Friday, February 27, 2015

TTAB Dubiously Requires Disclaimer of RAIL for Surgical Implants

Relying on two third-party patent applications, the Board affirmed a refusal of the mark shown below, based upon applicant's failure to disclaim the word "RAIL," for "surgical implants made of artificial materials used in spinal surgery, namely, structural members used to connect pedicle screws in a spinal construct" [TECHNOLOGY disclaimed]. In re K2M, Inc., Serial No. 85679575 (February 17, 2015) [not precedential].

Although recognizing that "rail" has multiple meanings, the Board pointed to two patent applications that use the that word in connection with spinal implants. [Two patent applications? Maybe they will be rejected for indefiniteness. How many people read pending patent applications anyway? Why should this applicant be stuck with the usage of the word "rail" made by two third-party patent applicants? Is this the best evidence the USPTO could come up with? - ed.]. According to the Board, these two patent applications established that the term “rail” is "used generically by third parties to describe a structural component of spinal implants and the term will be understood in that same manner when used in connection with Applicant’s spinal implants."

Applicant submitted a declaration of its vice-president, saying that he never heard of the term "rail" used "to describe a member that interconnects screws implanted into the spine." The word commonly used in competitor literature is "rod." The Board pooh-poohed that evidence, observing that even if applicant is the first and only user of the term "rail," the word may still be merely descriptive of the goods.

Finally, the Board rejected applicant's contention that the mark is unitary and a disclaimer is not required.

And so the Board affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: In this blogger's opinion, the Board gives entirely too much probative weight to statements made by third parties in patent applications and patents. But then, being a patent attorney, maybe I'm biased.

My point is that just because some patent attorney, perhaps newly-minted and still wet behind the ears  and probably not an expert in the technology, while fumbling for a word to name an element in the patent drawings, chooses the word "rail," does not mean that "rail" would be understood by the relevant consuming public to mean what the Board thinks it means.

Text Copyright John L. Welch 2015.


At 12:39 PM, Anonymous Anonymous said...

It is decisions like this which embolden Examining Attorneys to make overreaching refusals based on descriptiveness. How did the concept of "merely" get lost in these cases?

At 12:53 PM, Anonymous Anonymous said...

Based upon this and other disclaimer cases reported herein, I am sensing that the Board tends to be fairly liberal in upholding examiners' disclaimer requirements. Maybe they figure there is so much subjectivity and inconsistency in the practice that if the requirement seems at all plausible, it is worth upholding. I'm not sure how consistent this is with the Board's 2(e) decisions.

At 3:06 PM, Anonymous Anonymous said...

The dictionary definition of the term "rail" is consistent with applicant's description of its goods "structural members." So the disclaimer requirement is not so dubious and based on "statements" from patent people.


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