Stryker Corporation

Trademark Trial and Appeal Board

Jul 22, 2013

No. 85292885 (T.T.A.B. Jul. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Stryker Corporation
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Serial No. 85292885
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Eugene J. Rath, III of Flynn Thiel Boutell & Tanis PC for Stryker Corporation.

Hai-Ly Lam, Trademark Examining Attorney, Law Office 112 (Angela Wilson,
Managing Attorney).
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Before Bucher, Bergsman and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Stryker Corporation (applicant) has appealed the final refusal to register the
mark SUITESTATUS for “computer software for determining and transmitting
information regarding the state or condition of an operating room; computer
programs for tracking, logging, and displaying a video stream of one or more
operating rooms, for purposes of monitoring the state or condition of one or more
operating rooms” in Class 9.1
In its brief, applicant addresses the issue of descriptiveness with respect to
“medical and surgical apparatus and equipment, namely video cameras for medical

1 Application Serial No. 85292885, filed April 12, 2011 pursuant to Section 1(b) of the
Trademark Act on the basis of intent-to-use.
Serial No. 85292885

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areas.” These goods were divided from the application at issue in this appeal (Ser.
No. 8529288) and placed into a new “child application” (Ser. No. 85978255). Ser. No.
85978255 is not the subject of this appeal.
A term is deemed 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 an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978).
A term need not immediately convey an idea of each and every specific feature
of the applicant’s goods or services in order to be considered to be merely
descriptive; rather, it is sufficient that the term describes one significant attribute,
function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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 the 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; that a term may have other meanings
in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). In other words, “[t]he question is not whether someone presented
with only the mark could guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are will understand the
Serial No. 85292885

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mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
The question before us is whether the term SUITESTATUS immediately
conveys an idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the following goods: (1) computer software for determining and
transmitting information regarding the state or condition of an operating room or
(2) computer programs for tracking, logging, and displaying a video stream of one or
more operating room, for purposes of monitoring the state or condition of one or
more operating rooms.”
In support of the refusal, the examining attorney has made of record dictionary
definitions of both “suite” and “status,” and excerpts from various websites
regarding “surgery suites” or “operating suites.” The most relevant definitions
submitted by the examining attorney are: the definition of “suite” from the
MacMillan Dictionary: “a set of rooms”2 and the definition of “status” from Oxford
Dictionaries: “a situation at a particular time during a process.”3
The examining attorney also submitted experts from the websites of medical
centers and hospitals demonstrating that operating rooms are commonly referred to
as operating suites or surgical suites. The following examples were submitted with
the February 14, 2012 Office action (emphasis supplied):

2 MacMillan Dictionary (www.macmillandictionary.com) © 2009-2013 Macmillan
Publishers Limited, Examining Attorney’s Brief, p. 4.
3 Oxford Dictionaries (www.oxford dictionaries.com) © 2011 Oxford University Press,
Examining Attorney’s Brief, p. 4.

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(1) University of Miami Miller School of Medicine
(http://surgery.med.miami.edu)
“The Ryder Trauma Center’s six operating suites are
designed for multiple operating teams and equipment” ….
Virtually all types of surgery can be performed in the
suites, including laparoscopic and thorascopic
techniques”

(2) St. Vincent’s Medical Center
(http://www.stvincents.org)
“St. Vincent's state-of-the-art operating suite includes
eight pre-operative bays, 10 operating suites and 12
Post-Anesthesia Care Unit (PACU) beds. The surgical
suite consolidates all major pre- and post- operative
procedures.”

(3) Flowers Hospital
(http://www.flowershospital.com)
“Flowers Hospital has completed work on a $3 million
operating room (O.R.) expansion project, increasing the
total number of surgical suites to 25.” and “The project
began in 2008, when administration at Flowers Hospital
recognized the need for additional O.R. suites to better
serve their Medical Staff and the Wiregrass community.”

(4) St. Mary Medical Center
(http://www.stmaryhealthcare.org)
“State-of-the-Art Operating Rooms: The two brand-new
state-of-the-art operating suites are specifically
designed to allow surgeons to perform minimally invasive
and image-assisted procedures.”

(5) Catholic Medical Center
(http://www.catholicmedicalcenter.org)
“At Catholic Medical Center, we work hard to put patients
and families first in the construction of our ten state-of-
the-art surgical suites. Located on Level D, the
operating suites are in close proximity to the Emergency
Department, Intensive Care Unit and heliport during
emergent situations” and “Additionally, each OR suite is
equipped with a single chip camera and a complete
monitoring station that is set up at the central nursing
station to monitor surgery status.”
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Applicant argues that the term SUITESTATUS is not descriptive since “there
are many definitions of ‘suite’ … [and] ‘status’ is generally referred to as meaning:
position relative to that of others or other things.” Appeal Brief, p. 2. This argument
is not persuasive since the issue of descriptiveness is not decided in the abstract but
rather by determining whether someone who knows what the goods are will
understand the mark to convey information about them.” In re Tower Tech Inc., 64
USPQ2d at 1316-17. Thus, we look at the definitions of the terms that are relevant
to the goods, namely that a “suite” is a set of rooms” and that “status” is “a situation
at a particular time during a process.” Using these definitions, we determine
whether the mark conveys information about the goods.
Applicant also argues that the term SUITESTATUS does not directly and
immediately convey some knowledge of the characteristics of goods. Appeal Brief, p.
3. There is no evidence supporting this statement. To the contrary, the website
evidence produced by the examining attorney establishes that the medical field
refers to operating rooms as “operating suites” or “surgery suites.” Further, as
indicated on the Catholic Medical Center website, “each [of the ten new] OR
suite[s] is equipped with a single chip camera and a complete monitoring station
that is set up at the central nursing station to monitor surgery status.” Thus, the
mark SUITESTATUS immediately conveys to consumers that applicant’s computer
software determines and transmits information about the “status of an operating
suite,” including the status of the surgery performed therein; and that applicant’s
computer programs track, log, and display a video stream “of one or more operating
suites to monitor the status thereof, including the surgery performed therein.”
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Accordingly, we find the term SUITESTATUS to be merely descriptive of
applicant’s goods.
Decision: The refusal to register is affirmed.