Siemens Medical Solutions USA, Inc.

Trademark Trial and Appeal Board

Apr 24, 2009

No. 78974960 (T.T.A.B. Apr. 24, 2009)

Mailed: April 24, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Siemens Medical Solutions USA, Inc.
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Serial No. 78974960
Filed: September 14, 2006
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Marie Anne Mastrovito, Abelman, Frayne & Schwab for Siemens
Medical Solutions USA, Inc.

David Yontef, Trademark Examining Attorney, Law Office 105,
Thomas G. Howell, Managing Attorney.
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Before Quinn, Holtzman, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of SILICON ULTRASOUND (in
standard characters) for “ultrasound devices, namely,
medical ultrasound apparatus, ultrasound transducers made
out of silicon wafer” in International Class 10.1
Registration has been finally refused pursuant to
Trademark Act § 2(e)(1); 15 U.S.C. § 1052(e)(1), on the
ground that applicant’s mark is primarily merely
descriptive of the identified services.
We affirm.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78974960
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I. Descriptiveness
A. Applicable Law
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the products for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). In other words, the issue is whether someone
who knows what the products are will understand the mark to
convey information about them. In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In
re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order

1 Based upon the allegation of a bona fide intent to use the mark
in commerce.
Serial No. 78974960
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to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363,
364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209
USPQ 165, 166 (TTAB 1980). Even where individual terms are
descriptive, combining them may evoke a new and unique
commercial impression. If each component retains its
merely descriptive significance in relation to the goods,
without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., 64 USPQ2d at 1317-
1318.
B. Discussion
Applicant’s goods are identified as “ultrasound
devices, namely, medical ultrasound apparatus, ultrasound
transducers made out of silicon wafer.” It is thus
undisputed that ultrasound equipment can be made using
“silicon,” and that applicant’s goods actually employ
silicon. The record further makes clear that “silicon” is
not merely an incidental component of applicant’s
ultrasound apparatus. In fact, the use of silicon in
ultrasound transducers is central to a new generation of
ultrasonic imaging technology:
Serial No. 78974960
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Sensant Corp ... is shipping its broadband
silicon ultrasound imaging probes.... Sensant’s
silicon-based transducers provide improvements in
the ability to capture and display a more
informative diagnostic image. For example,
silicon-based ultrasound images of breast or
abdominal anatomy depict clearer tissue borders
and improve image contrast. Also, the technology
better visualizes contrast agents that depict
blood flow in and around a tumor, a critical
indicator in the diagnosis of cancer. How it
works: Tiny silicon structures – known as
capactive microfabricated ultrasonic transducers
(cMUT) – give silicon ultrasound the acoustic
response that forms the basis for better medical
images. These structures resemble tiny silicon
drums, each smaller than the width of a human
hair, fabricated on the surface of a silicon
wafer. The flexibility of the cMUT design,
coupled with on-chip electronics, provide the
core technology for major advances in both 2-D
and 3-D ultrasonic imaging.

www.medicalimagingmag.com (Oct. 1, 2007).

Siemens is highlighting the Encompass II release
for its Sequoia scanner.
. . .
The firm also discussed its silicon ultrasound
transducer technology development program, aided
by its June 2005 acquisition of Sensant. Siemens
expects silicon ultrasound transducers will yield
efficient volumetric 4D imaging for a wide range
of applications, and allow for visualizing a
greater level of detail within both conventional
and volumetric 4D ultrasound images.
Commercialization is expected within two years.

www.auntminnie.com (Oct. 1, 2007).
Applicant urges that SILICON ULTRASOUND is at most
suggestive of the identified goods. Applicant first argues
that “without additional explanatory wording[,] applicant’s
mark cannot be understood.” App. Br. at 3-4. This
Serial No. 78974960
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argument reflects a misunderstanding of the proper test for
descriptiveness. The test is not whether a prospective
consumer would be able to guess at the nature of the goods
from the mark alone, but whether the mark – with reference
to the identified goods – describes any feature, function,
or characteristic of them. In re American Greetings
Corp., 226 USPQ 365, 366 (TTAB 1985).
Moreover, when assessing the descriptiveness of a
mark, we must consider who the potential purchasers are and
how sales would be made in light of the nature of the
goods. In re Intelligent Instrumentation Inc., 40 USPQ2d
1792, 1794-95 (TTAB 1996). In this case, purchasers of
applicant’s goods would not be ordinary consumers who may
be unaware of developments in medical imaging, but rather
doctors – particularly radiologists and other medical
imaging specialists. These goods are by their nature
expensive and technical, and the fact that they are used
for medical diagnosis, App. Br. at 2, makes it very
unlikely that they would be purchased without careful
investigation into their features and suitability for the
intended purpose. We have no doubt that such purchasers
would be aware of (or quickly learn) the significance of
the mark as applied to the identified goods.
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Applicant also argues that the mark is incongruous.
App. Br. at 4. We disagree. The examining attorney’s
evidence demonstrates that the mark is not comprised of two
separate terms with contrary (or contradictory) meanings.
Rather, the words SILICON and ULTRASOUND are used together
to describe precisely the type of ultrasound apparatus
identified in the current application.
In this regard, applicant contends that the mark is
not descriptive because read literally, it “mean[s] a
non[-]metallic sound wave used in medical exams.” App. Br.
at 5. This absurd interpretation is only reached by
plucking words from the record dictionary evidence without
reference to how those words would be understood or how
they are actually used. As applicant admits, “sound waves
are not generally thought to be metallic or non-metallic,”
a fact which would obviously be known to any purchaser of
the identified goods. On the contrary, prospective
purchasers would not understand the word “silicon,” as used
in the mark to refer to a sound wave, but would understand
it instead to refer to a component of the ultrasound
apparatus. We need not guess whether this would be so.
The evidence of record quoted above uses the terms in just
this way when actually describing these goods.
Serial No. 78974960
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Applicant further argues that “third parties are not
using and do not need to use” the mark. App. Br. at 7.
Again we disagree. Although third party use can be
evidence of descriptiveness, the opposite is not
necessarily true; a mark may be found descriptive even if
applicant is the first – or only – user of it. In re Nat’l
Shooting Sports Found., Inc., 219 USPQ 1018 (TTAB 1983).
Here, it appears that silicon ultrasound technology is a
relatively recent development in the field, and the fact
that others are not widely using the term2 is of little or
no significance.
Finally, applicant points out that any doubt on the
issue of descriptiveness must be resolved in favor of
applicant. App. Br. at 8. While applicant is correct, we
harbor no such doubts in this case.
II. Conclusion
After careful consideration of the record evidence and
argument, we conclude that applicant’s mark is merely
descriptive of a feature, function, or characteristic of
applicant’s identified goods.
Decision: The refusal to register under Trademark Act
§ 2(e)(1) is accordingly affirmed.

2 Indeed, it is not clear whether applicant itself is using the
mark yet. The subject application was filed under the intent-to-
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use provisions of the Trademark Act and an allegation of use has
not yet been filed.