Nidek Co., Ltd.

Trademark Trial and Appeal Board

Feb 1, 2005

No. 76412719 (T.T.A.B. Feb. 1, 2005)

Mailed:
February 1, 2004
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nidek Co., Ltd.
________

Serial No. 76412719
_______

Gary D. Krugman of Sughrue Mion, PLLC for Nidek Co., Ltd.

Alec Powers, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Bucher and Drost, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Nidek Co., Ltd. seeks registration on the Principal
Register of the stylized mark shown below:

for ophthalmic equipment identified in the application, as
amended, as a “refractive error and corneal aberration
analyzer” in International Class 10.1

1 Application Serial No. 76412719 was filed on May 22, 2002
based upon applicant’s allegation of use in commerce with the
United States at least as early as October 22, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76412719
- 2 -
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that the
mark is merely descriptive when considered in relation to
applicant’s identified goods, i.e., that the term “OPD-
Scan” immediately informs potential purchasers about the
features and functions of applicant’s goods.
Both applicant and the Trademark Examining Attorney
have fully briefed this appeal, but applicant did not
request an oral hearing before the Board. We affirm the
refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes
or uses of the goods or services with which it is used or
is intended to be used. A mark is suggestive, and
therefore registrable on the Principal Register without a
showing of acquired distinctiveness, if imagination,
thought or perception is required to reach a conclusion on
the nature of the goods or services. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Serial No. 76412719
- 3 -
The question of whether a particular term is merely
descriptive is not decided in the abstract. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the mark in relation to the
goods or services for which registration is sought, the
context in which the mark is used or is intended to be
used, and the significance that the mark is likely to have
on the average purchaser encountering the goods or services
in the marketplace. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
While applicant has conceded that the term “OPD” may
serve as an initialism for “optical path difference,”
applicant also argues that the term “OPD-Scan,” when
considered in its entirety, does not merely describe any
feature, function, characteristic or attribute of
applicant’s goods. Applicant contends that although this
initialism comprises a technical term in the field of
optics, it cannot be said to directly or immediately convey
any information about applicant's specific ophthalmological
Serial No. 76412719
- 4 -
instruments. Applicant applies the general case law for
determining that dividing line between merely descriptive
terms and suggestive terms, by arguing as follows:
While Applicant concedes that imagination
and mature thought can be utilized to
analyze the mark as it applies to
Applicant’s specific goods, it is submitted
that such mature thought and imagination is
necessary in order to determine the nature
of Applicant’s goods from the mark. This
is, Applicant submits, a classic example of
a suggestive mark. Applicant’s mark OPD-
SCAN, as applied to Applicant’s specific
product, suggests in a general way that the
goods have something to do with an OPD map
and that there is some scanning function of
the retina that occurs but it is submitted
that the mark OPD-SCAN does not immediately
or directly describe any feature or
characteristic of Applicant's goods.

Applicant’s appeal brief, p. 6 [emphasis in original].
In further support of its position, applicant has
submitted a number of third-party registrations for optical
and medical products which marks included either the term
OPD or the term SCAN as a component of the composite marks.
Moreover, applicant argues that none of applicant’s
identified competitors even mentions or refers to “optical
path difference” or “OPD” in any of the promotional
materials of these companies. Applicant also points out
that the involved mark was registered both in Japan and in
the European Union, demonstrating that “at least two other
intellectual property offices have determined that this
Serial No. 76412719
- 5 -
term is not merely descriptive of the goods for which
registration is sought herein.” Applicant’s appeal brief,
p. 7. Finally, applicant reminds the Board that, in the
event that the descriptiveness determination is considered
to be a close question, any doubt on this issue should be
resolved in favor of the applicant with the mark being
published for opposition so that any third party believed
to be damaged by the registration of applicant’s mark, can
file an opposition. In re The Rank Org., Ltd. 222 U5PQ 324
(TTAB 1984). Applicant’s appeal brief, p. 7.
By contrast, in support of his refusal of
registration, the Trademark Examining Attorney submitted an
excerpt from an “Acronym Finder” website showing twenty
entries for the initialism, “OPD,” one of which is “optical
path difference.” The Examining Attorney also submitted
LEXIS/NEXIS and Internet excerpts where “OPD” is used as an
abbreviated form of the term “optical path difference.”
With this evidence, the Trademark Examining Attorney
contends that the term OPD is a commonly-used initialism
for the “optical path difference” measurement technology
relied upon in this equipment. Furthermore, based upon
various dictionary definitions and applicant’s webpages,
the Trademark Examining Attorney contends that the term
“scan” merely describes ophthalmic equipment that uses an
Serial No. 76412719
- 6 -
infrared light slit beam to scan the retina. The Trademark
Examining Attorney argues further that when these two
merely descriptive components (“OPD” and “Scan”) are
combined, the composite mark is still not registrable as it
does not comprise a double entendre nor does it create a
novel or incongruous term. See In re Colonial Stores Inc.,
394 F.2d 549, 157 USPQ 382 (CCPA 1968).
We start our analysis of this case with the fact that
OPD is shown in the acronym website to be an accepted
abbreviation for “optical path difference.” In its brief,
applicant has conceded as much: “While the term OPD may
serve as an acronym for optical path difference, it is a
technical term in the optics field … .” Applicant’s appeal
brief, p. 6. Secondly, the Trademark Examining Attorney
has shown from dictionary definitions that the term “scan”
is an appropriate term to convey information about
ophthalmic equipment that uses an infrared light slit beam
to scan the retina as does applicant’s refractive error
analyzer. See further discussion infra.
The Trademark Examining Attorney has placed into the
record a number of scholarly papers drawn from commercial
and university sites (from the Internet and from the
Medline database of Lexis/Nexis electronic files) that
serve as a veritable primer on applied physics and the
Serial No. 76412719
- 7 -
refractive principles of light. Some articles are written
in the context of optical microscopy, and explain how the
refraction of light occurs when it passes through an
object.2 One of the Lexis/Nexis articles refers to “Optical
Path Difference (OPD)” in the context of an experiment on
the corneas of rabbits’ eyes.3 The Olympus site lays out
the mathematical equations for calculating the OPD from the
microscopic measurements of the object and the refractive
index.4 Several additional websites use the term in the
context of telescopes, hence involving an Optical Path
Difference, or OPD, of much larger orders of magnitude
(e.g., involved with astronomy and astrophysics) than is
the case with optical microscopy.5 We find in all of these

2 TITLE: Digital Hilbert transformation for separation
measurement of thicknesses and refractive indices of
layered objects by use of a wavelength-scanning heterodyne
interference confocal microscope, AUTHORS: Yuuki Watanabe &
Ichirou Yanaguchi, Applied Optics, vol. 41, iss. no. 22,
pp. 4497-4502.
TITLE: A scanning microinterferometer with correction
of errors caused by overlapping 'ghost' images. AUTHORS: De
Josselin De Jong JE, Loeve J, Richter H, De Sterke H, Ploem
JS, J Microsc. 1979 Apr; vol. 115, iss. no. 3, pp. 257-69.
3 TITLE: Analysis of birefringence during wound healing
and remodeling following alkali burns in rabbit cornea.
AUTHORS: Huang Y.; Meek K.M.; Ho M.W.; and Paterson C.A.,
Exp Eye Res. 2001 Oct; vol. 73, iss. no. 4, pp. 521-32.
4 http://www.olympusmicro.com/primer/java/contrast/phaserefract/
5 TITLE: Optical Path Difference Fluctuations at the CHARA
Interferometric Array, AUTHORS: A. Merand (NOAO & DESPA), T.A.
ten Brummelaar, H.A. McAlister (CHARA), S.T. Ridgway (NOAO &
CHARA), J. Sturmann, L. Sturmann, N.H. Turner, W.G. Bagnuolo, M.
Hrynevych, M.A. Shure (CHARA),
http://www.aas.org/publications/baas/v33n2/aas198/667.htm;
Serial No. 76412719
- 8 -
articles, the initialism “OPD” is used substantially
synonymously with the term “Optical Path Difference.”
We find that the evidence of record demonstrates the
fact that OPD, while admittedly a technical term, would be
readily understood by the relevant consumers, including
ophthalmologists, optometrists, opticians, and other
optical professionals. The term OPD, within the larger
designation, “OPD-Scan,” would immediately convey to them
the nature of the technology at the heart of this product,
as applicant’s goods obviously use OPD technology.
As further corroboration of our conclusion that the
mark is merely descriptive, we turn to applicant’s own
webpages and sales brochure. The webpages explain what
applicant’s refractive error analyzer measures and how it
works. In general, its refractive error analyzer measures
the distance light travels in different paths going through
the eye. Applicant’s webpages say, “The retina is
scanned … ” by the refractive error analyzer using an

TITLE: Real-time optical path difference compensation
at the Plateau de Calern I2T interferometer, AUTHORS: B.
Sorrente, F. Cassaing, G. Rousset, S. RobbeDubois and Y.
Rabbia, http://www.edpsciences.org/articles/aa/abs/2001/02/
aads1678/aads1678.html (Received 6 January 1999/Accepted
14 August 2000);
TITLE: Physics@Sydney, The Optical path length
compensation (OPLC) system,
http://www.physics.usyd.edu.au/astron/susi/susi_path.h
tml

Serial No. 76412719
- 9 -
infrared light slit beam. Applicant’s use of the word
“scan,” either as a verb or as a noun, is consistent with
the dictionary entry placed into the record by the
Trademark Examining Attorney.6
According to applicant’s webpages, the analyzer
captures the reflected light with an array of rotating
light detectors to create a refractive map (or “an OPD
map”). Light that has farther to travel will have more of
a phase difference. The map is produced by comparing the
phase differences off of the same incoming beam through
different paths in the eye.
Specifically, applicant’s website, in describing the
principles of operation, says, “The OPD-Scan utilizes the
principle of skiascopic phase difference for refractive map
measurement.” Elsewhere, the record discusses how the
involved refractive error analyzer uses “dynamic
skiascopy.” The word “skiascopy,” like the word
“retinoscopy,” refers to “the medical examination and

6 Dictionary definitions of "Scan" including: "(verb) (1.)
to examine closely; (2.) To look over quickly and systematically;
... (7.) Medicine: To examine (a body or body part) with a CAT
scanner or similar scanning apparatus. (noun) ... (3.a.)
Examination of a body or bodily part by a CAT scanner or similar
scanning apparatus; (3.b.) A picture or an image produced by
this means..."
Serial No. 76412719
- 10 -
analysis of the refractive properties of the eye.”7 This
“refractive power analyzer” … “[c]reates an OPD map … .”
The required specimen of use filed with the
application papers on May 22, 2002 was a black-and-white
photocopy of the front cover of a brochure put out by
applicant. In the center of the specimen is a photograph
of the ARK-10000 model of ophthalmic equipment sold under
the designation “OPD-Scan.” On the top of the specimen,
right above the term OPD-Scan, is printed the phrase,
“Optical Path Difference Scanning System”:

The designation “Optical Path Difference Scanning
System” appears to be a highly-descriptive term for the
involved product. Combined with the Lexis/Nexis and
Internet evidence reviewed above, we find that the
initialism OPD is an accepted abbreviation used

7 skiascopy (See retinoscopy). The American Heritage®
Dictionary of the English Language, (4th ed. 2000).
retinoscopy: (noun) Medical examination and analysis of
the refractive properties of the eye. Also called skiascopy.
The American Heritage® Dictionary of the English Language, (4th
ed. 2000). The Board may take judicial notice of dictionary
definitions. 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)

Serial No. 76412719
- 11 -
synonymously with the term “Optical Path Difference.”
Modern Optics v. Univis, 234 F.2d 504, 110 USPQ 293 (CCPA
1956). The remaining portion of the larger phrase on
applicant’s brochure is “Scanning System” – wording
applicant has placed directly above the word “Scan.” On
applicant’s webpages and brochure, we see that both “OPD”
and “scan” are used separately in a highly-descriptive
manner in connection with discussions of its ARK-10000 OPD-
Scan equipment. We further find that when these two
components are combined into the composite term, OPD-Scan,
the individual words do not lose their descriptive
significance, and that the mark OPD-SCAN is also merely
descriptive. Relevant consumers viewing the mark in
connection with the goods would immediately understand that
the goods use optical path difference technology in an
analyzer designed to scan the retina. It takes no
imagination to know that the combined term, “OPD-Scan” is a
shorthand term for applicant’s “Optical Path Difference
Scanning System.”
In other arguments, applicant contends that in the
past the United States Patent and Trademark Office has
determined that these individual terms are not merely
descriptive for goods in the optical or medical equipment
fields:
Serial No. 76412719
- 12 -
In addition to the foregoing, Applicant has
submitted third party registrations of marks
which include OPD and SCAN for optical or
medical products. While it is recognized
that these third party registrations are not
binding on any descriptiveness determination
in this case, they are probative to show
that [the] United States Patent and
Trademark Office, on at least several past
occasions, has had an occasion to determine
the descriptive nature of these terms in the
optical/medical field and has determined
that they are not descriptive.

Applicant’s appeal brief, p. 7. Of course, the fact
that third parties registered marks containing the
element SCAN for other unrelated products in the
medical field, or registered marks containing the term
OPD for medical equipment clearly not involving the
technology of optical path difference (e.g., lancets),
or even optical equipment apparently not involving
such technology (e.g., display units for projectors),
is not persuasive of a different result herein.8
Suffice it to say that these registrations are of
little help in determining the registrability of the

8 Reg. No. 2637255, SCAN-X for “computer software for
analyzing data generated by laser scanners on video metrology
systems”; Reg. No. 2634591, I-SCAN for “computer hardware and
software for pressure distribution measurement in the fields of
medical, dental, industrial and consumer products”; Reg. No.
2569787, BIOSCAN for “automatic ion chromatography apparatus,
namely, carbohydrate analyzer, electrochemical multifunctional
detector, column oven”; Reg. No. 2328141, OPD for “Display units
for optical projection of three-dimensional images”; and Reg. No.
1494991, OPD for “lancets for medical use.”

Serial No. 76412719
- 13 -
mark at issue in this case. As has often been noted
by the Board, each case must be decided on its own set
of facts. None of these marks involved this
particular combination of terms, and thus the facts in
those records (to which we are not privy) would
obviously be different. Moreover, the Board is not
bound by actions taken by Trademark Examining
Attorneys. In re National Novice Hockey League, Inc.
222 USPQ 638, 641 (TTAB 1984) and In re Scholastic
Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977).
While uniform treatment under the Trademark Act is
highly desirable, our task here is to determine, based
upon the record before us, whether applicant’s
asserted mark is registrable.
Applicant points out (applicant’s appeal brief, p. 7)
that this mark has been registered in Japan as well as in
the European Union:
Applicant has also submitted evidence to
demonstrate that Applicant's mark herein has
been accepted for registration both in Japan
and in the European Union. Again, while it
is recognized the successful obtaining of
registrations of the mark in Japan and in
the European Union is not binding on the
United States Patent and Trademark Office,
they were brought to the Examining
Attorney's attention to demonstrate that at
least two other intellectual property
offices have determined that this term is
Serial No. 76412719
- 14 -
not merely descriptive of the goods for
which registration is sought herein.

While applicant acknowledges that registration by two
other intellectual property offices is not binding on the
United States Patent and Trademark Office, this fact is
actually of no consequence in the determination of mere
descriptiveness under the Trademark Act in this country.
Accordingly, we conclude that the term OPD-Scan
immediately describes applicant’s goods, and therefore
registration on the Principal Register is barred by Section
2(e)(1) of the Trademark Act.
Decision: The refusal to register this mark on the
Principal Register based upon Section 2(e)(1) of the Lanham
Act is hereby affirmed.