Liebel-Flarsheim Co.

Trademark Trial and Appeal Board

Aug 17, 1999

No. 75094858 (T.T.A.B. Aug. 17, 1999)

Paper No. 15
BAC
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG. 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Liebel-Flarsheim Company
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Serial No. 75/094,858
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Donald F. Frei of Wood, Herron & Evans, L.L.P. for Liebel-
Flarsheim Company.
Jennifer Stiver Chicoski, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Hohein, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Liebel-Flarsheim
Company to register the mark ECHO CM for “powered injectors
for injecting contrast media into the body of a human or
animal to facilitate imaging body organs and systems by
radiography, ultrasound, magnetic resonance, computer
tomography, and the like; medical tubing for administration
and draining of fluids; catheters; containers, namely,
Ser. No. 75/094858
2
syringes; medical apparatus, namely contrast media power
injection operator consoles, console and injector power
head mounts, and accessories, namely extension and
interconnect cables, remote switches, ECG interfaces and
pre-amplifiers; syringe pressure jackets and heaters, and
bottle holders; all for use in connection with such
contrast media power injectors.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that the term ECHO CM when applied to the goods of
the applicant, is merely descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant requested
an oral hearing, but subsequently withdrew said request.
The Examining Attorney contends that “echo” is defined
in Dorland’s Illustrated Medical Dictionary (1994) as
“repetition of a sound as a result of reverberation of
sound waves; also the reflection of ultra-sonic, radio, and
radar waves,”2 and that “CM” is the recognized acronym for
“contrast media.” The Examining Attorney also submitted

1 Application Serial No. 75/094,858, filed April 26, 1996,
alleging a bona fide intention to use the mark in commerce.
2 The Examining Attorney also submitted, from the same
dictionary, the definition of the term “echography,” which is
defined as “ultrasonography; the use of ultrasound as a
diagnostic aid.”
Ser. No. 75/094858
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the Current Med Talk, A Dictionary of Medical Terms, Slang
& Jargon (1995) definition of “contrast medium” as follows:
“Radiology A substance with a density
differing from that of the organ or structure
being imaged, which allows delineation of
abnormalities of contour; contrast media that
are more radiopaque (usually containing
barium or iodine) than the organ or structure
being analyzed may be designated as positive
contrast media, while those that are less
radiopaque, eg air, are known as negative
contrast media.”
The Examining Attorney concludes that the term ECHO CM
immediately conveys specific descriptive meanings within
the context of the field of diagnostic imaging; that
applicant’s goods (as identified) are used to inject
“contrast media into the body” “to facilitate imaging body
organs and systems by radiography, ultrasound, magnetic
resonance, computed tomography and the like”; and that
applicant’s applied-for mark is merely descriptive of a
feature or characteristic of the involved goods.
In further support of her position, the Examining
Attorney submitted (i) copies of several excerpts from a
Nexis search showing the letters “CM” are the recognized
initials for “contrast media”; (ii) copies of a few
excerpts from a Nexis search demonstrating use of the term
“echo contrast media” as used in diagnostic imaging; and
(iii) copies of a few website pages showing that “echo
Ser. No. 75/094858
4
contrast media” and “echo contrast agents” are terms in
common use to describe medical imaging.
Examples from the Examiner’s Nexis evidence showing
use of “CM” are shown below:
Contrast media (CM) affect normal
cardiac electrophysiology when injected into
the coronary arteries. High-osmolality CM
cause more pronounced electrophysiological
effects than do low-osmolality CM. ...
“National Library of Medicine MEDLINE
Database,” 1995; and
...To obtain higher sensitivity in
diagnoses of focal lesions in the liver,
contrast media (CM) are used. Non-specific
extracellular CM are not optimal as they
rapidly diffuse into both normal tissue and
tumorous tissue. ... “National Library of
Medicine MEDLINE Database,” 1995.
Examples from the Examiner’s Nexis evidence showing
use of “echo contrast media” are shown below (emphasis
added):
Phantom studies using echo contrast
media to improve the Doppler color
monographic imaging of the superficial
femoral artery in the adductor canal...
“National Library of Medicine MEDLINE
Database,” May 1991; and
Our results demonstrate that digital
subtraction echocardiography is a simple an
(sic) safe procedure to define endocardial
contours if echo contrast media lead to
uniform and homogeneous opacification of the
left and right cardiac cavities. “National
Library of Medicine MEDLINE Database,” June
1986.
Ser. No. 75/094858
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Applicant urges reversal on the basis that it
currently markets contrast delivery systems under other
marks, but, as shown by its promotional brochures,
applicant does not use the word “echo” or the letters “CM”
in its brochures; that applicant’s competitors do not use
this terminology to sell goods of a similar type; that
there are other terms to refer to applicant’s goods, such
as “power injectors,” CT injectors,” or angiographic
injectors”; and that, when viewed as a whole, the applied-
for “mark, at most, is suggestive of the function, feature,
purpose or use of Applicant’s power injectors, namely to
inject contrast media into the body.” (Reply brief, p. 2).
In its April 14, 1997 response to the first Office
action, applicant stated the following:
Applicant acknowledges that “CM” is used
by some people as an acronym for “Contrast
Media”. Applicant further acknowledges that
its apparatus for which registration is sought
are injectors for contrast media. Applicant
also notes that certain of the articles cited
by the Examiner use the term “Echo Contrast
Media”. However, applicant submits that such
terminology is very, very rarely used in the
contrast media power injector field and/or the
medical imaging field. Applicant also
acknowledges that the term “Echo” is used in
the imaging field to describe an ultrasonic
imaging phenomenon or technique.
Finally, in its reply brief, applicant stated the
following (emphasis added):
Ser. No. 75/094858
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If ECHO CM is equivalent to “echo
contrast media,” as the Examiner contends,
this still does not support the conclusion
that Applicant’s media injectors, because they
can be used to inject contrast media into the
body, are described by the term ECHO CM.
Stated differently, merely because Applicant’s
goods can be used to inject echo contrast
media, the term ECHO CM does not describe an
ingredient of Applicant’s injectors, nor does
it describe a quality of Applicant's
injectors, nor does it describe a
characteristic of Applicant’s injectors.
A term is merely descriptive of goods or services,
within the meaning of Section 2(e)(1), if it immediately
conveys information concerning an ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term or phrase describe all of
the properties or functions of the goods or services in
order for it to be considered merely descriptive thereof;
rather, it is sufficient if the term or phrase describes a
significant attribute of the goods or services.
The question of whether a particular term or phrase is
merely descriptive must be determined not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which the term or
Ser. No. 75/094858
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phrase is being used on or in connection with those goods
or services, and the possible significance that the term or
phrase is likely to have to the average purchaser of the
goods or services because of the manner in which it is
used. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). See also, In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995); and In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991). See also, 2 J. McCarthy, McCarthy
on Trademarks and Unfair Competition, §§11:66-11:71 (4th
ed. 1999)
As stated by our primary reviewing court in In re
Gould Paper Corporation, 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987) (holding SCREENWIPE generic for wipes that clean
computer and television screens), the Patent and Trademark
Office may satisfy its evidentiary burden by means of
dictionary definitions showing that the “separate words
joined to form a compound have a meaning identical to the
meaning common usage would ascribe to those words as a
compound”. See also, In re Analog Devices Inc., 6 USPQ2d
1808 (TTAB 1988); aff’d in op. not for pub., 871 F.2d 1097,
10 USPQ2d 1879 (Fed. Cir. 1989). Here the Examining
Attorney has met the burden of establishing a prima facie
case of mere descriptiveness.
Ser. No. 75/094858
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In the present case, based on the evidence described
above, we find that the term ECHO CM, when applied to
applicant’s power injectors for injecting contrast media
into the body, is merely descriptive of the type of
injectors, i.e., echo contrast media injectors, in that it
immediately informs prospective purchasers, without
conjecture or speculation, of a significant purpose,
function or use of applicant’s goods. That is, we find
that the term ECHO CM, when used in connection with the
involved goods, immediately conveys to the medical or
administrative/medical personnel who would be the
prospective users and/or purchasers of these goods, the
idea of contrast media used to create echo imaging. See In
re Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994)
(SMARTPROBE merely descriptive of disposable cryosurgical
probes); and In re Medical Disposables Co., 25 USPQ2d 1801
(TTAB 1992) (requirement for a disclaimer of the merely
descriptive terms “medical disposables” for various
disposable wash cloths, garments, bed sheet liners, and the
like affirmed).
Moreover, the term ECHO CM does not involve any
incongruous or unusual word combinations, and no
imagination is needed to understand the meaning of ECHO CM
Ser. No. 75/094858
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in reference to applicant’s injectors of contrast media
used to facilitate medical imaging.
Further, even if applicant is the first (and/or only)
entity to use the term ECHO CM in relation to power
injectors for injecting contrast media, such is not
dispositive where, as here, the term unquestionably
projects a merely descriptive connotation. See In re
Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994), and cases
cited therein.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
G. D. Hohein
B. A. Chapman
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board