TTAB Affirms Disclaimer Requirement; "4D" Merely Descriptive of Medical Monitoring Devices

The Board affirmed a requirement that applicant Masimo Corporation disclaim the term "4D" in its applied-for mark RAINBOW 4D for "medical devices, namely, patient monitors and patient sensors for monitoring and measuring blood properties or respiratory events." Masimo argued that RAINBOW 4D is a unitary mark and that a disclaimer is unnecessary, but the Board ruled otherwise. In re Masimo Corporation, Application No. 85041477 (September 30, 2013) [not precedential].

According to applicant Masimo, the combination of RAINBOW and 4D is incongruous because the term 4D is not associated with the word RAINBOW. The Board, however, pointed out that a mark is not unitary merely because its constituent parts have no relation to one another. Indeed, such marks "are categorically not unitary." A mark in considered unitary because its constituent words are related and their combination changes the impact of the words on the consumer. [e.g., URBAN SAFARI].

[A] mark is incongruous if the juxtaposition of its elements creates cognitive tension, such as when the combination of terms makes sense on one level, but clashes on another. This does not result from the use of random words which share no meaning at all, but rather from words whose meanings intersect, although not in the expected way.

As to the meaning of "4D," the evidence made clear that it means "four-dimensional" or "fourth dimension." In the context of applicant's goods, the four dimensions are length, width, height, and time. "4D" is commonly used in connection with medical devices that provide four-dimensional imaging.

Six registrations submitted by Examining Attorney Charles L. Jenkins, Jr., included disclaimers of "4D" in connection with goods or services relating to medical imaging. Masimo provided one pertinent registration (CINEMA 4D) in which "4D" was not disclaimed. In any event, the Board noted that it was not bound by the decisions of examining attorneys in other applications, but was required to rule based on the evidence in this case.

The Board concluded that the evidence "clearly demonstrates" that 4D is merely descriptive of "medical imaging devices that display three-dimensional images over time."

Masimo, however, maintained that its goods are not imaging devices. The Board recognized that applicant’s identification of goods does not explicitly include "medical imaging devices," but it proceeded to consider whether such devices are included in "patient monitors and patient sensors."

Based on several medical dictionaries, the Board concluded that a "patient monitor" includes an apparatus or device to observe or record a biological condition or phenomenon. It was clear from the evidence that "many of the 4D medical imaging devices discussed in the webpages and articles clearly fit the definition of a 'patient monitor,' i.e., a device to observe or record a biological condition or phenomenon. Indeed, the entire point of medical imaging devices is to observe biological conditions or phenomena, and it is obvious from the evidence that many — possibly all — of the devices or apparatus discussed in the evidence can also record what they observe on CDs, DVDs and other media."

As to the specific purpose of applicant’s goods — "for monitoring and measuring blood properties or respiratory events" — the evidence of record indicated that 4D imaging can be used to observe fetal blood flow, and phases of the respiratory cycle.

And so the Board concluded that 4D medical imaging devices fall within applicant’s identification of goods, and it affirmed the requirement that 4D be disclaimed.

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TTABlog note: Masimo submitted a third-party registration for 4D-NUCLEOFECTOR, but the Board considered it irrelevant because a hyphenated mark is unitary, and therefore "4D" need not be disclaimed in that mark.

Text Copyright John L. Welch 2013.