Tuesday, August 26, 2008

TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services

Applicant Neurobotics, Inc. struck out in its attempt to register the mark NEUROBOTICS for augmented surgical control systems and related consulting and engineering services. The Board affirmed the PTO's alternative Section 2(e)(1) and Section 2(a) refusals to register, finding the mark to be merely descriptive of the goods and services or, alternatively, deceptively misdescriptive and deceptive therefor. In re Neurobotics, L.L.C., Serial Nos. 78596887 and 785969571 (August 8, 2008) [not precedential].

Examining Attorney Amy E. Hella relied on various Internet webpages referring to the new field of "neurobotics" and on excerpted articles discussing the use of robots in surgery, maintaining that "[t]he term 'neurobotics' is used by third parties to describe a new field of science regarding the fusion of neuroscience and robotics for augmenting human capabilities." "[A]pplicant’s goods are augmented surgical interfaces and systems for assisting surgeries and for allowing the operator to control the physical positioning of surgical equipment, etc." She further contended that Applicant’s "services design and develop 'medical apparatus providing enhanced surgical capabilities,' and 'medical systems in the nature of augmented surgical equipment.'"

Applicant asserted that its mark has no significance with respect to its goods and services because its equipment "does not utilize artificial intelligence as a substitute for a human operator, and accordingly is not 'robotic.'" Moreover, "although the term 'neurosurgical' would be descriptive of the purpose of the equipment developed by Applicant, deletion of the "surgical' portion of that term clearly requires any consumer viewing the mark to take a mental step, just as the Examining Attorney did, before associating 'NEUROBOTICS' with equipment for performing surgical procedures, and in particular, neurosurgical procedures."

The Board, however, sided with the PTO:

"Applicant’s identification of its goods which is replete with surgical instruments designed to augment the surgeon’s capabilities falls squarely within the definition of neurobotics in this record: The Fusion of Neuroscience and Robotics for Augmenting Human Capabilities."

Moreover, Applicant's own patent describes surgical goods that fall within the field of "neurobotics" in that they are directed at integrating human and robotic capabilities.

The Board ruled that the Examining Attorney had made "a prima facie case, which has not been rebutted by the applicant, that the term NEUROBOTICS is merely descriptive of a significant feature of applicant’s goods and services, namely, devices and design services that mimic human neurological control structures and logic to create surgical robots that augment the human surgeon’s capabilities." [Strike one!]

Turning to the alternative refusals, and assuming that applicant’s goods and services do not include biomimetic apparatus designed to augment human capability, then the term “neurobotics” is misdescriptive of them. Applicant argued, however, that its customers are sophisticated and are not likely to be misled. According to Applicant, "there is no reason to believe that physicians and hospitals would even know of the purported 'emerging field' of 'neurobotics.'" But the Board found that at least some potential purchasers "would be familiar with this term and understand its value with regard to the goods and services and, thus, would be deceived." Therefore, the mark is deceptively misdescriptive under Section 2(e)(1). [Strike two!]

As to Section 2(a) deceptiveness, the additional question was whether the misdescription would likely affect the purchasing decision. Applicant's own patent indicates that "the biomimetic feature of the goods and its augmentation of the surgeon’s capability would be highly desirable." Furthermore, the PTO's evidence referring to the use of robotics in surgery supports a finding that robotics in surgery is desirable. Therefore the mark is deceptive. [Strike three! You're outta here!]

In sum, the umpire - I mean the Board - affirmed all three refusals.

Text Copyright John L. Welch 2008.


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