John C. Somberg

Trademark Trial and Appeal Board

Apr 29, 1999

No. 75105514 (T.T.A.B. Apr. 29, 1999)

Paper No. 14
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re John C. Somberg
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Serial No. 75/105,514
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Patricia A. Cigelnik of Dvorak & Orum for applicant.
Mark Sparacino, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
____________
Before Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
John C. Somberg has filed a trademark application to
register the mark THERAPEUTIC WINDOW for “computer software
for medical diagnosis and treatment.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act,

1 Serial No. 75/105,514, in International Class 9, filed May 17, 1996,
based on an allegation of a bona fide intention to use the mark in
commerce.
Serial No. 75/105,514
2
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
Both the Examining Attorney and applicant agree that
the term “therapeutic window” has a specific recognized
meaning in the medical field. The Examining Attorney
accepts applicant’s description of “therapeutic window” as
“the range of medication which is the recommended dosage
for treatment of a specific medical condition[;] [t]he
lower number of that range is the minimum dosage which is
necessary for the medication to be effective; the higher
number of that range is the maximum dosage which should be
administered before the medication could have an adverse
effect or could become toxic.” [Applicant’s brief, p. 2.]
Additionally, applicant submitted the following excerpt
from Cecil Textbook of Medicine, 17th ed., W. B. Saunders
Company (1985), describing “therapeutic window”:
Therapeutic Window. For plasma levels to be a
useful guide to therapy, the range of drug
concentrations required for optimal therapeutic
effects with minimal toxicity must be
established. This range is called the
“therapeutic window” and is determined
experimentally for each drug in a group of
patients who are carefully observed for desired
and toxic drug effects.
Serial No. 75/105,514
3
The Examining Attorney also accepts applicant’s statement
that the “‘therapeutic window’ of a drug is developed and
derived by the manufacturing pharmaceutical company, for
use by a medical practitioner in prescribing the proper
doses for patients.” [Applicant’s brief, p. 2-3.]
The Examining Attorney submitted excerpts of articles
from the NEXIS/LEXIS database that use the term
“therapeutic window,” and several examples follow:
“… First they help maintain the concentration of
the drug in the blood within what is called the
drug’s ‘therapeutic window,’ in which the drug
has its most beneficial effect.” Standard &
Poor’s Emerging and Special Situation, October
15, 1996.
“Neuprex appears to have a nice therapeutic
window, with efficacy seen in the 4 mg/kg/day
range and toxicity in the preclinicals showing up
at doses …” Bioventure View, September 1, 1996.
“… drug has a narrow therapeutic index, however,
and has the potential to cause significant
toxicity. The misuse of digoxin in the elderly
is of special concern because the therapeutic
window narrows in this population …” Drug
Topics, July 8, 1996.
“Maximum values, however, are ‘generally only
important for those nutrients of known potential
toxicity, especially for those with a narrow
therapeutic window (e.g., vitamins A and D),’ IFC
said.” Food Chemical News, June 24, 1996.
Considering this evidence and applicant’s explanation and
evidence, the Examining Attorney argues the following:
Serial No. 75/105,514
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One attribute of applicant’s software is that it
provides a recommendation for the optimal dose of
a drug to be prescribed for a given condition.
In order to provide that recommendation, the
software uses the therapeutic window of the drug
to be prescribed. The dosage of the drug
prescribed by the software must be within the
therapeutic window of the drug. The term
therapeutic window, therefore, describes a
feature of the medical software and is merely
descriptive.
[Examining Attorney’s brief, p. 4.]
Applicant contends, on the other hand, that the
Examining Attorney misunderstands both the actual meaning
and application of the term “therapeutic window” and the
nature of applicant’s software and its intended uses.
Applicant explains that the meaning and use of the term
“therapeutic window” is limited; that it “is generally used
when discussing the research and development of specific
drugs”; and that “applicant’s software is not used to help
a health care provider determine or track a drug’s
therapeutic window; such a determination is made by the
pharmaceutical companies.” [Applicant’s brief, p. 3.]
Applicant submitted printouts showing several of its
software screens, including an index of topics, several
diagnostic screens, and one screen entitled “Suggested
Therapeutic Options” that recommended medications and
indicated doses and warnings. Additionally, applicant
submitted a description of its software as “a series of CD-
Serial No. 75/105,514
5
ROM based computer programs, covering a wide spectrum of
topics in medicine … it is designed to aid the physician
both in making a diagnosis for a patient presenting with a
complex of symptoms, and in selecting an optimal treatment
plan for that patient based on current state-of-the-art
standards of medical practice, cost considerations, and the
patient’s medical history.” Applicant contends that its
software has nothing to do with determining or tracking a
drug’s therapeutic window; and that its proposed mark “is
suggestive that its software is for use in the healthcare
industry.” In its brief, applicant indicated its
willingness to enter a disclaimer of “therapeutic.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well-established that the
Serial No. 75/105,514
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determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
In the present case, we find that the Examining
Attorney has not established that, when applied to
applicant’s goods, the mark THERAPEUTIC WINDOW immediately
describes, without conjecture or speculation, a significant
feature or function of such goods. We believe that some
cogitation or mental processing would be required for
prospective customers of applicant’s goods to readily
perceive the mark THERAPEUTIC WINDOW as merely descriptive
as it pertains to applicant’s software for medical
diagnosis and treatment. We find applicant’s explanation
of the significance of the term “therapeutic window” in the
medical field to be credible and uncontroverted by the
Examining Attorney. While drug dosage levels are within
the “therapeutic windows” established by pharmaceutical
manufacturers, the term “therapeutic window” does not
appear to be synonymous with terms used by medical
practitioners, such as “recommended dosage” and the like.
Thus, we find the mark THERAPEUTIC WINDOW herein to be
Serial No. 75/105,514
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somewhat incongruous such that the significance of the term
in the context of applicant’s software is not immediately
apparent.2
There is a fine line between what is a suggestive mark
and what is unregistrable merely descriptive matter. It is
our view that the record before us is not sufficient3 to
establish that the term THERAPEUTIC WINDOW, when applied to
applicant’s goods, is merely descriptive thereof. We
believe that this is a close case and we emphasize that our
determination on this issue is not free from doubt.
However, where there is doubt on the question of mere
descriptiveness, that doubt is to be resolved in
applicant’s behalf and the mark should be published for
opposition. See, In re Rank Organization Ltd., 222 USPQ
324, 326 (TTAB 1984) and cases cited therein.

2 We find it unnecessary to address applicant’s offer, not addressed by
the Examining Attorney, to consider a disclaimer of the word
THERAPEUTIC in its mark.
3 We do not intend by this statement to criticize the Examining
Attorney’s presentation of his case. First, we note that this
application is based on a bona fide intention to use the mark in
commerce and, thus, no specimens are of record. Further, we recognize
that there are practical limitations to the nature of evidence
accessible to an Examining Attorney in defending a refusal in an ex
parte matter. That is to say, our conclusion in this ex parte appeal
would not, of course, preclude the Board from reaching a different
result in a subsequent inter partes proceeding brought against this
same application by a competitor of applicant, if the competitor was
able to present evidence that the term “therapeutic window” is merely
descriptive when used in connection with goods of the type identified
herein.
Serial No. 75/105,514
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Decision: The refusal under Section 2(e)(1) of the
Act is reversed.
T. J. Quinn
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board