United States Court of Appeals for the Federal Circuit
05-1059
(Serial No. 78/108,674)
IN RE STEREOTAXIS, INC.
Bryan K. Wheelock, Harness, Dickey & Pierce, PLC, of St. Louis, Missouri, argued for
appellant.
Nancy C. Slutter, Associate Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Arlington, Virginia, argued for the Director of the Patent and Trademark
Office. With her on the brief were John M. Whealan, Solicitor, and Linda Moncys Isacson,
Associate Solicitor.
Appealed from: United States Patent and Trademark Office,
Trademark Trial and Appeal Board
United States Court of Appeals for the Federal Circuit
05-1059
IN RE STEREOTAXIS, INC.
______________________________
DECIDED: October 27, 2005
______________________________
Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and DYK, Circuit
Judge.
FRIEDMAN, Senior Circuit Judge.
The appellant Stereotaxis, Inc. (“the Applicant”) challenges the decision of the
Trademark Trial and Appeal Boardof the United States Patent and Trademark Office
(“Board”) conditioning registration of the trademark “stereotaxis” and design for medical
goods and services on disclaiming the word “stereotaxis” because, as thus used, it is
merely descriptive. We affirm.
I
The Applicant makes and sells magnetic surgery equipment, including magnetic
systems that create a navigating magnetic field in the body, and medical devices that
respond to such fields. The Applicant sought to register the trademark shown below for
twelve specified goods and services. The twelve goods and services included
“Magnetic Navigation Systems for Medical Applications,” “Magnetic Medical Devices,”
“Magnets and Electromagnets for Medical Applications,” and “Medical Imaging
Apparatus.”
The Trademark Examining Attorney concluded that under the Applicant’s
proposed uses of the mark, the word “stereotaxis” was merely descriptive and had to be
disclaimed before the mark could be registered. She explained that “[a] disclaimer does
not remove the disclaimed matter from the mark. It is simply a statement that the
applicant does not claim exclusive rights in the disclaimed wording or design apart from
the mark as shown in the drawing.”
After the Patent and Trademark Office (“Trademark Office”) continued the refusal
to register, the Applicant appealed the disclaimer requirement to the Board, which
affirmed. The Board stated that “[i]t is well settled that a term is considered to be merely
descriptive of goods or services . . . if it forthwith conveys an immediate idea of any
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services.” In re Stereotaxis, Inc., No. 7810867 (TTAB July 20, 2004) (slip op.). It noted
“that registration must be denied if a term is merely descriptive of any of the goods or
services for which registration is sought.” It concluded that the term “stereotaxis”
“immediately describes . . . significant information concerning the nature, purpose or
function of at least some, if not most, of the applicant’s goods,” and therefore must be
disclaimed.
II
The Applicant challenges the Board’s disclaimer requirement on two grounds:
(A) that the Board was required, but failed, to specify the particular products and
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services that the term “stereotaxis” “merely described;” and (B) that there is not
substantial evidence that “stereotaxis” is descriptive of any of those products and
services.
A. The Director of the Trademark Office “may require the applicant to disclaim
an unregistrable component of a mark otherwise registrable.”
15 U.S.C. § 1056(a). A
mark or component is unregistrable if, “when used on or in connection with the goods of
the applicant,” it is “merely descriptive . . . of them.”
15 U.S.C. § 1052(e)(1). Our
predecessor court, the Court of Customs and Patent Appeals, whose decisions bind us
(South Corp. v. United States,
690 F.2d 1368, 1371 (Fed. Cir. 1982) (en banc)), has
stated that “registration should be refused if the mark is descriptive of any of the goods
for which registration is sought.” Application of Richardson Ink Co.,
511 F.2d 559, 561
(CCPA 1975). See In re Am. Soc’y Clinical Pathologists, Inc.,
442 F.2d 1404, 1407
(CCPA 1971); Quik-Print Copy Shop,
616 F.2d 523, 525 (CCPA. 1980); 2 J. Thomas
McCarthy, Trademarks and Unfair Competition § 11.18 (2d ed. 1984).
Thus, the Trademark Office may require a disclaimer as a condition of
registration if the mark is merely descriptive for at least one of the products or services
involved. We know of no requirement in the trademark statutes or elsewhere that the
Board must make the additional analysis the Applicant seeks in order to determine that
a proposed mark is merely descriptive as applied to the Applicant’s products and
services. Here the Board “f[ou]nd” that
when used in connection with applicant’s goods, the term
“STEREOTAXIS” immediately describes, without conjecture
or speculation, significant information concerning the nature,
purpose or function of at least some, if not most, of
applicant’s goods, namely, that they are stereotaxis medical
or surgical devices.
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Stereotaxis, No. 7810867.
If this finding is supported by substantial evidence – and as we now show, it is –
it suffices to support the Board’s determination that, as used with the Applicant’s
products and services, the term “stereotaxis” is merely descriptive, without the
additional particularization that the Applicant would require.
B. “The Board's determination that a mark is merely descriptive is a factual
finding, which this court upholds unless unsupported by substantial evidence.” In re
MBNA Am. Bank N.A.,
340 F.3d 1328, 1332 (Fed. Cir. 2003); see In re Nett Designs,
236 F.3d 1339, 1341 (Fed. Cir. 2001).
“Evidence [that a term is merely descriptive] may be obtained from any
competent source, such as dictionaries, newspapers, or surveys.” In re Bed &
Breakfast Registry,
791 F.2d 157, 160 (Fed. Cir. 1985); see In re Northland Aluminum
Prods, Inc.,
777 F.2d 1556, 1559 (Fed. Cir. 1985). Here, the evidence the Board relied
on to show that “stereotaxis” is merely descriptive consisted of dictionary definitions and
a press release by one of the Applicant’s investors about the Applicant’s products and
services. Stereotaxis, No. 7810867, slip op. at 4-7.
One of these dictionary definitions, from the Encarta World English Dictionary
(North American ed. 2004), described “stereotaxis” as a “technique in brain surgery:
neurological surgery involving the insertion of delicate instruments that are guided to a
specific area by the use of three-dimensional scanning techniques.” (Encarta has
changed the definition from “a specific area” to “the relevant area” since the Board’s
decision in July 2004. That change does not alter our analysis.) Another dictionary,
MedTerms.com Medical Dictionary (2005), defines “stereotaxis” as the “[u]se of a
05-1059 4
computer and scanning devices to create three-dimensional pictures.” These definitions
describe several of the uses the Applicant ascribed to its products and services in its
trademark registration application, including “Magnetic Navigation Systems for Medical
Applications,” “Magnetic Medical Devices,” “Magnets and Electromagnets for Medical
Applications,” and “Medical Imaging Apparatus.”
The Applicant contends that the Board failed to consider dictionary definitions
that are more “reflective of the purchasing public’s understanding of the term.” The
Applicant argues that the Board erred by not limiting its definition of “stereotaxis” to
products and services that utilize an external reference frame, a computer and a
scanning device, which the Applicant’s products do not use. An external reference
frame is a system in which points outside the body are used in coordination to pinpoint a
specific point inside the body. The Applicant, however, does not show that an external
reference frame, a computer and a scanning device are essential elements, rather than
simply a common methodology, of stereotaxis.
The issue before us is whether substantial evidence supports the Board’s finding
that, as applied to the Applicant’s products and services, “stereotaxis” is merely
descriptive, and not whether there is also evidence that would support another
classification of that mark. See In re Nett Designs,
236 F.3d at 1341 (“Any competent
source suffices to show the relevant purchasing public's understanding of a contested
term or phrase.”). To prevail in its claim, the Applicant must show that its proposed
definition would be understood by the relevant public – here the medical profession – to
be the only meaning of the term. See In re Abcor Dev. Corp.,
588 F.2d 811, 813 (CCPA
1978) (“The major reasons for not protecting such [merely descriptive] marks are: (1) to
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prevent the owner of a mark from inhibiting competition in the sale of particular goods;
and (2) to maintain freedom of the public to use the language involved, thus
avoiding the possibility of harassing infringement suits by the registrant against others
who use the mark when advertising or describing their own products.”).
The Applicant has not made that showing. Accordingly, the fact that the
Applicant’s products may use magnets and magnetic imagery rather than an external
frame of reference and computer generated imagery is not enough to invalidate the
finding that the Applicant’s proposed use of the term “stereotaxis” is merely descriptive
of its products and services.
The Board’s finding that the Applicant’s proposed use of the mark is merely
descriptive is further supported by a press release by Advent International announcing
that it had been a co-lender of a $25.5 million investment in the Applicant. The release
stated: “Stereotaxis will use the new capital to expand the clinical development of its
proprietary Magnetic Navigation System (MNS). The system is designed to integrate
magnetics, computers and three-dimensional medical imaging to help clinicians
navigate and control catheters and other surgical instruments throughout the body.”
Although, as the Applicant points out, the press release was neither made on behalf of
the Applicant nor contemporaneous with the trademark application, the release
nevertheless is relevant because it is evidence of the public’s perception of the
applicant’s products and services. Whether a mark is merely descriptive or not is
“determined from the viewpoint of the relevant purchasing public.” Bed & Breakfast
Registry, 791 F.2d at 160.
05-1059 6
Substantial evidence supports the Board’s finding that as applied to the
Applicant’s products and services, “stereotaxis” is merely descriptive.
CONCLUSION
The decision of the Trademark Trial and Appeal Board, affirming the disclaimer
of the term “stereotaxis,” is
AFFIRMED.
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