Olympus America Inc.

Trademark Trial and Appeal Board

Nov 17, 1997

No. 74482275 (T.T.A.B. Nov. 17, 1997)

Paper No. 20
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOVEMBER 17, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Olympus America Inc.
________
Serial No. 74/482,275
_______
Edward W. Greason, William T. Boland, Jr. and Allen J. Baden of
Kenyon & Kenyon for applicant.
David H. Stein, Trademark Examining Attorney, Law Office 103
(Kathryn Erskine, Managing Attorney).
_______
Before Sams, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Olympus America Inc. has filed an application to
register the term "BX" for "microscopes."1

1 Ser. No. 74/482,275, filed on January 24, 1994, which alleges a date
of first use anywhere of January 27, 1993 and a date of first use in
commerce of April 22, 1993.
Ser. No. 74/482,275
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant’s goods, the term
"BX" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not held.2 We reverse the refusal to register.
The Examining Attorney, relying upon a listing of the
term "BX" in 1 Acronyms, Initialisms & Abbreviations Dictionary
(18th ed. 1994) at 555 as meaning "Biopsy [Medicine]" and nine
excerpts from a search of such term in the Lexis/Nexis "MEDLINE"
database3 in which it is used as a shorthand for "biopsy," 4

2 Applicant, in a communication filed with a certificate of mailing
dated August 1, 1996, indicated that "it previously has submitted a
Request for Oral Hearing of Appeal (filed December 20, 1995)," no
such request is in the record file. Nevertheless, inasmuch as
applicant's communication was submitted within the time permitted for
requesting an oral hearing, the Board on October 22, 1996 issued an
order scheduling an oral hearing in this matter for March 20, 1997 at
10:00 a.m. Neither applicant's counsel nor the Examining Attorney,
however, entered an appearance, so the scheduled hearing was
canceled.
3 The following examples (emphasis added) are representative:
[P]redictors of progression of IgA nephropathy (IgAN)
were investigated by multivariate life table analysis,
using Cox's proportional hazard model, in 225 patients
with IgAN diagnosed by renal biopsy (Bx). .... Mean age
at Bx was 32.5 years. -- Clinical Nephrology, April
1994; and
[P]atients were divided into the following two
groups: Group A ... cases in which there were fewer
intraglomerular C3-D at the second biopsy (2nd- Bx) than
at the first biopsy (1st- Bx); and Group B ..., those in
which the amount of C3-D at the 2nd- Bx was greater than
or equal to that at the 1st- Bx. -- American Journal of
Kidney Disease, March 1994.
Ser. No. 74/482,275
3
argues that as applied to microscopes which are used, inter alia,
for viewing biopsy specimens, it is clear that "the term 'BX' has
recognized generic significance as an acronym equivalent of the
term 'biopsy.'" In view thereof, and since applicant's goods
"are expensive, specialized instruments of little or no use to
those without the medical, scientific and/or technical training
and expertise required for their use," the Examining Attorney
maintains that "such expert consumers will be well aware of the
significance of the term 'BX' as a shorthand for 'biopsy' and
will, furthermore, have little difficulty in making the
connection required to recognize the merely descriptive
significance as applied to the goods when using them to review
biopsy specimens."
Applicant, while admitting in its supplemental brief
that the evidence furnished by the Examining Attorney shows that
"BX is a known acronym for 'biopsy,'" nevertheless contends that,
at most, such term would be suggestive to only a limited class of
purchasers and/or users of its microscopes. Referring to both a

4 We judicially notice, for instance, that The Random House Dictionary
of the English Language (2d ed. 1987) at 211 defines "biopsy" as
"Med.--n. 1. the removal for diagnostic study of a piece of tissue
from a living body. 2. a specimen obtained from a biopsy." It is
settled that the Board may properly take judicial notice of
dictionary definitions. See, e.g., In re Hartop & Brandes, 311 F.2d
249, 135 USPQ 419, 423 (CCPA 1962); Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); and
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Ser. No. 74/482,275
4
brochure for its goods5 and the results of its search of the
Nexis database,6 applicant asserts in particular that (footnote
omitted):7
The brochure refers to the "BX Microscope
Series" or simply the "BX Series," thus
employing BX as a trademark, and not as the
name of the goods. Furthermore, the brochure
does not in any way link "BX" with biopsy, or
intimate that the microscopes discussed
therein are intended specifically or
primarily for use in biopsies. The word
"biopsy" is mentioned nowhere in the
brochure's 23-page discussion of Applicant's
microscopes. The brochure consistently uses
the generic term "specimen" to refer to the
samples to be analyzed using Applicant's
microscopes.
It is no surprise that Applicant's
brochure makes no mention of "biopsies."
Applicant's microscopes, as is evident from
the brochure, are intended to be used in a
broad array of settings for a virtually
limitless number of applications. The
brochure states that "the BX Series is the
ideal choice to meet the uncompromising ...
requirements of research scientists and
clinical laboratories, both now and into the
21st century." ....
As the brochure also makes clear,
Applicant's microscopes are not specifically

5 Portions of the brochure, which contain facsimiles of applicant's
goods, were submitted as specimens when the application was filed.
6 Specifically, a search on October 27, 1995 of the "ALLNWS" file of
the "NEWS" library using the search request "BX W/40 MICROSCOP!"
retrieved only a single story, entitled "Molecular genetics of the
bithorax complex in Drosophila melanogaster," which appeared in the
July 1, 1983 edition of the journal Science.
7 Although both the brochure and the search results were introduced as
attachments to applicant's initial brief and, thus, were technically
untimely under Trademark Rule 2.142(d), we have considered such
evidence inasmuch as a remand of the application was subsequently
requested and granted in order for the Examining Attorney to meet
such evidence through the introduction of the previously noted
excerpts from his Nexis/Lexis search of the "MEDLINE" database.
Ser. No. 74/482,275
5
targeted to those medical technicians who
analyze tissue obtained via biopsies for
diagnostic purposes. Those clinicians
performing that specific function represent
but one small subset of the entire set of
possible users of Applicant's microscopes.
Accordingly, Applicant's brochure in no way
suggests that the mark "BX" has any
connection with the term "biopsy," nor does
it employ the mark in a way that would
indicate that "BX" describes, or even
suggests, anything about the features or
functions of Applicant's products.
In further support of its argument that
"BX" is not [merely] descriptive of
microscopes, Applicant notes that a NEXIS
search ... for incidences of "BX" within 40
words of "microscope," turned up only a
single reference. In that single reference,
"BX" was used as an abbreviation for bithorax
mutant, and not as an acronym for "biopsy."
....
Applicant, in addition, contends that even to medical
technicians, a multi-step process of mental reasoning would be
required in order to derive any informative content inasmuch as
the term "'BX' does not directly and immediately connote anything
about the nature of Applicant's microscopes." In consequence
thereof, applicant insists that such term is not merely
descriptive of its goods.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Ser. No. 74/482,275
6
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used on or in connection with those goods or services
and the possible significance that the term would have to the
average purchaser of the goods or services because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Consequently, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark alone
is not the test." In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
On the other hand, a mark is suggestive if, when the
goods or services are encountered under the mark, a multistage
reasoning process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
Ser. No. 74/482,275
7
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985). Any doubt as to
whether a mark is merely descriptive or suggestive is resolved,
in accordance with the Board's policy, in favor of the applicant
by allowing publication of the mark for opposition. See, e.g.,
In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981) and
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
While the record reflects that the term "BX" signifies,
as applicant concedes, the word "biopsy" and it is plain that
microscopes, like many other laboratory instruments, would
frequently be employed in the diagnostic study of tissue samples,
we concur with applicant that medical technicians, researchers
and scientists would not immediately or directly regard the term
"BX" as describing any significant attribute or function of
applicant's goods. Instead, the purchasers, users and/or
prospective customers thereof would have to pause and reflect on
the significance of the term "BX" in order to understand that
applicant's products may be particularly useful in or conducive
to the performance of a biopsy. However, as pointed out by
applicant, nothing in its product brochure supports such an
Ser. No. 74/482,275
8
interpretation, nor is there anything in the scientific or
medical literature which indicates that certain microscope
designs or features specifically lend themselves to or are more
suitable for the kind of diagnostic study of tissue samples which
is known as a biopsy or, for short, BX. The record, on the
contrary, demonstrates that there is apparently no such
instrument as a biopsy or BX microscope, nor is there anything
which shows that knowledgeable and highly trained medical and
scientific personnel, who would be aware that the term "BX"
typically connotes the word "biopsy," would view such term
descriptively in relation to applicant's microscopes or would
otherwise regard it as lacking in trademark significance.
Consequently, we agree with applicant that actual and
prospective customers and users for its products would be left to
speculate as to what particular function(s) or other aspect(s)
thereof the term "BX" refers. Only after reflection, or through
the exercise of a multistage reasoning process, would such
persons possibly conclude that applicant's microscopes may
somehow be especially useful for biopsies. The term "BX" is
therefore suggestive rather than merely descriptive of
applicant's goods.
Decision: The refusal under Section 2(e)(1) is
reversed.
J. D. Sams
Ser. No. 74/482,275
9
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board