Tuesday, February 18, 2014

WYHA? TTAB Affirms Mere Descriptiveness Refusal of ABDOMINAL ELEVATOR for Surgical Instruments

Mark A. Fisher appealed from the PTO's Section 2(e)(1) mere descriptiveness refusal of the mark ABDOMINAL ELEVATOR for "Surgical and medical apparatus and instruments for use in general surgery; Surgical devices and instruments; Surgical instruments and apparatus" [ELEVATOR disclaimed]. He argued that the mark is a double entendre because it suggests that, like the word "elevator" in "elevator speech," ABDOMINAL ELEVATOR "conveys the convenience and speed with which the abdominal area can be retracted and prepared for surgery." Mr. Fisher mentioned, but did not submit, his pending patent application [entitled "Abdominal Elevator"](see below). He lost. In re Fisher, Serial No. 85496960 (January 31, 2014) [not precedential].

Examining Attorney Sophia S. Kim relied on dictionary definitions of "elevator" ("a surgical instrument used to elevate tissues") and "abdominal" ("of or relating to the abdomen"). His patent application, he revealed, disclosed that the goods provide "an unobstructed view of the incision site along the abdomen for the medical staff." The Board concluded that the term ABDOMINAL ELEVATOR "immediately and directly tells relevant consumers that the goods are used to elevate abdominal tissue."

Fisher argued that consumers, without seeing his goods, would not know the meaning of "elevator" because the word has different meanings in different medical contexts: e.g., in dentistry, an "elevator" is a blade used to extract teeth. The Board noted, however, that the determination of mere descriptiveness is not a guessing game, but is made in the context of the identified goods. "In the context of the goods, consumers would understand 'elevator' in ABDOMINAL ELEVATOR to have the meaning of a surgical instrument or device used to elevate abdominal tissue."

Finally, Applicant Fisher pointed to the term "elevator speech," a term used in the business world to convey "that a speaker must convey relevant information to a listener within the time that it takes to ride an elevator," claiming that "elevator" means that his goods may be used in a "rapid, swift, instant or prompt" manner.

The Board, however, found that ABDOMINAL ELEVATOR does not have a clear meaning of convenience and speed. "In fact, it is not clear to us why the word ELEVATOR per se would connote 'speed,' nor is the word ELEVATOR the same as ELEVATOR SPEECH. When ELEVATOR is used in combination with ABDOMINAL it strains credulity that a consumer would understand ABDOMINAL ELEVATOR as having the meaning 'speed.'" Rather, "consumers would immediately understand, when seeing ABDOMINAL ELEVATOR in connection with applicant’s surgical apparatus and devices, that the goods elevate or lift abdominal tissue, and therefore the mark describes the purpose of the goods."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  It is not clear that the Board was aware of the title of Fisher's patent application, "Abdominal Elevator," nor his use of that term throughout the application to identify his invention, nor the wording of the patent claims, which begin, "An abdominal elevator comprising ...."

Text Copyright John L. Welch 2014.


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