ATL Washington, Inc.

Trademark Trial and Appeal Board

Jul 28, 1999

No. 75122935 (T.T.A.B. Jul. 28, 1999)

Paper No. 15
JQ
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re ATL Washington, Inc.
________
Serial No. 75/122,935
_______
Edward A. Uhl and Frederick J. McKinnon for applicant.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by ATL Washington, Inc.1
to register the mark TISSUE SPECIFIC for “medical
apparatus, namely, a feature of a medical diagnostic
ultrasound apparatus consisting of computer hardware and

1 Later in the prosecution, the owner of the application was
identified as “Advanced Technology Laboratories, Inc. (formerly
ATL Washington, Inc.).” To date, the appropriate change of name
documents have not been filed with the Assignment Branch of the
Office. See generally 37 C.F.R. §3.11 et. al.
Ser No. 75/122,935
2
software for enhancing the recording, storing, formatting
and analyzing [of] ultrasound images.”2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, when applied to
applicant’s goods, is merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.3 An
oral hearing was not requested.
Applicant contends that the mark is just suggestive
“because a considerable degree of imagination is required
on behalf of a consumer to determine the nature of
Applicant’s goods from the mark.” Applicant also contends
that the terms “tissue” and “specific” each have a variety
of meanings, and that marks which use the term “tissue” in
a more descriptive manner than in applicant’s suggestive
mark have issued on the Principal Register.4 Insofar as the

2 Application Serial No. 75/122,935, filed June 20, 1996,
alleging dates of first use of August 1, 1995.
3 Registration also was finally refused on the basis that the
specimens were unacceptable. Applicant indicates in its appeal
brief, however, that the Examining Attorney, in a telephone
conversation with applicant’s attorney, withdrew this final
refusal. The Examining Attorney does not dispute this contention
and, in point of fact, the Examining Attorney’s appeal brief does
not mention this refusal. The Board therefore assumes that the
refusal stands withdrawn, and no consideration has been given to
this refusal.
4 Applicant’s mere reference to two third-party registrations
would generally be insufficient to make the registrations of
Ser No. 75/122,935
3
NEXIS evidence submitted by the Examining Attorney is
concerned, applicant points out that none of the articles
relates to ultrasound imaging. Applicant has submitted
dictionary listings for the words “tissue” and “specific.”
The Examining Attorney maintains that the mark merely
describes a significant feature of applicant’s goods,
namely settings that allow for ultrasound imaging of
specific tissue. In support of the refusal, the Examining
Attorney has submitted excerpts retrieved from the NEXIS
database and dictionary listings for the two terms in
applicant’s mark.5
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
is not necessary that a term describe all of the properties

record; copies of the registrations themselves are required for
that purpose. In re Classic Beverage Inc., 6 USPQ2d 1383 (TTAB
1988). Despite this deficiency, the Examining Attorney has
considered the registrations as if properly of record. Thus, we
have considered them in reaching our decision.
5 The dictionary evidence was submitted with the appeal brief,
but we are able to take judicial notice of these definitions.
Ser No. 75/122,935
4
or functions of the goods and/or services in order for it
to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant
attribute or feature about them. Moreover, whether a term
is merely descriptive is determined not in the abstract but
in relation to the goods and/or services for which
registration is sought. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). Thus, contrary to the gist of some
of applicant’s remarks, “[w]hether consumers could guess
what the product [or service] is from consideration of the
mark alone is not the test.” In re American Greetings
Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s product literature (“Reference Manual”)
shows the following uses of the term “tissue specific”:
From this display, you select the
scanhead, a clinical option (listed in
the left column on the Scanhead
display), and a tissue-specific preset
(listed in the right column on the
Scanhead display).
*****
This assignment can be accomplished
automatically by selecting an ATL-
derived tissue specific preset or it
can be accomplished by the user,
through the creation of a customized
preset...For example: within the small
parts clinical option, the tissue
specific presets are thyroid, testicle,
breast, and superficial. If you select
the small parts clinical option, these
tissue specific presets will be
displayed on the Scanhead display for
Ser No. 75/122,935
5
your selection...The more specific you
are about your use of the system, the
more precise the system can be about
providing the tissue specific setups
for that use.
The relationship between a clinical
option and the use of the correct
scanhead for that option is critical to
image quality. The system allows you
to optimize the system for use with a
scanhead for tissue specific imaging.
The excerpts retrieved from the NEXIS database show
the following representative uses:
Using a more common method of
cooling...and a tissue-specific imaging
modality...
The American Journal of Sports
Medicine, January 1995
Thus, the present role of imaging is
not to make a tissue-specific diagnosis
but to assess tumor aggressiveness...
American Family Physician, April 1992
The term “tissue” is defined as “a collection of
similar cells and the intercellular substances surrounding
them” and “specific” is defined as “set forth explicitly;
intended for, applying to, or acting on a given thing.”6
The commonly understood meanings of the terms “tissue” and
“specific,” coupled with the NEXIS evidence and applicant’s
own descriptive uses, convince us that the mark, when

6 Applicant’s reference to the fact that “tissue” is also defined
as “a soft and very absorbent piece of paper” makes little sense
relative to the specific goods to which the mark is applied.
Ser No. 75/122,935
6
applied to applicant’s goods, is merely descriptive as
contemplated by Section 2(e)(1) of the Act. Applicant’s
medical apparatus, as shown by the product literature of
record, features “tissue-specific” presets for ultrasound
imaging purposes. These presets allow the user of
applicant’s goods to select the setting that is specific to
the type of tissue to be imaged (e.g., thyroid, breast or
testicle), which, according to the literature, results in
benefits such as faster exams and more consistent images.
Thus, a significant characteristic of feature of
applicant’s ultrasound apparatus is that the goods contain
settings that allow for tissue-specific imaging. See: In
re Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB
1996)[VISUAL DESIGNER is descriptive of computer programs
for controlling the acquisition of data from measurement
devices for the purpose of analysis, display, testing and
automatic control; the term describes a feature of the
goods, namely that they permit programming applications to
be visually designed].
The two third-party registrations are of little help
in determining the registrability of the mark at issue in
this case. As often noted by the Board, each case must be
decided on its own set of facts, and we are not privy to
the facts involved with these registrations. While uniform
Ser No. 75/122,935
7
treatment under the Trademark Act is highly desirable, our
task here is to determine, based upon the record before us,
whether applicant’s mark is registrable.
Decision: The refusal to register is affirmed.
R. L. Simms
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/122,935
8