation omitted); In re Acuson,
225 USPQ 790, 792 (TTAB 1985) (“A descriptive term used
first or even only by an applicant is not registrable as
long as the relevant purchasing public perceives of the
term as describing the good”); and In re Gould, 173 USPQ
243, 245 (TTAB 1972) (“The fact that applicant may be the
first and possibly the only one to utilize this notation in
connection with its services cannot alone alter the basic
Ser. No. 77362611
9
descriptive significance of the term and bestow trademark
rights therein”).
Here, when the term STENTALLOY is used in the context
of metal alloys used to make medical devices, it will
immediately describe a feature or purpose of applicant’s
goods, i.e., that they have the “mechanical properties,
purity and corrosion resistance suitable for use in medical
devices” such as stents. In re Polo Int’l Inc., 51 USPQ2d
1061, 1063 (TTAB 1999) (“If applicant produced goods
related to the medical field, or specifically related to
physicians, then the term ‘DOC’ would be readily understood
by the public as referring to ‘doctor.’ However, here
applicant’s goods are computer software for document
management, and ‘DOC’ will be readily understood as
referring to documents”).
Decision: The examining attorney’s refusal to
register applicant’s mark STENTALLOY under Section 2(e)(1)
of the Trademark Act is affirmed.