Micro Interventional Devices, Inc.

Trademark Trial and Appeal Board

Nov 15, 2013

No. 85446955 (T.T.A.B. Nov. 15, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 15, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Micro Interventional Devices, Inc.
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Serial No. 85446955
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Susan A. Smith of Kenyon & Kenyon, LLP for Micro Interventional Devices, Inc.

William M. Rossman, Trademark Examining Attorney, Law Office 109 (Dan
Vavonese, Managing Attorney).
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Before Grendel, Wellington, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On October 13, 2011, applicant Micro Interventional Devices, Inc. applied to
register the mark MICRO INTERVENTIONAL DEVICES, in standard characters,
for “medical, surgical implants made of artificial material,” in International Class
10.1 On August 3, 2012, applicant disclaimed the exclusive right to use the word
DEVICES apart from the mark as a whole.
The examining attorney has refused registration on the ground that the
applied-for mark is merely descriptive of applicant’s services pursuant to

1 Application Serial No. 85446955, filed pursuant to Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b) (intent to use).
Serial No. 85446955
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Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Applicant timely appealed,
and briefing is complete.
Description of the Record
The examining attorney made the following evidence of record:
• Dictionary definitions, including:
o micro – “Very small or microscopic”2
o intervention – “the act or fact of interfering so as to modify” and
“any measure whose purpose is to improve health or alter the
course of disease”3
o device – “a machine or tool used for a specific task; contrivance”4
o implant – “something (as a graft or device) implanted in tissue”5
• Examples of uses of the phrase “interventional device(s)” in medical
journals and on third-party websites in association with implants and
other medical devices;6 and
• Fourteen existing registrations for medical apparatus in Class 10 that
include disclaimers of the word “micro,” as well as one registration that
includes the word “micro” and is registered pursuant to Section 2(f).7
In one of the registrations of record, for the mark AXCANDIS
MICRO VASCULAR INTERVENTIONS, the identified goods include

2 February 9, 2012 Office action at 11-12 (from education.yahoo.com/reference/dictionary).
3 Id. at 4-7 (from medical-dictionary.thefreedictionary.com).
4 Id. at 8-10 (from collinsdictionary.com).
5 Examining attorney’s brief, 9 TTABVUE 5. We grant the examining attorney’s request
that we take judicial notice of the definition of the noun “implant” from the Merriam-
Webster online dictionary. The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format. In re Jonathan Drew Inc., 97
USPQ2d 1640, 1642 n.4 (TTAB 2011).
6 See February 9, 2012 Office action at 2-3; September 3, 2012 final Office action at 2-21;
April 10, 2013 denial of request for reconsideration at 2-6.
7 See September 3, 2012 final Office action at 22-75. The mark registered pursuant to
Section 2(f) is MICRO PES, Registration No. 2705680. Id. at 25-26.
Serial No. 85446955
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goods identical to applicant’s and the entire phrase “Micro Vascular
Interventions” is disclaimed.8
Applicant submitted the following evidence:
• Printouts of the first two pages of results of a search on Google.com for
the phrase “MICRO INTERVENTIONAL DEVICES,” which appear to
show references only to applicant;9
• A printout from the Trademark Electronic Search System (TESS)
database of a registration for the standard character mark
MICRO SKIN for “ostomy pouches” in Class 10, registered on the
Principal Register without disclaimer;10
• Printouts from the TESS database showing three lists of third-party
applications and registrations, as follows:
o The first 100 of 2,608 results of a search for “live.ld. and
micro.bi. not micro.ds”;11
o The first 100 of 270 results of a search for “010.ic. and live.ld.
and micro.bi”;12 and
o The nineteen results of a search for “010.ic. and live.ld. and
micro.bi. and micro.ds.”13
Applicant submitted the first of the three lists of third-party registrations with its
August 3, 2012 response to Office action, and the second and third with its request
for reconsideration. The examining attorney objected to the lists in its denial of

8 Id. at 51-52, Registration No. 4152262. The identified goods include “surgical implants
made of artificial material, namely medical stents and arterial and vascular grafts, medical
implants comprised of artificial material and instruments for the minimal invasive surgery,
in particular implants made of degradeable and non-degradeable materials.”
9 August 3, 2012 response to Office action at 2-4; March 4, 2013 request for reconsideration
at 2-4.
10 March 4, 2013 request for reconsideration at 5-6, Registration No. 4173724.
11 August 3, 2012 response to Office action at 5-8.
12 March 4, 2013 request for reconsideration at 7-9.
13 Id. at 10-11. We note that copies of fifteen of the registrations on applicant’s list were
made of record by the examining attorney with the September 3, 2012 final Office action.
See supra note 7.
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applicant’s request for reconsideration, but did not object to the first list in the
September 3, 2012 final Office action.
The examining attorney’s failure to advise applicant of the insufficiency of
the first list of registrations when it was proffered during examination constituted a
waiver of any objection to consideration of that list. In re City of Houston, 101
USPQ2d 1534, 1536 (TTAB 2012); Trademark Trial and Appeal Board Manual of
Procedure (TBMP) §§ 1207.03, 1208.02 (3d ed. rev. 2 June 2013). Because applicant
was not so advised, in our discretion, we will consider all three lists of third-party
registrations “for whatever limited probative value such evidence may have.” In re
Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).14
With its reply brief, applicant also attempted to submit (1) a chart listing
sixteen registrations for Class 10 goods incorporating the term “micro” in addition
to the registration for MICRO SKIN referenced supra, (2) copies from the TESS
database of nine of those sixteen registrations, and (3) printouts from applicant’s
website, microinterventional.com. This evidence is untimely and therefore not part
of the record for this case. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); In re
Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013).15

14 We note, however, that the mere submission of a list of registrations does not make the
listed registrations of record and the Board does not consider any information regarding
those registrations other than that provided in the lists. In re Jump Designs LLC, 80
USPQ2d 1370, 1372 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006);
TBMP § 1208.02.
15 We hasten to add that consideration of this evidence would not change the decision.
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Analysis
A mark is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of an ingredient, quality, characteristic, function,
feature, purpose, or use of the goods with which it is used. See, e.g., In re Chamber
of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a
particular mark is merely descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is sought, the context in
which the mark is used, and the possible significance that the mark is likely to have
to the average purchaser encountering the goods or services in the marketplace.
See DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978); In re Eng’g Sys. Corp., 2 USPQ2d 1075, 1076
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
When two or more merely descriptive terms are combined, the determination
of whether the composite mark also has a merely descriptive significance turns on
the question of whether the combination of terms evokes a new and unique
commercial impression. If each component retains its merely descriptive
significance in relation to the goods or services, the combination results in a
composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (PATENTS.COM merely
descriptive of computer software for managing a database of records that could
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include patents for tracking the status of the records by means of the Internet); In
re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (URBANHOUZING merely
descriptive of real estate brokerage, consultation, and listing services); In re Tower
Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely descriptive
of commercial and industrial cooling towers); In re Putman Publ’g Co., 39 USPQ2d
2021, 2022 (TTAB 1996) (FOOD & BEVERAGE ON-LINE merely descriptive of
online news and information service for the food processing industry). However, a
mark comprising a combination of merely descriptive components is registrable if
the combination of terms creates a unitary mark with a unique, nondescriptive
meaning, or if the composite has a bizarre or incongruous meaning as applied to the
goods or services. In other words, we must consider the issue of descriptiveness by
looking at the mark in its entirety.
Applicant has conceded the common, descriptive nature of DEVICES by
disclaiming exclusive rights in that term apart from the mark as a whole. In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). The examining attorney
has made of record dictionary definitions of the other two terms in applicant’s mark,
MICRO and INTERVENTION, as well as evidence showing descriptive or generic
use of the phrase “interventional devices” in the context of medical devices. Based
on this evidence, and viewing the mark as a whole, we find that all three
constituent terms of applicant’s mark retain their descriptive significance in
relation to applicant’s goods, evoking no new or unique commercial impression in
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combination. Cf. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968) (SUGAR & SPICE held not merely descriptive of bakery products).
Applicant argues that the examining attorney improperly dissected its mark
into its component parts, and that when considered as a whole, the mark is
suggestive of “medical, surgical implants made of artificial material” rather than
descriptive of applicant’s goods. Applicant’s argument is based in part on the fact
that there is no record evidence of any use of the entire phrase MICRO
INTERVENTIONAL DEVICES other than by applicant.16 It is well-established,
however, that a lack of third-party use is not dispositive, and a mark may be merely
descriptive even if applicant is the first or only user of it. See In re Phoseon Tech.,
Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); In re Nat’l Shooting Sports Found., Inc.,
219 USPQ 1018, 1020 (TTAB 1983).
Both applicant and the examining attorney submitted evidence and
argument as to whether the word “micro,” as the leading component of the applied-
for composite mark, is merely descriptive of the identified goods. The examining
attorney cites In re Tekdyne, 33 USPQ2d 1949, 1950 n.2 (TTAB 1995), in which
applicant conceded that the term MICRO “means small not only in the medical
field, but in many other fields,” and we affirmed a refusal to register MICRO-
RETRACTOR as merely descriptive of surgical clamps. Applicant, in turn, cites In
re Micro Instrument Corp., 222 USPQ 252 (TTAB 1984), in which a descriptiveness

16 See, e.g., Reply Brief at 5, 7-8.
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refusal was reversed for the mark for “automatic machines for the mass
repetitive production of component parts and parts therefor designed and
manufactured to purchasers’ specifications.” The Board wrote:
In the case before us, there is no evidence of trade usage
or understanding of the term “micro” as readily
identifying either miniature tool parts or miniature
tooling operations and certainly not a large machine or
machinery aggregation which performs the operations
that can produce very small parts or fine machining work;
nor is the term “micro” accompanied by a second highly
suggestive or descriptive term that would make the
association or nex[u]s with miniature tooling or miniature
component capability a clear one.”
Id. at 254-55 (emphasis added) (footnote omitted). In contrast, the applied-for mark
here does include a second highly descriptive or generic phrase. Applicant also cites
In re Scott Paper Co., 180 USPQ 283 (TTAB 1973), in which we reversed a refusal to
register MICRO-WIPES for disposable wipes, finding the term “merely suggestive of
an article which is smaller than normal size and which performs a wiping
operation.” In addition, applicant argues that the lists of TESS search results it
submitted show that the term “micro” is disclaimed in only a small minority of
applications and registrations, in Class 10 as well as other classes.
We do not view the cases cited by applicant (dating back nearly 30 years and
more) or the record evidence as establishing a practice on the part of the Office to
treat the term MICRO as suggestive rather than descriptive for medical devices.
The lists of search results submitted by applicant convey only limited information,
but they do show that many of the results are for applications rather than
Serial No. 85446955
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registrations, which have no evidentiary value concerning how the Office has
treated the term MICRO. TBMP § 1208.02 (“Third-party applications, as opposed
to registrations, have no probative value other than as evidence that the
applications were filed.”). In addition, some of the listed marks are for single words
incorporating “micro” (e.g., MICROSTEED, MICROSLIDE, MICROVISK) rather
than “micro” standing alone, possibly distinguishing them from applicant’s mark.
With respect to the registrations of record for MICRO-formative marks for
medical apparatus, at least fourteen include disclaimers of the word “micro.”
Moreover, we view MICRO SKIN, the only mark of record registered on the
Principal Register without a showing of acquired distinctiveness in which “micro” is
not disclaimed, as distinguishable from the applied-for mark because it appears to
have a suggestive quality in association with ostomy pouches.
More importantly, even if applicant had succeeded in establishing that the
Office commonly treats the term “micro” as suggestive of Class 10 goods, prior
decisions in other applications are not binding on the Board, and each case must
stand on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001); In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519
(TTAB 1977).
We have carefully considered applicant’s arguments and evidence, but have
not found them persuasive. Viewing applicant’s mark MICRO INTERVENTIONAL
DEVICES as a whole, we find that each of its constituent terms retains its
descriptive meaning in combination. The phrase conveys information about the
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identified goods “medical, surgical implants made of artificial material,” that is,
that they are very small interventional devices. We therefore find applicant’s mark
to be merely descriptive within the meaning of Section 2(e)(1) in association with
applicant’s goods.
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(e)(1) of the Trademark Act is affirmed.