Tuesday, December 22, 2009

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "STENTALLOY" For Alloys Used to Make Medical Devices

So let's imagine that you're facing a final Section 2(e)(1) mere descriptiveness refusal of STENTALLOY for "wrought or unwrought metal alloys for use in sheet, bar, coil, wire, strip and plate form having mechanical properties, purity and corrosion resistance suitable for use in medical devices." Examining Attorney Eugenia K. Martin has cited a dictionary definition of "stent" and Internet website excerpts showing that metal stents "are often, if not normally, made from metal alloys." Would you have appealed? Applicant Metalwerks PMD, Inc. did, and it lost. In re Metalwerks PMD, Inc., Serial No. 77362611 (December 10, 2009) [not precedential].


Applicant lamely argued that "stent" does not describe "a wrought or unwrought alloy because a stent could be molded or extruded plastic." The evidence showed, however, that stents are made from metal alloys and that "there is nothing unusual about the use of the term 'alloy stent' to describe a stent made with a metal alloy." Although Applicant's goods are not stents, they are metal alloys that "can be used to make a particular type of stent, i.e., stents made from metal alloys."

The Board considered not only the individual terms but also the meaning of the mark as a whole, but found no difference in meaning.

Finally, Applicant dragged out the following guaranteed loser of an argument: that there is no evidence of any third-party use of the terms "stentalloy" or "stent alloy." The Board, however, pointed out for the millionth time that "[e]ven if applicant is the only user of the term, that fact does not mean that its mark is suggestive rather than merely descriptive."

In sum, the Board concluded that STENTALLOY will immediately describe a feature or purpose of the goods: i.e., that they have the "mechanical properties, purity and corrosion resistance suitable for use in medical devices such as stents." And so the Board affirmed the refusal.

TTABlog comment: So what do you think? Bear in mind that the Board affirms 80% of mere descriptiveness refusals on appeal.

Text Copyright John L. Welch 2009.


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