Stereotaxis, Inc.

Trademark Trial and Appeal Board

Jul 20, 2004

No. 78108674 (T.T.A.B. Jul. 20, 2004)

Mailed: July 20, 2004
Paper No. 13
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Stereotaxis, Inc.
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Serial No. 78108674
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Brian K. Wheelock of Harness, Dickey & Pierce, P.L.C. for
Stereotaxis, Inc.
Michael E. Bodson, Trademark Examining Attorney, Law Office 110
(Chris AF Pedersen, Managing Attorney).
_______
Before Hanak, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Stereotaxis, Inc. has filed an application to register
on the Principal Register the mark "STEREOTAXIS" and design, as
shown below,
for "magnetic navigation systems comprised of magnetic devices
and controls for controlling the position and/or orientation of
magnetic substances and devices in the body; a line of magnetic
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78108674
2
medical devices that can be magnetically navigated in the body
for diagnostic and therapeutic purposes; catheters; endoscopes;
magnets and electromagnets for medical applications; atherectomy
devices; medical guidewires; medical imaging apparatus; apparatus
for locating medical devices in the body; intercranial bolts;
tissue samplers for extracting tissue samples from the body;
[and] medical electrodes and electrode catheters."1
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant's refusal to comply with a requirement for a disclaimer
of the term "STEREOTAXIS," which the Examining Attorney maintains
is merely descriptive of applicant's goods within the meaning of
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), and
therefore must be disclaimed apart from the mark as shown.
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not requested. We affirm the disclaimer
requirement.
1 Ser. No. 78108674, filed on February 13, 2002, which is based on an
allegation of a bona fide intention to use the mark in commerce.
2 Applicant, while asserting in its brief that "[t]here are several
companies who have registered marks for stereotactic equipment," has
attached to such brief as "Exhibit 4" a list of various third-party
registrations and applications. The Examining Attorney, citing
Trademark Rule 2.142(d), states in his brief that he "objects to the
additional evidence submitted by applicant at Exhibit 4 as untimely
and improper as it was not previously provided to the trademark
examining attorney." Such objection is well taken. As noted by the
Examining Attorney, the evidence is untimely inasmuch as Trademark
Rule 2.142(d) provides in relevant part that the Board "will
ordinarily not consider additional evidence filed ... by the appellant
... after the appeal is filed." Moreover, because the Board does not
take judicial notice of third-party registrations and applications, a
mere list of such does not suffice to make them properly of record;
instead, copies thereof or printouts of the registrations and
applications from the electronic search records of the United States
Patent and Trademark Office must be timely furnished. See, e.g., In
Ser. No. 78108674
3
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 forthwith conveys an
immediate idea of any ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); and In re Abcor 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 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). Thus, "[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). Furthermore, it is well established
re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). While no further
consideration will therefore be given to the evidence attached to
applicant's brief as Exhibit 4, it nonetheless is pointed out that,
even if such evidence were to be considered, it would make no
difference in the disposition of the issue of the propriety of the
requirement for a disclaimer since a mere listing of third-party
marks, without any accompanying indication of the goods and/or
services associated therewith, is essentially lacking in any probative
value.
Ser. No. 78108674
4
that registration must be denied if a term is merely descriptive
of any of the goods or services for which registration is sought.
See, e.g., In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205
USPQ 505, 507 (CCPA 1980).
Applicant, by way of background information, states in
its brief that:
Applicant ... is [in] the business of
making and selling magnetic surgery
equipment, including magnet systems that
create a navigating magnetic field in the
body, and medical devices that respond to
such navigating magnetic fields. ....
Applicant has become well known in the
medical field for its breakthroughs in the
magnetic navigation of medical devices.
Applicant is widely known and has received
substantial publicity for its magnetic
surgery systems.
While acknowledging, in its brief, that "the term 'stereotaxis'
has a variety of medical meanings," applicant maintains that "it
does not convey an immediate impression of Applicant's magnetic
surgery systems and related medical goods listed in the
application."
In particular, applicant notes that the initial Office
Action served to make of record the following definitions of the
term "stereotaxis" (also known as "stereotaxy") from The American
Heritage Dictionary of the English Language (3d ed. 1992): "1. A
method in neurosurgery and neurological research for locating
points within the brain using an external, three dimensional
frame of reference usually based on the Cartesian coordinate
system. 2. Movement of an organism in response to contact with a
Ser. No. 78108674
5
solid body. In this sense, also called thigmotaxis." Applicant
also points out in its brief that:
In its response of August 5, 2003,
Applicant made several other definitions of
[such term] record: 1. The definition from
http://www.biology-online.org/dictionary.-
asp: "A response to the stimuli of a solid
surface, typically common in microorganisms
that exist in small cracks and crevasses and
have adapted to this environment in the form
of an adaptation that responds to contact
with a hard surface. The actual response
itself is coined as a stereotaxi." .... 2.
The definition from http://www.medterms.-
com/script/main/art.asp?ArticleKey=5555:
"Use of a computer and scanning devices to
create three-dimensional pictures. This
method can be used to direct a biopsy,
external radiation, or the insertion of
radiation implants." .... 3. The definition
from http://www.phoenix5.org/glossary/stere-
otaxis.html: "Use of a computer and scan
device to create 3-dimensional pictures. Can
be used to direct a biopsy, external beam
radiation, or the insertion of radiation
implants (brachytherapy)."
The second of the above definitions, we observe, is identical to
that which was also made of record by the Examining Attorney in
his subsequent Office Action, which cited the "MedTerms.com
Medical Dictionary" as the on-line source thereof. Applicant
insists that, "[g]iven the various meanings of the term
'stereotaxis' based upon the definitions in the Office Action,
and these definitions, 'stereotaxis' is not an apt description of
Applicant's products." Applicant also argues that, even if such
term "would indicate the 'field' of Applicant's medical devices,"
as asserted in the initial Office Action, it is still the case
that "merely conveying the 'field' of a product does not make a
term 'merely descriptive'."
Ser. No. 78108674
6
Accordingly, while acknowledging that "the term
'stereotaxis' has several meanings in the medical field,"
applicant urges that "this does not make it merely descriptive"
of its goods for the reasons that, as set forth in its brief
(italics in original):
Applicant's products relate generally to
the magnetic navigation of medical devices in
the body through the application of magnetic
fields. They could be used in neurological
procedures, but they have much wider
application, particularly in cardiac
procedures. Further, while Applicant's goods
could be used in conjunction with
stereotactic apparatus from third parties
that locates points within the brain using an
external, three dimensional frame of
reference usually based on the Cartesian
coordinate system, Applicants' [sic] products
do not themselves perform this function, nor
are they specially adapted for use with
stereotactic equipment from third parties.
.... The goods listed in Applicant's
application provide for moving medical
devices anywhere in the body and not
"locating points within the brain using an
external, three dimensional frame of
reference. The term "stereotaxis" does not
convey an immediate impression with respect
to Applicant's goods, and therefore the word
"stereotaxis" is not merely descriptive of
the Applicant's goods.
Applicant concludes, therefore, that registration of its mark,
without the required disclaimer of the term "stereotaxis," for
its "magnetic navigation equipment and other medical devices
listed in the application, will not unduly impair the ability of
other manufacturers of magnetic navigation systems from
describing and marketing their products, and of course will not
prevent those companies that are actually selling stereotactic
equipment ... from use [of] the word in a non-trademark sense to
describe stereotactic equipment (as opposed to Applicant's
Ser. No. 78108674
7
magnetic navigation and other medical devices)." Any doubt in
such regard, applicant adds, should be resolved in its favor.
The Examining Attorney, on the other hand, states in
his brief that a further definition, which we have judicially
noticed,3 from the on-line "MSN Encarta-Dictionaries" defines the
term "stereotaxis" in relevant part as "2. MEDICINE technique in
brain surgery: neurological surgery involving the insertion of
delicate instruments that are guided to a specific area by the
use of three-dimensional scanning techniques."4 The Examining
Attorney, we also observe, has made of record a news article
concerning applicant from the website of Advent International
Corporation (at http://www.adventinternational.com/News/Article-
.aspx?PageID=7.1&NewsID=44) which states, inter alia, that:
Advent International, the global private
equity firm, today announced that it has co-
led a $25.5 million investment in Stereotaxis
Inc., an innovator in the field of surgical
automation. ....
3 It is settled that the Board may properly take judicial notice of
dictionary definitions. See, e.g., Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953);
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); and Marcal Paper Mills, Inc. v. American Can
Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
4 Other useful medical definitions, we judicially notice, may be found
in Melloni's Illustrated Medical Dictionary (4th ed. 2002) at 610,
which defines "stereotaxis" in pertinent part as "1. The localization
of the three-dimensional arrangement of body structures by means of
coordinate landmarks" and lists a synonym thereof, "stereotaxy," as
meaning "[a] method of inserting an electrode into a specific area of
the brain by means of three-dimensional coordinates; used to destroy
deep-seated nuclear masses and fiber tracts in the brain." In a
similar vein, Stedman's Medical Dictionary (27th ed. 2000)
respectively sets forth such terms in relevant part as "1. Three-
dimensional arrangement. .... 3. syn stereotaxy" and "[a] precise
method of identifying nonvisualized anatomic structures by use of
three-dimensional coordinates; more frequently used for brain and
spinal surgery. SYN stereotactic surgery, stereotaxic surgery,
stereotaxis (3)."
Ser. No. 78108674
8
Stereotaxis will use the new capital to
expand the clinical development of its
proprietary Magnetic Navigation System (MNS).
The system is designed to integrate
magnetics, computers and three-dimensional
medical imaging to help clinicians navigate
and control catheters and other surgical
instruments throughout the body.
....
The system could make it possible to
perform minimally invasive procedures that
may improve treatment for a variety of
challenging medical conditions. Potential
areas of application include
electrophysiology, interventional cardiology,
neurosurgery and interventional neurosurgery.
....
About Stereotaxis
Stereotaxis is a leader in the field of
surgical automation. The company is
developing as its core technology a
proprietary surgical workstation. The
workstation is expected to be uniquely
capable of remotely directing catheter-based
therapeutic or diagnostic devices along
complex trajectories within the body. ....
According to the Examining Attorney, the term
"STEREOTAXIS" merely describes "a significant feature or
characteristic of applicant's goods in that the term ...
describes a method of planning neurosurgery." More particularly,
the Examining Attorney contends that such a method or "technique
uses ... magnetic navigation resonance imaging to track the
devices using magnetic forces to show where the devices are."
Noting that, as pointed out by applicant, part of its goods
consist of a line of medical devices that can be magnetically
navigated or guided in the body for diagnostic and therapeutic
purposes as well as imaging apparatus and apparatus for locating
Ser. No. 78108674
9
medical devices in the body, the Examining Attorney maintains
that "[i]t is apparent that the goods of the applicant involve an
imaging technique to help surgeons more accurately locate and
remove a tumor, for example, during surgery."
In view thereof, the Examining Attorney concludes that
"[t]he dictionary evidence ... establishes that the term
STEREOTAXIS does in fact describe a significant feature of the
applicant's goods," which include magnetic navigation systems
comprised of magnetic devices and controls for controlling the
position and/or orientation of magnetic substances and devices in
the body as well as a line of magnetic medical devices that can
be magnetically navigated in the body for diagnostic and
therapeutic purposes. The fact that, as argued by applicant,
such term has several meanings in the medical field and other
contexts is not controlling on the issue of mere descriptiveness
inasmuch as a term may properly be considered to be merely
descriptive, as the Examining Attorney correctly points out, so
long as any one of its meanings is descriptive. See, e.g., In re
Chopper Industries, 222 USPQ 258, 259 (TTAB 1984); In re Bright-
Crest, Ltd., supra; and In re Champion International Corp., 183
USPQ 318, 320 (TTAB 1974).
Upon careful consideration of the evidence and
arguments, we find that, when used in connection with applicant's
goods, the term "STEREOTAXIS" immediately describes, without
conjecture or speculation, significant information concerning the
nature, purpose or function of at least some, if not most, of
applicant's goods, namely, that they are stereotaxis medical or
Ser. No. 78108674
10
surgical devices. Clearly, as used in the medical and surgical
fields, the term "STEREOTAXIS" broadly designates a computerized
scanning method or technique for creating three-dimensional
pictures of, or otherwise locating points in, the brain or
elsewhere in the body using a three-dimensional frame of
reference, usually based on a Cartesian coordinate system, and
navigating medical or surgical devices with respect thereto in
order to perform neurosurgical procedures, direct biopsies or
external radiation, insert radiation implants, or perform other
kinds of operations. The concept of stereotaxis thus involves
the use of magnetic or other means to position medical or
surgical instruments, such as probes, electrodes, biopsy cannulas
or other tissue samplers, catheters, guidewires, etc., in a
patient. Plainly, for example, whether products used in
stereotaxis surgery or other medical procedures (i) serve to
control the position and/or orientation of magnetic substances
and devices, such as applicant's "magnetic navigation systems
comprised of magnetic devices and controls" and its "medical
imaging apparatus" and "apparatus for locating medical devices in
the body," or (ii) constitute apparatus that can be magnetically
navigated in the body for diagnostic and therapeutic purposes,
such as applicant's "line of magnetic medical devices" for those
uses and its various "catheters," "medical guidewires," "tissue
samplers" and "medical electrodes," it is still the case that the
aforementioned items fall within the class of goods which is
merely described as stereotaxis products.
Ser. No. 78108674
11
Accordingly, when viewed in the context of applicant's
goods, there is nothing in the term "STEREOTAXIS" which, to
neurosurgeons, cardiovascular surgeons, radiologists and other
medical practitioners and clinicians who would utilize and/or
recommend the purchase of such goods, would be ambiguous,
incongruous or otherwise require the need for the exercise of any
imagination, cogitation or mental processing or necessitate the
gathering of further information in order for them to readily
perceive the merely descriptive significance of the term.
Applicant's magnetic surgical equipment, in short, is aptly and
merely described as stereotaxis equipment inasmuch as the term
"STEREOTAXIS" forthwith conveys the nature, purpose or function
of such goods. In consequence thereof, the term "STEREOTAXIS"
may not be exclusively appropriated by applicant, even if
applicant may be the first and/or only producer to use that term.
See, e.g., In re Quik-Print Copy Shop, Inc., supra at 507 n.8;
and In re National Shooting Sports Foundation, Inc., 219 USPQ
1018, 1020 (TTAB 1983).
Decision: The requirement for a disclaimer under
Section 6(a) is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant's mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, submits
an appropriate disclaimer of the merely descriptive term
"STEREOTAXIS."5
5 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993); and TMEP
§§1213.08(a) and (b) (3d ed. 2d rev. May 2003).