No. 77398872 (T.T.A.B. Sep. 30, 2010)

Vantus Technology Corporation

Trademark Trial and Appeal BoardSep 30, 2010

No. 77398872 (T.T.A.B. Sep. 30, 2010)

Mailed: September 30, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Vantus Technology Corporation ________ Serial No. 77398872 Serial No. 77398882 _______ David A. Payne of Casimir Jones, S.C. for Vantus Technology Corporation Robin S. Chosid-Brown, Trademark Examining Attorney, Law Office 102 (Karen Strysz, Managing Attorney). _______ Before Walters, Walsh, and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Vantus Technology Corporation filed two intent-to-use applications for the marks PERSONALIZED SOLUTIONS and PERSONALIZED ORTHOPAEDIC SOLUTIONS, both marks in standard characters format and for identical goods and services, namely1: Computer software for use in computer-aided design, computer-aided engineering, and computer-aided 1 Application Serial Nos. 77398872 and 77398882 were both filed on February 15, 2008. Because the applications are owned by the same applicant, were reviewed by the same examining attorney, and involve common issues of fact and law, we have consolidated the appeals. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77398872 Serial No. 77398882 2 manufacturing; computer software for the design, manufacture, and implantation of medical devices (International Class 9); Medical devices, namely, surgical implants comprising artificial material (International Class 10); and Consulting services in the field of computer-aided design, computer-aided engineering, and computer-aided manufacturing; consulting services in the field of designing medical devices (International Class 42). In the application for the latter mark, applicant disclaimed the wording “PERSONALIZED ORTHOPAEDIC.” The disclaimer was provided in response to a requirement made by the examining attorney in her first Office action (issued on June 4, 2009) and prior to the statutory refusal (described below) having been raised.2 Both applications were refused registration on the ground that the marks are merely descriptive pursuant to Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1). The examining attorney’s arguments regarding the descriptiveness refusals are essentially the same for both applications. In particular, she contends that the marks are descriptive of the identified goods and services because “[a] ‘personalized solution’ is the answer to a 2 As to the application for the latter mark, PERSONALIZED SOLUTIONS, the same examining attorney issued a first Office action on the same date, June 4, 2009. With respect to this mark, she likewise did not initially raise the statutory refusal in the initial Office action, but also curiously did not require a disclaimer of the term “PERSONALIZED.” Serial No. 77398872 Serial No. 77398882 3 problem as applied to a particular person” and that “[a] ‘personalized orthopaedic solution’ the answer to an orthopaedic problem as applied to a particular person.” Briefs, on (unnumbered) p. 3. Applicant has appealed the final refusals. Both applicant and the examining attorney have filed briefs for each application. In support of her refusals, the examining attorney made the following dictionary definitions of record: PERSONALIZE Transitive Verb To make (something) specially suitable for a particular person. ORTHOPAEDICS Plural Noun The treatment or study of bones which have not grown correctly or which have been damaged. ORTHOPAEDIC Adjective Relating to orthopaedics. [the above taken from Cambridge Advanced Learner’s Dictionary, Cambridge University Press 2008.]3 SOLUTION 3 Attached to Office action dated June 4, 2008. The examining attorney also attached dictionary definitions for the terms “personalize” and “solution” to her appeal brief. However, these definitions were retrieved from the website www.yourdictionary.com, without any obvious indication that these definitions derive from a dictionary that exists in a printed format. Accordingly, we cannot consider the definitions attached to the examining attorney’s brief. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); In re Cyberfinancial.net, Inc., 65 USPQ2d 1789 (TTAB 2002); and In re Total Quality Group Inc., 51 USPQ2d 1471 (TTAB 1999). Serial No. 77398872 Serial No. 77398882 4 Noun (in relevant part) 3a. The method or process of solving a problem. b. The answer to or disposition of a problem. [taken from The American Heritage Dictionary of English Language, Fourth Edition, Houghton Mifflin Company, 2000.]4 The examining attorney also relies on applicant’s response to an informational request wherein applicant stated that its goods may be “custom” or “customized” devices or parts and, as to the services, applicant replied that its services involve the design, engineering, manufacturing and implantation of “custom” or “customized” devices and parts. The examining attorney further argues that the term “solutions” is descriptive in connection with the identified goods and services because: ...the customer, an average physician, medical care provider, or insurance provider, for example, would understand that the goods and services are used to solve a patient’s specific individualized problem. The goods and services are not used to create one- size-fits-all devices or bone parts. An individual would only require a customized, or personalized, bone part for implantation in order to solve his or her particular orthopaedic or bone problem. [Brief, (unnumbered) p. 4, emphasis in original, and Examining Attorney citing to applicant’s response to an information request regarding potential customers of applicant’s goods and services.] The examining attorney also relies on four (4) third- party registrations for marks containing the term Serial No. 77398872 Serial No. 77398882 5 “solutions”; said registrations are either on the supplemental register or the term “solutions” has been disclaimed, thus indicating that the term was determined to be descriptive in connection with the services identified in the registrations.5 Applicant, on the other hand, argues that its marks are not “literally descriptive of the goods and services for which registration is sought” and that “[e]ven if [the identified goods and services] could potentially be used to address a problem, computer software, medical devices, and consulting services are not themselves ‘solutions.’” Brief, p. 2. A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, 4 Attached to Office action dated December 20, 2008. 5 On page 4 of her brief, the examining attorney references such third-party registrations previously submitted with her Office Action (dated December 28, 2008) in which the term disclaimed and was “considered to be merely descriptive of electronic devices and consulting.” However, the Office Action contains an attached copy of an application (Serial No. 77551497 with no use dates alleged and in “publication/ issue review complete” status) that covers “electronic devices” and other goods. None of the other registrations attached to the Office action identify “electronic devices” or any goods for that matter. We further note that as of the date of this decision, the application’s status is “a request for the second extension of time to file a statement of use has been granted”; that is, a use statement has not been Serial No. 77398872 Serial No. 77398882 6 purpose or use of the goods or services. 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 (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 merely descriptive; it is enough 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); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). In its brief, applicant seems to argue that the determination of descriptiveness is based on whether a consumer can guess the goods based on the mark. See Brief, p. 2 (“[i]t is highly unlikely that a consumer would immediately, or even remotely, think of any of the goods and services of the instant application upon hearing the [mark]”). This is not the standard. It is settled that “[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 mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d filed and it has not registered. Accordingly, this application has limited, if any, probative value. Serial No. 77398872 Serial No. 77398882 7 1314 (TTAB 2002); see also In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). We turn now to the merits of the refusals and as recognized by the examining attorney in her brief, we note from the outset that the real issue in these appeals involves the term “solutions” in connection with the identified goods and services. Because applicant has already disclaimed the wording PERSONALIZED ORTHOPAEDIC (in the prosecution of application Serial No. 77398872), it presumably concedes (or at one point, conceded) the descriptiveness of those terms in connection with the identified goods and services. In any event, based on the dictionary definitions of those terms as well as applicant’s own response to an Office action describing the nature of its services and goods, we find them merely descriptive of the customized goods and services of applicant. We turn our attention to the term “solutions” and, to put politely, there is not an abundance of evidence demonstrating that this term is merely descriptive of applicant’s goods and services. We are fully cognizant that the Board has previously addressed the issue of whether the term “solutions” is merely descriptive. Serial No. 77398872 Serial No. 77398882 8 However, each proceeding must be decided on its own merits based on the facts particular to each case and the record created therein. We are not privy to and cannot rely on evidence from other proceedings, unless that same evidence is also properly before us in this proceeding. It is the examining attorney, representing the Office, who bears the burden in each ex parte proceeding of setting forth at least a prima facie case in support of a descriptiveness refusal. In re Gyulay, 820 F.2d 1216. Here, we have of record a dictionary definition showing that “solution” means “the method or process of solving a problem.” This defined meaning is very vague and there is no indication that the term is even used in connection with the identified goods and services. We cannot say that this definition alone describes an immediate purpose or characteristic of applicant’s goods and services. As to the third-party registrations, we have long held that these may be used in the manner of a dictionary to show that a mark or a portion thereof is descriptive or suggestive of goods and services. See In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987). Nevertheless, the examining attorney has submitted only four registrations where the term “solutions” was presumably determined to be descriptive in connection with Serial No. 77398872 Serial No. 77398882 9 various unrelated services such as “custom manufacture of electrical lighting fixtures,”6 “insurance and risk management consultation and brokerage services,”7 “insurance underwriting...,”8 and “retail store services featuring durable medical equipment...rental of durable medical equipment, namely, wheelchairs, electric scooters...”9 These registrations have very little, if any, probative value because the services covered are readily distinguished from the goods and services in the subject application. It is not possible to reasonably conclude, based on these registrations, that the term “solutions” has descriptive meaning in the context of applicant’s identified goods and services. In summary, we find that the examining attorney has failed to meet her burden in establishing a prima facie case that the term “solutions” is merely descriptive of applicant’s identified goods and services; and we therefore cannot find that the marks, as a whole, are merely descriptive. We do not hesitate to point out that, in determining mere descriptiveness, we must resolve our doubt in applicant's behalf and the mark should be published for 6 Registration No. 2424731. 7 Registration No. 3510237. 8 Registration No. 2876790. 9 Registration No. 2904658. Serial No. 77398872 Serial No. 77398882 10 opposition. See, In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases cited therein. Regardless of our determination based on the record in this proceeding that the marks, as a whole, are not merely descriptive, we have determined that the terms “personalized” and “orthopaedic” are descriptive and thus the marks may not be registered absent a disclaimer of these terms under Section 6 of the Trademark Act. Again, applicant already disclaimed both terms in application Serial No. 77398882, but has not disclaimed the term “personalized” in connection with application Serial No. 77398872 (see footnote 2). Accordingly, we affirm the refusal to registration with respect to this application in the absence of a disclaimer of PERSONALIZED. Decision: The refusal to register the mark PERSONALIZED ORTHOPAEDIC SOLUTIONS under Section 2(e)(1) is reversed. Application Serial No. 77398882 will be forwarded for publication of the mark for opposition. The refusal to register the mark PERSONALIZED SOLUTIONS (application Serial No. 77398872) under Section 2(e)(1) is affirmed in the absence of a disclaimer of PERSONALIZED. However, this decision will be set aside, with respect to this application, if applicant submits a Serial No. 77398872 Serial No. 77398882 11 disclaimer of the word PERSONALIZED within 30 days.10 10 The standardized printing format for the required disclaimer text is as follows: “No exclusive right to use PERSONALIZED is claimed apart from the mark as shown.” TMEP 1213.08(a) (5th ed. 2007).