Somnus Medical Tech-nologies, Inc.

Trademark Trial and Appeal Board

May 16, 2001

No. 75673724 (T.T.A.B. May. 16, 2001)

5/16/01
Paper No. 9
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Somnus Medical Technologies, Inc.
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Serial No. 75/673,724
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Harold C. Hohbach of Flehr Hohbach Test Albritton & Herbert LLP
for Somnus Medical Technologies, Inc.
Patricia A. Horrall, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
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Before Chapman, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Somnus Medical
Technologies, Inc. to register SMART RF as a mark for the
following goods:1
1 Serial No. 75/673,724; filed April 1, 1999 on the Principal Register
alleging a bona fide intention to use the mark in commerce. The
application also includes two classes of services as follows:
"Educational services teaching physicians a surgical method using low
levels of radiofrequency energy for shrinking of redundant tissue" (in
Class 41); and "medical services relating to the treatment of sleep
disorders and chronic nasal obstruction" (in Class 42). The term "RF"
has been disclaimed as to those classes. The refusal to register in
this case pertains only to the goods identified in Class 10 of the
application.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/673,724
2
"Medical devices, namely radiofrequency electrosurgical
generators and electrode handpieces for use therewith."
Class 10
Registration has been finally refused under Section 2(e)(1)
of the Trademark Act on the ground that applicant's mark is
merely descriptive of applicant's goods.
Applicant has appealed. Briefs have been filed, but an oral
hearing was not requested.
The Trademark Examining Attorney argues that SMART RF
describes "the main feature" of applicant's medical devices,
namely that applicant's goods are highly automated devices using
radio frequency ("RF"). In support of her position, the
Examining Attorney relies on a definition of "smart" as "a highly
automated device" and an acronym dictionary reference to "RF" as
radio frequency. In addition, we take judicial notice of the
following definitions of "smart" and "radio frequency":
Smart - "Equipped with, using, or containing electronic
control devices, as,...microprocessors." Random House
Webster's Unabridged Dictionary (2nd ed. 1998).
Radio Frequency - "The frequency in the range within which
radio waves may be transmitted, from about 3 kilohertz to
about 300,000 megahertz." The American Heritage Dictionary
of The English Language (4th ed. 2000).
The Examining Attorney has also made of record a number of
articles obtained from the NEXIS database to show that "smart" is
used descriptively "in relation to automated devices" as well as
copies of six third-party registrations and applications for
Ser. No. 75/673,724
3
marks in which the word "smart" has been disclaimed. The
Examining Attorney argues, based on this evidence, that a medical
device which, as described by applicant, is capable of providing
temperature controlled radio frequency energy for creating
precise volumetric lesions, "would be considered 'smart' by the
definition of the term."
Applicant, on the other hand, contends that the word SMART
modifies the acronym RF and connotes that the RF has the desired
characteristics rather than the medical device itself. Applicant
argues that:
"[a]lthough the words 'smart RF' can connote certain
characteristics of the medical devices in Class 10, they
certainly do not suggest use of the term 'smart RF' for a
medical device that is capable of providing temperature
controlled radio frequency energy for creating precise
volumetric lesions."
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of the
ingredients, qualities, or characteristics of the goods or
services with which it is used. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). On the other hand, a term is
suggestive if, in the context of those goods or services, a
purchaser must use imagination, thought, or some type of multi-
stage reasoning to understand the term's significance. See
Plyboo America Inc. v. Smith & Fong co., 51 USPQ2d 1633 (TTAB
1999).
Ser. No. 75/673,724
4
There seems to be no dispute as to the descriptive meaning
of the term "RF" in relation to applicant's medical devices which
use radio frequency energy or technology. Nor is there any
question that medical devices that use radio frequency energy or
technology can be "smart." For example, one of the NEXIS
articles submitted by the Examining Attorney describes such a
device as follows (emphasis added):2
"HEADLINE: Microwave Device Used to Cure Snoring and Nasal
Congestion.... A smart microwave uses radiofrequency and a
computer controlled thermometer to deliver very specific
amounts of heat energy to stiffen the floppy tissues in the
nose, mouth and...."
Thus, each word in the mark may individually describe some
aspect of applicant's goods. The critical question, however, is
whether the mark SMART RF, when considered as a whole, is
descriptive of the identified goods. See In re Medical
Disposables Co., 25 USPQ2d 1801 (TTAB 1993). Based on the record
before us, we cannot conclude that it is. The third-party
registrations submitted by the Examining Attorney are not
relevant because none of the registrations is for SMART RF.3
While the registrations may arguably show the descriptive meaning
of the word "smart" in relation to certain medical devices or
2 The source of this article has not been identified.
3 Moreover, third-party applications are not evidence of anything.
Ser. No. 75/673,724
5
equipment, the inquiry does not end with a determination that one
of the words in the mark is descriptive.
The NEXIS evidence submitted by the Examining Attorney is
similarly unpersuasive. The articles refer to "smart" medical
devices and even, as shown above, smart medical devices that use
radio frequency. However, applicant's mark is SMART RF not SMART
DEVICE, and applicant's goods are medical devices not radio
frequencies. While a medical device can be "smart," it is
unclear, and the evidence fails to show, how a radio frequency
can be "smart" or imbued with "smart" capabilities (such as a
microprocessor).
Thus, we find, based on this record, that while SMART RF may
suggest applicant's goods, it does not directly and immediately
describe any particular aspect of the goods.
Decision: The refusal to register is reversed.