Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE TEKDYNE, INC.
Serial No. 74/198,141
October 3, 1994
Released: November 22, 1994
Nora Buchanan Will
Trademark Examining Attorney
Law Office 13
(Craig Morris, Managing Attorney)
Before Quinn, Hohein and Hairston
Administrative Trademark Judges
Opinion by Hohein
Administrative Trademark Judge
Registration has been finally refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that, when used in connection with applicant's goods, the term is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an oral hearing was not requested. We affirm the refusal to register.
In essence, applicant argues that "MICRO-RETRACTOR" is not merely descriptive terminology for surgical clamps, insisting in this regard that:
[T]his is a case in which analysis, reflection and/or thought is required in order to have any idea of the nature of applicant's goods upon seeing applicant's mark. The plan [sic] fact of the matter is that applicant's mark does not immediately bring to mind any quality, characteristic or nature of the relevant goods, namely surgical clamps.
Applicant, while admitting that the word "MICRO" means small in the medical field, [FN2] asserts that the evidentiary "materials presented by the Examining Attorney do not establish that the term 'RETRACTOR' is generic for any type of surgical clamp." Thus, according to applicant, the combination of such terms has not been shown to be merely descriptive of its particular goods, the uniqueness of which "is evidenced by the issuance of United States patent 5,176,129 on January 5, 1993 to applicant ... covering the product on and in connection with which applicant proposes to use this mark."
In addition, applicant challenges the Examining Attorney's contention that the surgical clamps for which the term "MICRO-RETRACTOR" will be used are small in size, pointing out that:
Size is relative in medicine. Something that is considered to be small in the field of surgery might not be considered to be small in the field of micro surgery. Applicant does not contest the fact that the surgical clamps for which registration of the mark is sought ordinarily fit into the palm of one's hand; applicant does contest the proposition that the surgical clamps are "small" in size. Were a surgeon to use one of applicant's surgical clamps for eye surgery, the clamp would surely be considered to be large in the optical surgery area.
Moreover, notwithstanding repeated references in its patent to its goods as a "retractor" and even as a "micro-retractor," applicant insists that:
[T]he Examining Attorney has not been able to address a single use of applicant's mark by any other party; consequently, there must be a presumption of incongruity between "micro" and "retractor" since the conjoined term does not appear in the literature. Applicant's combination of two terms to produce the mark for which registration is sought, is a unique and meritorious conjoining of two separate terms, providing a distinctive mark for registration.
*2 The Examining Attorney takes the position that the term "MICRO-RETRACTOR" merely describes the size of a particular type of surgical clamp, namely, a small retractor. In support thereof, the Examining Attorney has attached to her brief pages from Dorland's Illustrated Medical Dictionary (27th ed. 1988), which in pertinent part contain the following definitions: [FN3]
"retraction," which is defined as "the act of drawing back; the condition of being drawn back";
"retractor," which is listed as "an instrument for maintaining operative exposure by separating the edges of a wound and holding back underlying organs and tissues; many shapes, sizes, and styles are available"; and
"clamp," which is set forth as both "any device used to grip, join, compress, or fasten parts" and "a surgical instrument for effecting compression."
Besides relying upon applicant's admission that the term "micro" indicates "small," the Examining Attorney made of record with the first Office action pages from the following publications which likewise show that, in the medical field, the combining form "micro-" means "small": Medical Technology (5th ed. 1988); Taber's Medical Word Book with Pronunciations (1990); and Analyzer of Medical-Biological Words. In the first Office action the Examining Attorney also made of record several pages from the Zimmer Medical/Surgical Products catalog which illustrate various types of retractors used in orthopedic surgery. Those designed particularly for hand and small bone procedures, such as for retracting skin and tendons during surgery, range from about three to four inches in length to up to about nine inches, while those used in connection with bigger bones or for spinal or shoulder surgery are generally somewhat longer.
In addition, the Examining Attorney relies upon the copy of applicant's patent for its goods which she made of record in conjunction with the second Office action. U.S. Patent No. 5,176,129, issued on January 5, 1993 for a "SELF-RETAINING RETRACTOR," states in the "BACKGROUND OF THE INVENTION" that:
Small lacerations, requiring wound exploration for repair of tendons, repair of nerves or for removal of foreign bodies, are an extremely common problem confronting surgeons, emergency room physicians and family practitioners dealing with minor traumas. These small surgical or traumatic wounds present a special problem of obtaining adequate exposure of internal tissues and structures so that the surgeon, physician or other medical professional can adequately see the interior tissues and structures in order to access the damage, form a plan of treatment and the like.
Consequently, as the Examining Attorney stresses in her brief, the patent covering the goods upon which the term "MICRO-RETRACTOR" will be used describes the invention as "a self-retaining retractor for holding open skin at a wound to permit access to interior tissue for diagnosis and developing a course of treatment."
*3 The Examining Attorney notes that "[t]he patent contains no less than 37 separate references to the goods as a retractor and numerous other references to the invention as a 'micro-retractor'." The following examples, found in the "DESCRIPTION OF THE PREFERRED EMBODIMENTS AND BEST MODE KNOWN FOR PRACTICING THE INVENTION," are illustrative (emphasis added):
"In FIG. 13, the preferred embodiment of the disposable self-retaining skin or micro-retractor of the invention ... includes a pair of pivotally connected generally longitudinally extending members ... which are moveable respecting one another at a pivotal connection therebetween defined by a hinge portion....";
"When the attending physician or other health professional utilizes the disposable retractor, the physician may grasp the disposable micro-retractor by placing his or her thumb and index finger into respective recesses ... and applying tactile force....";
"While it is preferred that the micro-retractor ... illustrated in FIGS. 13 through 16 be molded in a single injection molding operation to provide a single, integrally formed micro-retractor, it is also within the purview of the invention to provide skin hooks ... as metal hook-like members which are secured in place during the molding process....";
"Respecting the embodiment of the micro-retractor illustrated in FIGS. 13 through 16, arms ... serve to transversely or laterally displace skin hooks ... from position in the plane in which longitudinally extending finger members ... rotate about hinge means ... respecting one another. The lateral or transverse displacement of skin hooks ... permits the physician or other attending health care professional to open exceedingly small wounds, with the retractor being large enough for the physician to comfortably grip between the thumb and index finger to manipulate and maneuver using an instrument. This is important: if the micro-retractor is excessively small, it becomes difficult to grip and to manipulate so that it loses it [sic] effective utility and may cause the physician to inadvertedly injure the patient."; and
"In the preferred embodiment of the invention illustrated in FIGS. 13 through 16, ... [o]verall longitudinal length of the micro-retractor is preferably about one and one-half inches.... .... Of course, the thickness in the longitudinal direction and the height of the hinge ... will depend on the properties of the thermoplastic material from which the disposable micro-retractor illustrated in FIGS. 13 through 15 is molded and the degree of stiffness desired when opening and closing of the retractor."
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 immediately describes an ingredient, quality, characteristic or 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 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 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). Furthermore, as noted by the Board in In re Micro Instrument Corp., 222 USPQ 252, 254 (TTAB 1984), while "the presence of 'MICRO' in a mark, alone or even conjoined with a second highly suggestive term, does not necessarily yield a 'merely descriptive' designation," citing, e.g., In re Scott Paper Co., 180 USPQ 283 (TTAB 1973), "where the 'MICRO' name or compound mark has been demonstrated to have a recognized or established meaning in the applicable trade in relation to the goods, the 'merely descriptive' characterization has been forthcoming," citing, e.g., Revell, Inc. v. Kadee Co., 162 USPQ 176 (TTAB 1969).
*4 Although we concur with applicant that the size of something is a relative thing, we nevertheless agree with the Examining Attorney that, in light of the demonstrated (and in fact conceded) significance of the term "MICRO" in the medical profession as meaning "small," surgeons and other health care practioners would immediately regard the designation "MICRO-RETRACTOR," as applied to applicant's surgical clamps, as signifying a small retractor for use in the diagnosis and treatment of small wounds. Specifically, it is clear that applicant's goods are designed to be small in size, relative to those used in connection with surgery requiring larger-sized retractors, so as to clamp open a small incision or wound during medical treatment. [FN4]
Consequently, when applied to applicant's surgical clamps, the term "MICRO-RETRACTOR" directly describes, without conjecture or speculation, the nature, function or use of applicant's goods, namely, that the product is a small retractor. The plain meaning of the words comprising such term, as confirmed by the technical dictionary definitions provided by the Examining Attorney, as well as the manner of use thereof in applicant's patent for its goods, convince us that, when considered in the context of applicant's goods, there is nothing which is incongruous or indefinite about the term "MICRO-RETRACTOR". Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for surgeons and others in the medical profession, who constitute the purchasers and potential customers for applicant's surgical clamps, to readily perceive the merely descriptive significance of the designation "MICRO-RETRACTOR" as it relates to small retractors for use in the examination and surgical repair of small wounds and lacerations in a patient's extremities.
In short, contrary to applicant's assertion that something "unique and meritorious" is created when the individual terms "MICRO" and "RETRACTOR" are combined for use in connection with its patented goods, it is clear that such words have a meaning identical to the meaning which ordinary medical usage would ascribe to those terms in combination. See, e.g., In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.Cir.1987) ["SCREENWIPE" for a "premoistened, antistatic cloth for cleaning computer and television screens" is not registrable]. Moreover, the fact that applicant will, or intends to be, the first and/or only entity to use the term "MICRO-RETRACTOR" for surgical clamps is not dispositive where, as here, such term unequivocally projects a merely descriptive connotation. See In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Similarly, it is not necessary that a designation be in common usage in the particular industry in order for it to be merely descriptive. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983). The absence, therefore, on this record of any third-party uses of the term "MICRO-RETRACTOR" does not, as contended by applicant, serve to raise a presumption of registrability, nor does it mean that prospective competitors of applicant would not need to use such term to describe their small retractors.
*5 Accordingly, because the term "MICRO-RETRACTOR" conveys forthwith the notion that applicant's product is a small retractor, which is a type of instrument which would be especially suitable for use in treating small lacerations and other wounds, such term is merely descriptive of surgical clamps.
Decision: The refusal under Section 2(e)(1) is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Serial No. 74/198,141, filed on August 26, 1991, which alleges a bona fide intention to use such term in commerce.
FN2. In particular, applicant stated in its response to the initial Office action that it "readily concedes that the word 'MICRO' denotes small size. Indeed, applicant notes that the term or word 'MICRO' means small not only in the medical field, but in many other fields, most notably computers and data-processing."
FN3. Applicant, citing Trademark Rule 2.142(d), has objected thereto, contending in its reply brief that "the examining attorney has introduced additional evidence which was not of record during prosecution." Applicant consequently requests that such evidence not be considered or, in the alternative, suggests that "the appeal should be suspended and the application remanded to the examining attorney in order that applicant may have the opportunity to address this new evidence." Applicant's request, however, is not well taken and is denied for the following reasons. First of all, it is well settled that judicial notice may be taken by the Board of any standard reference works, including medical dictionaries. See, e.g., 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); In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419, 423 (CCPA 1962) at n. 6; and Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953). Secondly, in its reply brief, applicant has not given any indication that it desires to introduce any additional evidence of its own and, in any event, has responded to the merits of the Examining Attorney's position, so that a remand of the application for such purpose would be pointless. Accordingly, we have taken judicial notice of the definitions submitted with the Examining Attorney's brief as requested therein.
FN4. While not a clamp in the sense of a device which is designed to compress the openings of a wound together, applicant's surgical clamps effect compression in that, like retractors in general, they grip the openings of an incision or laceration and separate such openings by pressing outwardly thereon, thereby compressing the surrounding tissues, muscles and/or organs.