Dorr Arthritis Institute Medical Associates, Inc.

Trademark Trial and Appeal Board

Feb 1, 2012

No. 77803520 (T.T.A.B. Feb. 1, 2012)

Mailed:
February 1, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dorr Arthritis Institute Medical Associates, Inc.
________

Serial No. 77803520
_______

Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for Dorr
Arthritis Institute Medical Associates, Inc.

Kaelie E. Kung, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).1
_______

Before Bucher, Zervas and Shaw, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
Dorr Arthritis Institute Medical Associates, Inc. has
appealed from the final refusal of the examining attorney
to register on the Principal Register the term
ORTHOROBOTICS (in standard character form) as a trademark
for “medical surgery” in International Class 44.2

1 Another examining attorney was assigned to this application
prior to the appeal.
2 Application Serial No. 77803520 was filed on August 13, 2009,
based on applicant's assertion of its bona fide intention to use
the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77803520
2
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that, when used on applicant's
goods, the mark ORTHOROBOTICS would be merely descriptive
of such goods.
After the examining attorney issued the final action,
applicant filed an appeal and a request for
reconsideration. The examining attorney denied the request
for reconsideration, and subsequently both applicant and
the examining attorney filed briefs. We affirm the refusal
to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant's goods or services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute, function or property
of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
Serial No. 77803520
3
1973). “It is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork ….” See In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002).
According to the examining attorney, the term
ORTHOROBOTICS is a combination of the abbreviation “ortho”
for “orthopedic” and the word “robotics”; that both have
significance in connection with applicant's services; that
ORTHOROBOTICS “merely describes a characteristic or feature
of applicant’s service, namely, that applicant’s orthopedic
surgical services are performed through the use of robotic
machinery or with the assistance of robotic devices,” brief
at unnumbered p. 2; and that the combination of “ortho” and
“robotics” does not create a unique, incongruous or non-
descriptive meaning in relation to the services, citing In
re Colonial Stores, Inc., 394 F.2d 549, 1567 USPQ 382 (CCPA
1968)(composite term registrable as a unitary mark if it
has a separate, non-descriptive meaning).
The examining attorney cites the following evidence as
support for her refusal:
● entries for “ortho” from (i) www.acronymfinder.com,
(ii) wikipedia.com, (iii) Jablonski, S., Dictionary of
Medical Acronyms & Abbreviations (4th ed. 2001), and
(iv) Jablonski’s Dictionary of Medical Acronyms &
Serial No. 77803520
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Abbreviations (2009 ed.) (accessed at credoreference.com),
each showing “ortho” to be an abbreviation for
“orthopedics”;
● references to “ortho” as meaning “orthopedics” in
the context of orthopedic surgical services. See webpages
from St. Joseph Mercy Health System (“Ortho/Neuro Rehab”),
Broward Health (“View the Ortho Physicians Directory”), the
Champlain Valley Area Health Education Center (“An ortho
tech could work in a hospital, a clinic ….”) and
Northwestern University Feinberg School of Medicine (with
links to “Ortho Teaching Home”);
● definitions of “robotics,” including the definition
in encarta.com as “the science and technology relating to
computer-controlled mechanical devices such as the
automated tools commonly found on automobile assembly
lines”;
● references to “robotics” in the context of
orthopedic surgery, juxtaposed with “orthopedic,” including
the following:
- Advertising positions in “orthopedic robotics”
from job-search-engine.com (juju);

- A “management bio” of the president of Curexo
Technology Corporation identifying him as
“[w]idely recognized … a pioneer in the field
of orthopedic robotics” (from “robodoc.com);

Serial No. 77803520
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- A webpage from AubreyGroup listing “Orthopedic
robotics” as an area in which its staff has
experience (from aubreygroup.com); and

- A webpage from Precision Orthopedics, “a
dedicated group of world-class orthopedic
surgeons,” stating that “[t]hey use the most
advanced computerized orthopedic robotics
currently available in the world.”

● various uses of “orthopedics” in the same article as
“robotics”:
- A report entitled “Why Robotics Surgery has not
been successful in Orthopedics” (from
bharatbook.com);

- A webpage from “USA Society for Computer
Assisted Orthopaedic Surgery”; and

- An article entitled “Computer-Assisted
Orthopedic Surgery: Will OrthoPilot Replace
Intraoperative CT?”

● webpages from applicant’s own website, including one
that lists “Robotic Surgery” directly below the heading
“[o]ur orthopaedic services.”
Applicant makes several arguments in favor of
registration. First, applicant argues that the examining
attorney impermissibly dissected the mark into two
components. We disagree. Her consideration of each
component of the mark is “part and parcel of routine
examination of a multiword mark. The examining attorney’s
refusal is based on the mark as a composite, not only on a
theory that each of the terms would be subject to refusal
Serial No. 77803520
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if used separately.” In re King Koil Licensing Co., 79
USPQ2d 1048, 1051 (TTAB 2006).
Second, applicant argues that the examining attorney
inappropriately dismissed “many” other meanings of “ortho.”
According to applicant, “ortho” is a prefix with multiple
meanings, pointing to the wikipedia.com entry for “ortho”
which states “ortho” “may refer to” several terms in a
variety of fields, such as medicine and theology. Those
terms which are not in the medical field but involve
pesticides, aerial photography and electronics, are clearly
irrelevant to the issue sub judice. The references to
“ortho” in the medical field, aside from “Orthopedic, the
study of the musculoskeletal system,” are also irrelevant
because they have nothing to do with “medical surgery.”
See, for example, “ortho-DOT” a psychedelic drug and
“Ortho-cept,” an oral contraceptive drugs.3 In contrast,
the uses of “ortho” on the webpages submitted by the
examining attorney in the context of surgery, and
particularly orthopedic surgery, demonstrate a clear and
immediate association of “ortho” with “orthopedic,” and in

3 The argument applicant makes that consumers would associate
“ortho” with “orthodontics” until such consumers investigated
applicant’s services in greater detail is particularly untenable
– the mark must be considered in the context of the services, and
there is no reason apparent to us that consumers in need of
medical surgery, would consider “orthorobotics” to refer to
Serial No. 77803520
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the same way that “orthopedic” is used on applicant’s
webpage in connection with its medical surgery services.4
Hence, we are not persuaded by applicant’s arguments
regarding the abbreviation “ortho” for “orthopedic.”
Applicant also submitted approximately a dozen
registrations for ORTHO-formative marks for goods and
services related to orthopedics to show that “the Office
has consistently found that ‘ortho’ is at least
suggestive.” Brief at 8. None of the registrations
includes a disclaimer of the “ortho” component of the
marks. However, most of the marks are one-word marks,
which the reviewing examining attorneys may have viewed as
unitary and not requiring a disclaimer of the “ortho”
component. See TMEP § 1213.05(a) (8th ed.). One
registration has been cancelled; another - ORTHO
ENTERPRISES - is registered on the Supplemental Register
and hence supports the examining attorney’s position. On
balance, only two registrations support applicant’s
argument, namely, the registrations for ORTHO GRIP for
“hand manipulated orthopedic surgical devices” and ORTHO

robotics in the context of orthodontics, rather than robotics in
the context of orthopedic surgery.
4 At p. 3 of its reply brief, applicant maintains that the review
of several different web pages on its website is required to
understand “ortho” or “robotics.” Applicant ignores that “ortho”
is a recognized abbreviation for “orthopedics,” see supra, and
“robotics” is a defined term, see infra.
Serial No. 77803520
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XPRESS for services including “… providing post-operative
rehabilitation services to patients and medical
practitioners; providing information to medical
practitioners in the field of prescribing orthopedic
products to patients; [and] rental of orthopedic products.”
Two registrations hardly establish a “pattern and practice
of the Office.” Also, third-party registrations are not
conclusive on the question of descriptiveness; each case
must stand on its own merits, and a mark that is merely
descriptive should not be registered on the Principal
Register simply because other such marks appear on the
register. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001); In re theDot Communications
Network LLC, 101 USPQ2d 1062 (TTAB 2011).
Third, regarding the term “robotics,” applicant argues
that “robotics” is inherently vague; and that “‘robotics’
is not a specific reference to any type of service, but
generally refers to ‘the use of computer-controlled robots
to perform manual tasks.’” Brief at 7. Applicant relies
on a dictionary.com definition of “robotics” in the record,
namely, “the use of computer-controlled robots to perform
manual tasks”; and points out that the mark must describe
applicant’s services with particularity in order to be
descriptive. We are not persuaded by this argument in view
Serial No. 77803520
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of the more specific definitions of “robotics” that the
examining attorney included in the record and in view of
the unambiguous uses of “robotics” in the context of
orthopedic surgery in the webpages of record, including on
applicant’s website.
Fourth, applicant argues that the examining attorney
failed to identify any meaning for ORTHOROBOTICS as a
whole. The fact that the examining attorney did not
produce evidence showing use of ORTHOROBOTICS does not mean
that the term is not descriptive. See In re American
Society of Clinical Pathologists, Inc., 442 F.2d 1404, 169
USPQ 800 (CCPA 1973). The meaning is apparent from the
combination of “ortho” and “robotics.”
The record reflects that “ortho” is an accepted and
well-used abbreviation for “orthopedic” in the context of
medical surgery; and that “robotics” is well used in the
context of medical surgery, and, in fact, orthopedic
surgery. The combination of “ortho” and “robotics” does
not create a unique, incongruous or non-descriptive meaning
in relation to the services. We therefore find that
purchasers of medical surgery services would immediately
perceive the combination as referring to the use of robotic
devices in the context of orthopedic surgery.
Serial No. 77803520
10
Finally, applicant urges us to resolve any doubt on
the issue of mere descriptiveness in its favor. We do not
have any doubts on this issue.
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) of the Trademark Act is
affirmed.