Volk Optical, Inc.

Trademark Trial and Appeal Board

Sep 18, 1997

EX (T.T.A.B. Sep. 18, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 18, 97
Paper No. 9
GDH/LCB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Volk Optical, Inc.
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Serial No. 74/628,209
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Brian J. Hundertmark of Roberts & Hundertmark for applicant.
Ari Leifman, Trademark Examining Attorney, Law Office 102
(Myra Kurzbard, Managing Attorney)
_______
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Volk Optical, Inc. has filed an application to register
the term “SMALL PUPIL” for an “opthalmoscopy [sic] lens.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. ξ1052(e)(1), on the
basis that, when used in connection with applicant’s goods,
the term “SMALL PUPIL” is merely descriptive of them.

1 Ser. No. 74/628,209, filed on February 1, 1995, which alleges
a bona fide intention to use the term.
Ser No. 74/628,209
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a designation or 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 immediately describes an ingredient, quality,
characteristic of feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods or services. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
is not necessary that a designation or term describe all of
the properties or functions of the goods or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the designation or term
describes a significant attribute or idea about them.
Moreover, whether a designation or 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 designation or 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). Consequently, “[w]hether consumers
Ser No. 74/628,209
3
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).
Applicant argues that the term “SMALL PUPIL” “clearly
does not specifically describe on opthalmoscopy lens, nor
does it describe a purpose or function of the goods.” Such
term, according to applicant, “is only suggestive of some of
the characteristics of the goods on which it is used.” In
particular, applicant points out that:
[T]he lens on which [the term] SMALL
PUPIL is to be used is a high-powered
miniaturized version of a wide field
lens. While the lens can be used to
view a patient’s eye without dilation of
the pupil, a major purpose of the lens
is to permit, following dilation of the
pupil, extreme off-axis illumination.
This virtually eliminates lens, cornea,
and retinal reflections.
Thus, while admitting that the term “SMALL PUPIL” “is
descriptive of one possible use of the opthalmoscopy lens …
(to examine an eye through a small pupil),” applicant
contends that such term “would not serve as a description of
the goods that would be of any use to … potential
purchasers” of its product, which is “sold to
ophthalmologists and medical institutions.”
In addition, applicant notes that, while the excerpts
of record (detailed in part below) from the Examining
Attorney’s “NEXIS search describe various diseases and
conditions that include a small pupil as a symptom, and
Ser No. 74/628,209
4
various procedures that are used to look at small pupils,”
“[a]t no place in any of the articles does the term ‘small
pupil’ refer to an opthalmoscopy lens.” Thus, according to
applicant:
There is no conelation between a disease
with a symptom of small pupils and a
high-powered miniature lens that is
mainly used to look at pupils after they
have been dilated. The Examining
Attorney’s focus on articles that
discuss small pupils reinforces his
misinterpretation of the main use of the
lens, [which is] to view pupils after
dilation.
Therefore, applicant insists, “the trademark SMALL PUPIL is
not ‘merely descriptive’ of the goods, but is only
suggestive of one possible use of the goods.”
The Examining Attorney, on the other hand, maintains
that the term “SMALL PUPIL,” as applied to opthalmoscopy
lenses, conveys information about a significant attribute of
applicant’s goods. Specifically, the Examining Attorney
urges that such term “is merely descriptive of the types of
pupils – SMALL PUPILS – which the goods are designed to
examine.” In this regard, the Examining Attorney relies
upon excerpts from numerous articles retrieved and made of
record from his search of the “NEXIS” data base.2 Such
articles, as applicant concedes, principally demonstrate,
according to the Examining Attorney, that:

2 The search on February 26, 1996 of the “ALLNWS” file of the
“NEWS” library, using the search request “SMALL PUPIL AND NOT
TEACHER,” disclosed 58 stores from which excerpts were taken.
Ser No. 74/628,209
5
SMALL PUPIL is used to name a condition
in which a patient’s pupil[s] are small.
This smallness may recur naturally in a
patient, or may be the result of illness
or medication. … [Thus,] SMALL PUPIL is
[merely] descriptive because it refers
to a central characteristic of the
goods: it names the type of pupil which
the [applicant’s] goods are designed to
examine.
To bolster his conclusion of mere descriptiveness, the
Examining Attorney observes that “applicant does not dispute
the finding that one [significant] use of its goods is the
examination of small pupils” since applicant, as noted
previously, has admitted that “SMALL PUPIL is descriptive of
one possible use of the [applicant’s] opthalmoscopy lens …
(to examine an eye through a small pupil) …”
Moreover, although not specifically addressed by either
applicant or the Examining Attorney, it has not escaped our
gaze that three of the “NEXIS” excerpts discuss
opthalmoscopy of small pupils (emphasis added):
Scanning laser opthalmoscopy was
introduced in 1980 … Since then, it has
been established as a clinical tool that
requires low levels of illumination and
is thus comfortable for the patient,
allows imaging through small pupils,
captures images with large depth of
field, and allows imaging through less-
than-perfect media. By introducing a
small pinhole aperture in a plane
corresponding to the focus plane, one
can image optical slices of the retina …
-- American Journal of Ophthalmology,
November 1995, at 642;
Indirect opthalmoscopy [sic] (small
pupil) as used for examination of the
Ser No. 74/628,209
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retina. – Id., May 15, 1993, at 629;
and
A small aperture is essential for
eye examination conducted without pupil
dilation (see “The pros and cons of
pupil dilation”). In fact, all eye
examinations should probably begin with
this aperture, especially if the patient
has small pupils. Even when the pupil
is wide open, this aperture facilitates
close examination of discrete areas and
is particularly useful for examining the
macula … -- Patient Care, November 30,
1987, at 52 (article headlined, in part:
“Is your opthalmoscope a dinosaur?”).
Also, by way of background, we judicially notice the
following definitions3 from Mosby’s Medical Dictionary (4th
ed. 1994):
“opthalmoscope,“ which is defined at
1110 as “a device for examining the
interior of the eye. It includes a
light, a mirror with a single hole
through which the examiner may look, and
a dial holding several lenses of varying
strengths. The lenses are selected to
allow clear visualization of the
structures of the eye at any depth. If
the patient or the examiner ordinarily
requires extensive correction of a
refractive error, the examination may
require that the corrective lenses
normally worn be worn for the
examination. (See Fig. P. 1109
[reproduced below].)”;

3 It is settled that the Board may properly take judicial notice
of dictionary definitions, including definitions in technical
reference works. See, e.g., In re Hartop & Brandes, 311 F.2d
249, 135 USPQ 419, 423 (CCPA 1962); Hancock v. American Steel &
Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953) and 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).
Ser No. 74/628,209
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“opthalmoscopy,” which is listed at 1110
as meaning an opthalmoscope to examine
the eye.”; and “pupil,” which is set
forth at 1309 as connoting “a circular
opening in the iris of the eye, located
slightly to the nasal side of the center
of the iris. The pupil lies behind the
anterior chamber of the eye and the
cornea and in front of the lens. Its
diameter changes with contraction and
relaxation of the muscular fibers of the
iris as the eye responds to changes in
light, emotional states, and other kinds
of stimulation. The pupil is the window
of the eye through which light passes to
the lens and the retina.”
Likewise, Stedman’s Medical Dictionary (16th ed. 1995)
contains the following pertinent definitions:”4
“oph•thal•mo•scope,” which is defined at
1254 as “[a] the interior of the eyeball
through the pupil. SYN funduscope ……
direct o., an instrument designed to
visualize the interior of the instrument
relatively close to the subject’s eye
and the observer viewing an upright
magnified image.

4 In this regard, the same dictionary at 694 lists “fundus” as
signifying “[t]he bottom or lowest part of a sac or hollow
organ; that part farthest removed from the opening or exit …”
Ser No. 74/628,209
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Indirect o., an instrument designed to
visualize the interior of the eye, with
the instrument at arm’s length from the
subject’s eye and the observer viewing
an inverted image through a convex lens
located between the instrument and the
subject’s eye.”;
“oph•thal•mos•co•py,” which is listed at
1254 as meaning “[e]xamination of the
fundus of the eye by means of the
ophthalmoscope. SYN funduscopy.
direct o., o. performed with a direct
ophthalmoscope.
indirect o., o. performed with an
indirect ophthalmoscope.
o. with reflected light, examination
of that part of the fundus adjacent
to an area illuminated by a sharply
focused light.”; and
“pupil,” which is set forth at 1468 as
connoting “[t]he circular orifice in the
center of the iris, through which the
light rays enter the eye.”
Such dictionary at 1254 also contains the following
schematic illustration:

Upon consideration of the above evidence and arguments,
it is our view that, when applied to an ophthalmoscopy lens,
the term “SMALL PUPIL” immediately describes, without
conjecture or speculation, a significant purpose or function
Ser No. 74/628,209
9
of applicant’s product, namely that it is specifically for
use in examining a small pupil. As applicant has admitted,
such term “is descriptive of one possible use of the
ophthalmoscopy lens,” which is “to examine an eye through a
small pupil.” That such a use is a significant purpose or
function of an ophthalmoscopy lens is made clear by the
three “NEXIS” excerpts reproduced herein. It is simply not
necessary, as the Examining Attorney has correctly pointed
out, that a term describe every characteristic, feature,
purpose, function, ingredient, quality or other aspect of a
product in order for it to be merely descriptive. It is
sufficient, instead, if the term, as here, describes one
significant attribute of the product. See, e.g., In re
Venture Lending Associates, 226 USPQ 285, 286 (TTAB 1985);
In re Aid Laboratories, Inc., 223 USPQ 357, 358-59 (TTAB
1984); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Plainly, to ophthalmologists, eye surgeons and other
medical practitioners who conduct ophthalmoscopic
examinations and who would be the principal purchasers of
ophthalmoscopy lenses, there is nothing in the term “SMALL
PUPIL” which is ambiguous, incongruous, indefinite or too
abstract, nor would any imagination, cogitation, mental
processing or gathering of further information be necessary
in order such persons to perceive precisely the merely
Ser No. 74/628,209
10
descriptive significance of such term as it relates to one
purpose or function of what applicant’s product does.
Moreover, the fact that applicant’s ophthalmoscopy lens
“will mainly be used to view pupils after dilation” does not
preclude a finding of mere descriptiveness. Applicant
concedes that its product “can be used to view a patient’s
eye without dilation of the pupil.” Plainly, an
ophthalmoscopy lens which can be used to examine a small
pupil later after dilation, thereby eliminating the need to
change the lens on the ophthalmoscope, is aptly and
precisely described as a small pupil ophthalmoscopy lens.
Accordingly, because the term “SMALL PUPIL” conveys
forthwith a significant purpose or function of applicant’s
product, namely, that its ophthalmoscopy lens is
particularly suitable for use in examining patients with the
condition of a small pupil, such term is merely descriptive
within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
R. L. Simms
R. F. Cissel
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal