Tuesday, May 12, 2009

TTABlog WYHA? TTAB Affirms Descriptivness Refusal of "SILICON ULTRASOUND" for Ultrasound Devices Utilizing ... Guess What?

After you read this decision ask yourself the question: Would You Have Appealed? Applicant Siemens sought to register the mark SILICON ULTRASOUND for "ultrasound devices, namely, medical ultrasound apparatus, ultrasound transducers made out of silicon wafer." Examining Attorney David Yontef deemed the mark merely descriptive under Section 2(e)(1). The Board found his conclusion ultra sound. In re Siemens Medical Solutions USA, Inc., Serial No. 78974960 (April 24, 2009) [not precedential].

The record revealed that ultrasound equipment can be made using silicon, that Siemens' goods employ silicon, that silicon is not an "incidental component" of Siemens' goods, and indeed that "silicon in ultrasound transducers is central to a new generation of ultrasonic imaging technology."

Siemens lamely asserted that SILICON ULTRASOUND is at most suggestive of its goods. It urged that "without additional wording[,] applicant's mark cannot be understood." Of course, that argument misses a significant point: a mark must be considered not in the abstract but in the context of the goods at issue.

Moreover, the Board observed, purchasers of Siemens' goods will be doctors and specialists who would make the selection after careful investigation into the features and suitability of the product. The Board had no doubt that purchasers "would be aware of (or quickly learn) the significance of the mark as applied to the identified goods."

Siemens then feebly contended that the mark is not descriptive because it literally means "a non[-]metallic sound wave used in medical exams." The Board found that interpretation "absurd." For one thing, sound waves are not generally considered to be metallic or non-metallic. Purchasers would understand the word "silicon" to refer to a component of the apparatus, and that is, in fact, the way the term is used in the evidence of record.

Finally, Siemens tossed up another softball, asserting that "third parties are not using and do not need to use the mark." The Board whacked that one of the park: a mark may be deemed descriptive even if applicant is the first, and only, user. Here, silicon ultrasound technology appears to be a recent development, and so it is not significant that the term is not widely used.

And so, the Board affirmed the refusal to register.

silicon rod

TTABlog comment: Well, would you have appealed? I can think of one attorney who probably would have: his initials are M.A.

I suspect that, had the Examining Attorney found a few more uses of the phrase SILICON ULTRASOUND, we might have seen a genericness refusal.

Text Copyright John L. Welch 2009.


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