Zimmer Technology, Inc.

Trademark Trial and Appeal Board

Mar 27, 2008

No. 78289413 (T.T.A.B. Mar. 27, 2008)

Mailed:
March 27, 2008
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zimmer Technology, Inc.
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Serial No. 78289413
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Gerard T. Gallagher of Baker & Daniels LLP for Zimmer
Technology, Inc.

Michael Engel, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Zimmer Technology, Inc. (applicant) has applied to
register the mark 2-INCISION in standard characters on the
Principal Register for services identified as “educational
services, namely conducting conferences, seminars,
workshops, interactive Internet courses, and classes in the
field of orthopaedic surgical techniques” in International
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78289413
2
Class 41.1 The Examining Attorney has finally refused
registration on the grounds that the mark merely describes
the services under Trademark Act Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1). Applicant has appealed. Both applicant and
the Examining Attorney have filed briefs.
We affirm.
A term is merely descriptive of services within the
meaning of Section 2(e)(1) if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the services. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987); and 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 services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute or function of the
services. See In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982); and In re MBAssociates, 180 USPQ 338, 339 (TTAB
1973).

1 Application Serial No. 78289413, filed August 19, 2003,
claiming first use of the mark anywhere and first use of the mark
in commerce in February 2001 in a statement of use.

Serial No. 78289413
3
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the services identified
in the application, and the possible significance that the
term would have to the average purchaser (user) of the
services because of the manner of use. In re Polo
International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The Examining Attorney states, “The proposed mark 2-
INCISION is merely descriptive of the number of incisions
required by the surgical techniques which are the subject
matter of applicant’s educational conferences, seminars,
workshops, interactive Internet course and classes.”
Examining Attorney’s Brief at 2.
The Examining Attorney has submitted pages from
applicant’s website. Those pages describe “The Zimmer
Minimally Invasive Solutions™ (MIS™) 2-incision hip
replacement procedure.” The procedure is described as “one
of the least invasive hip replacement procedures available
today” and one “that allows muscles and tendons to be
avoided or separated, rather than cut.” The procedure
permits a faster and less painful recovery from surgery.
The text emphasizes the most significant aspects of the
technique, including “smaller incisions and less scarring –
2 smaller incisions of 1½ to 2 inches each, rather than one
Serial No. 78289413
4
10- to 12-inch incision.” Applicant’s specimen identifies
this procedure, among others, as the subject matter of the
identified educational services. Applicant has not
disputed the fact that the procedure described in these
pages from its website is the subject matter of the
educational services identified in the application.
Applicant presents a number of arguments in support of
its position that 2-INCISION is “at most suggestive” and
not merely descriptive of the identified services. We find
none of the arguments persuasive.
Applicant first argues that “2-INCISION” does not
appear in relevant dictionaries and that this fact
indicates that 2-INCISION is not merely descriptive. As
the Examining Attorney correctly notes, the mere absence of
a dictionary entry for the relevant term does not establish
that the term is not merely descriptive. In re Orleans
Wines, Ltd., 196 USPQ 516 (TTAB 1977). In this case, the
Examining Attorney has provided dictionary definitions of
the component parts of the mark, “2” and “incision.”
However, it is applicant’s own usage, noted above, which
explicitly discloses the readily apparent descriptive
significance of 2-INCISION as applied to the identified
services. See In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987). For the record, there is
Serial No. 78289413
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nothing at all unusual about the combination of “2” and
“incision” here which would render the combination
distinctive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314, 1317 (TTAB 2002) (SMARTTOWER merely descriptive of
commercial and industrial cooling towers). 2-INCISION
describes, in plain language, a key characteristic of the
surgical procedure which is the subject matter of the
identified educational services. Anyone encountering 2-
INCISION in relation to the identified services, whether a
medical professional or other interested individual, would
readily understand the descriptive significance of 2-
INCISION in this context.
Applicant also argues that “… the 2-INCISION mark most
certainly does not immediately convey to consumers that use
of the mark is for “educational services … in the field of
orthopaedic surgical techniques.” Applicant’s Brief at 7.
Of course, we must determine whether 2-INCISION is merely
descriptive as applied to the identified services, not in a
vacuum. In re Bright-Crest, Ltd., 204 USPQ at 593.
Accordingly, we reject this argument.
Applicant also argues that, “The 2-INCISION mark could
convey a variety of meanings to consumers, some of them
completely unrelated to the medical or surgical field. For
example, 2-INCISION could refer to clothing patterns …”
Serial No. 78289413
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Id. Again, the fact that the mark may have meanings in
another context is not relevant for purposes of our
determination here. In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1034 (TTAB 2007). Accordingly, we reject this
argument.
Applicant also argues throughout its briefs that 2-
INCISION is at most suggestive, but applicant does not
indicate what the suggestive, nondescriptive significance
might be. We have considered those arguments and find them
unpersuasive. Again, 2-INCISION conveys a clear
descriptive meaning as applied to the services identified
in the application. See In re Active Ankle Systems Inc.,
83 USPQ2d 1532 (TTAB 2007) (DORSAL NIGHT SPLINT held
generic for orthopedic splints for the foot and ankle).
Applicant has also argued that its mark is suggestive based
on a number of prior cases. We have also considered those
cases and find them readily distinguishable from this case.
See, e.g., In re Colgate-Palmolive Co., 406 F.2d 1385, 160
USPQ 733 (CCPA 1969) (CHEW ‘N CLEAN held suggestive for
dentifrice).
Finally, based on the record in this case we conclude
that 2-INCISION is merely descriptive of “educational
services, namely conducting conferences, seminars,
workshops, interactive Internet courses, and classes in the
Serial No. 78289413
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field of orthopaedic surgical techniques.” 2-INCISION
merely describes a key feature of the surgical procedure
which is the subject matter of the identified educational
services. Specifically, a significant feature of the hip-
replacement procedure in question is the use of 2 incisions
of 1½ to 2 inches each, rather than one incision of 10 to
12 inches. The 2-incision technique is significant because
it is less invasive, it eliminates the need to cut certain
muscles and tendons, and it reduces scarring and permits a
faster and less painful recovery.
Decision: We affirm the refusal to register under
Trademark Act Section 2(e)(1).