Biofertec Ltd.

Trademark Trial and Appeal Board

Sep 10, 1999

No. 75187413 (T.T.A.B. Sep. 10, 1999)

Hearing: Paper No. 13
February 3, 1999 JQ
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB 9/10/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Biofertec Ltd.
________
Serial Nos. 75/187,412 and 75/187,413
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Peter L Costas of Pepe & Hazard for applicant.
Teresa A. Lee, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______
Before Simms, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications have been filed by Biofertec Ltd. to
register the mark INTRA VAGINAL CULTURE for “medical
services, namely in vivo fertilization of human embryos”1
and the mark IVC for an “in vivo fertilization kit
including vaginal tube, syringes, pipette tips, containers
and ancillary equipment for in vivo fertilization

Ser No. 75/187,412 and 75/187,413
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procedure” and “medical services, namely in vivo
fertilization of human embryos.”2
The Trademark Examining Attorney has refused
registration in each instance under Section 2(e)(1) of the
Trademark Act on the ground that the marks sought to be
registered, when applied to applicant’s goods and services,
are merely descriptive of them.3
When the refusals to register were made final,
applicant appealed. Applicant and the Examining Attorney
filed briefs, and an oral hearing was held before the
Board. Because of the close similarity of the issues
involved in these two appeals, the Board shall explain our
decisions in both of these cases in one opinion.
The Examining Attorney maintains that IVC is a
recognized abbreviation for the terms “intra vaginal
culture”, and that the marks merely describe goods and
services involving the cultivation of an embryo within the
vagina. In support of the refusal, the Examining Attorney
submitted dictionary listings and excerpts retrieved from
the NEXIS database.

1 Application Serial No. 75/187,412, filed October 25, 1996,
based on a bona fide intention to use the mark in commerce.
2 Application Serial No. 75/187,413, filed October 25, 1996,
based on a bona fide intention to use the mark in commerce.
Ser No. 75/187,412 and 75/187,413
3
Applicant contends, in urging that the refusal be
reversed, that the Examining Attorney has improperly
dissected the marks, and that the marks, when considered as
a whole, are not merely descriptive. Applicant also
asserts that the NEXIS evidence shows that the marks are
being utilized only by applicant or those associated with
applicant.
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
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

3 The Examining Attorney, in her brief, withdrew a requirement
for submission of informational/promotional materials.
Ser No. 75/187,412 and 75/187,413
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registration is sought. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979).
Given the nature of the refusal, it is important to
understand the technical specifics of the goods and
services involved here. Rather than comply with the
Examining Attorney’s requirement for literature, applicant
pointed to the NEXIS evidence, stating that “[t]he services
are also described in the articles which the Examiner has
noted.” The following NEXIS excerpt is typical in
describing applicant’s medical procedure:
In [applicant’s] approach, ovulation is
allowed to proceed naturally, with very
low-level stimulation. When tests show
the woman is ready to ovulate, she goes
to her doctor’s office, where she takes
a painkiller before the doctor uses a
small needle to harvest one to three
eggs through the back wall of the
vagina. The egg is then fertilized
with the sperm and sealed in a patented
plastic vial that Ranoux developed.
The woman inserts the tube into her
vagina, much like a tampon, where it
incubates for two days. Then, the
embryo is implanted in the uterus.
The Boston Globe, September 8, 1996
Applicant’s procedure is contrasted with other in
vitro fertilization (IVF) techniques:
Whereas, in other IVF procedures,
fertilization of the egg occurs in an
incubator outside the body, with IVC,
the egg(s) and sperm are placed in a
tube which is inserted into the
mother’s vaginal cavity and held in
Ser No. 75/187,412 and 75/187,413
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place by a diaphragm. The benefits of
this technique...are that fertilization
and embryonic development occur in the
natural environment of the mother’s
body and therefore more closely
replicate a “natural” pregnancy.
Business Wire, November 28, 1988
The following is established by the record. The
letters IVC are an abbreviation for “intravaginal culture.”
Acronyms, Initialisms & Abbreviations Dictionary (1998).
The term “intra” is defined as “within” and the term
“vaginal” is defined as “of or pertaining to the vagina.”
Webster’s II New Riverside University Dictionary (1988).
The term “culture” means “the propagation of mammalian
cells.” Stedman’s Medical Dictionary (26th ed. 1995).
The NEXIS excerpts include the following:
...the potential of a new technology
called Natural Cycle Ovum Retrieval and
Intravaginal Culture Fertilization
(IVC)...Poorer, older, exhausted, we
nevertheless agreed to one last try
using IVC.
The New York Times, May 17, 1992
Hence, the most recent trend in
infertility--Natural Cycle Ovum
Retrieval and Intravaginal Culture
Fertilization (IVC), a new and (except
for its title) relatively user-friendly
version of IVF.
The New York Times, March 15, 1992
A new method of fertilization,
intravaginal culture (IVC), allows
fertilization to occur in vivo...
The Hastings Center Report, September
1989
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The first North American births,
resulting from a new in vitro
fertilization technique called IVC
(intra vaginal culture), took place
earlier this week.
Business Wire, November 28, 1988
The words/letters comprising applicant’s marks have
readily understood meanings as shown by the dictionary
listings and the NEXIS articles. Moreover, the separate
words INTRA VAGINAL CULTURE lose none of their meanings
when joined to form this compound mark. There is nothing
left for speculation or conjecture when the marks sought to
be registered are applied to applicant’s goods and
services. The marks immediately describe the essence of
the goods and services, namely that they involve the
propagation of cells within the vagina. The fact that
applicant may be the first one using INTRA VAGINAL CULTURE
or IVC in the field is not dispositive. In re Central
Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998).
Finally, for the sake of completeness, we should point
out that the instant case involves mere descriptiveness,
not genericness, and that the record includes descriptive
uses as shown by the NEXIS evidence. Cf. In re The
American Fertility Society, Appeal No. 98-1540 (Fed. Cir.
Aug. 19, 1999).
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Decision: The refusals to register are affirmed.
R. L. Simms
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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