Wednesday, October 30, 2013

Test Your TTAB Judge-Ability: Is MAMMOCAT Merely Descriptive of Medical Imaging Devices?

The PTO refused to register the mark MAMMOCAT, finding it to be merely descriptive of "medical diagnostic and screening imaging apparatus, and medical instruments for use in performing biopsies." Applicant argued that "mammo" and "cat" each have multiple meanings, and therefore consumers would have to use logic and reason to understand the nature and attributes of the product. How do you think this came out? In re Fischer Medical Technologies, Inc., Serial No. 85465059 (October 10, 2013) [not precedential].

The evidence showed that applicant's goods are used for "diagnostic mammography," and that mammography is "radiography of the mammary gland." Radiography is the production of "a photographic image produced by the action of x-rays or nuclear radiation." Applicant Fischer, in a response to a request for information, stated that it intended to use the mark in connection with medical equipment used in breast imaging and biopsy procedures, employing computerized tomography.

Examining Attorney Brendan McCauley maintained that the mark describes a feature, characteristic, or purpose of the goods: namely, CAT or computer axial tomography apparatus and equipment used in breast biopsies.

Dictionary definitions established that "mammo" is a "combining form denoting relationship to the breast, or to a mammary gland." CAT is, of course, an abbreviation for "computerized axial tomography," a radial imaging technique that produces images of tissue density in slices through the patient's body. The question was whether the combination of the terms "CAT" and "mammo" evokes a new and unique commercial impression, or whether the two descriptive components merely provide a composite meaning that is itself merely descriptive.

The Board found that MAMMOCAT, when used in connection with the identified goods, means a mammographic cat scan. Each term retains its original descriptive meaning.

Applicant argued that dissecting the mark into two words is not the only way the term could be parsed [MAMM O'CAT? - ed.], and in any case the terms MAMMO and CAT have multiple meanings. Consumers would have to exercise logic and reasoning to understand the nature of its products. The Board pointed out, however, that the meaning of a mark must be determined in relation to the identified goods, not in a vacuum.

Applicant pointed to third-party registrations for ORTHCAT and pedCAT, but the Board shrugged them off, observing once again that it is not bound by prior actions of the PTO in other cases.

Finally, applicant pointed to a CCPA decision deeming BIASTEEL to be not merely descriptive of tires. There, the court noted that "prior decisions in this area are not very helpful in deciding the issue of descriptiveness. The final determination is many times quite subjective." Here, although there was no evidence that third-parties use MAMMO and CAT together, the evidence was sufficient to show that MAMMOCAT is descriptive. There was nothing in the record to suggest that MAMMOCAT has any other meaning than, or would be perceived as referring to anything other than, a mammography CAT scan. And even if applicant is the first and only user of MAMMOCAT, it may still be descriptive of the goods.

And so the Board affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog note: Do you think this is a WYHA? Or does the third-party evidence and prior CCPA decision keep it out of that category?

Text Copyright John L. Welch 2013.


At 10:36 AM, Anonymous Anonymous said...

"Applicant pointed to third-party registrations for ORTHCAT and pedCAT, but the Board shrugged them off, observing once again that it is not bound by prior actions of the PTO in other cases.'

Somebody needs to appeal this stuff, and point out that stare decisis is fundamental to due process and chucking precedent that cavalierly is unconstitutional.

At 11:12 AM, Anonymous Anonymous said...

What does the acronym WYHA stand for?

At 11:26 AM, Blogger John L. Welch said...

A "WYHA?" decision is one as to which I raise the question: "Would You Have Appealed?" If you put WYHA? into the blog's search engine, you will get a raft of WYHA? postings.

At 11:58 AM, Anonymous Anonymous said...

I agree that I would like to see this appealed. I could think of several different meanings for "mammo" and the strong common meaning of "cat" as an animal combined with those meanings could arguably be considered suggestive. I like the analogous though non-precedential examples raised by the applicant.

I think this was a reasonable appeal.

At 1:46 PM, Anonymous Roberto Ledesma said...

I think this was worth appealing ... and since it was a 1(b) application, they had little recourse. I had to climb a couple steps of reasoning to get to the meaning of the mark ... not unlike TTABLOG (which I think is also inherently distinctive). Evidence of exclusive use may have and should have been helpful (although it apparently did not help the TTABLOG mark).

At 4:17 PM, Blogger David Menken said...

Even Orthocat comes close to generic. Will mammocat mean that one can't say, "I'll give you a mammo and a cat, and order "mammocat"? This is going too far.

At 5:14 AM, Anonymous Anonymous said...

Yeah, interesting, but how would you answer the WYHA question as posed by the applicant in Doc.#21 in Opp. No. 91205751?

At 2:27 PM, Anonymous Anonymous said...

Another case that shows the Board is lost at sea. Appeal, here we come.


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