Neurobotics, L.L.C.

Trademark Trial and Appeal Board

Aug 8, 2008

No. 78596887 (T.T.A.B. Aug. 8, 2008)

Mailed: August 8, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Neurobotics, L.L.C.
________

Serial Nos. 78596887 and 785969571
_______

Louis M. Heidelberger of Reed Smith LLP for Neurobotics,
L.L.C.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Drost, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Neurobotics, L.L.C., applicant, seeks registration on
the Principal Register of the mark NEUROBOTICS (in standard
character format) for the following goods and services:
Augmented surgical interface control systems,
namely, medical apparatus and instruments for use
in general surgery and for use in the training
and simulation of surgery; surgical systems with
surgical equipment in the nature of augmented
surgical interfaces which incorporate surgical

1 Inasmuch as the issues raised by the appeals in both of the
above-noted applications are similar, the Board is addressing
them in a single opinion. Citations to the briefs refer to the
briefs filed in application serial No. 78596887, unless otherwise
noted; however, we have, of course, considered all arguments and
evidence filed in each case.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 78596887 and 78596957
2
instruments, medical tissue imaging apparatuses,
surgical instrument motion actuators, position
controllers and operator interface components,
namely, surgical and medical apparatus and
instruments for use in general surgery; medical
devices for performing microsurgery, namely,
medical apparatus and instrument for controlling
the motion of surgical instruments within a
surgical field, and surgical instruments for use
in association with such medical apparatus and
instruments; medical tools and instruments for
use in conjunction with surgical procedures
performed utilizing augmented surgical
interfaces, namely, medical apparatus and
instruments for accurately locating and
positioning augmented surgical interfaces with
respect to a surgical field; augmented surgical
systems for assisting in the performance of
surgical procedures, namely, medical apparatus
and instruments for use in general surgery;
surgical and medical apparatus and instruments in
the nature of operator input medical apparatuses
and operator displays that allow an operator of
an augmented surgical interface to control the
physical positioning of surgical equipment in a
surgical field, augmented surgical apparatus and
instruments for controlling the position of and
moving surgical instruments within a surgical
field, and surgical instruments for use in
association with augmented surgical equipment;
surgical systems for providing training and
simulation capabilities with respect to surgical
procedures using augmented surgical interfaces,
namely, augmented surgical interface medical
apparatus and instruments having internal
capabilities for generating feedback to an
operator simulating the displays and control
feedbacks which would be encountered during
actual performance of a surgical procedure using
the augmented surgical interface; augmented
surgical interface control system, namely,
computer hardware and software and surgical and
medical apparatus and instruments for use in
general surgery, in International Class 9;2 and

2 Application Serial No. 78596887, filed March 29, 2005, alleging
a bona fide intention to use the mark in commerce under Section
Serial Nos. 78596887 and 78596957
3

consulting and engineering services, namely
design and development of surgical systems;
design and development services for others of
medical apparatus providing enhanced surgical
capabilities; design and development services for
medical systems providing enhanced surgical
simulation and training capabilities; consulting
services for others for the development of
medical systems in the nature of augmented
surgical equipment, in International Class 42.3

Registration has been refused under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s mark is merely descriptive of its goods
and services4 or, in the alternative, that it is deceptively
misdescriptive of its goods and services, and under Section
2(a) of the Trademark Act, 15 U.S.C. §1052(a), on the
ground that applicant’s mark is deceptive. When the
refusals were made final, applicant appealed and briefs
have been filed.
Descriptiveness

1(b) of the Trademark Act, 15 U.S.C. §1051(b).

3 Application Serial No. 78596957, filed March 29, 2005, alleging
a bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b).

4 Inasmuch as this application was filed under Section 1(b),
based on an intention to use the mark in commerce, the examining
attorney refused registration under Section 2(e)(1) based on mere
descriptiveness; however, she also provided an advisory statement
that the term is “probably generic for the overall genus of the
services.” This is merely an advisory statement, the question of
genericness is not in issue on appeal. See TMEP § 1209.02 (5th
ed. September 2007).
Serial Nos. 78596887 and 78596957
4
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a significant
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 Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient,
quality, characteristic, function, feature, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract,
but in relation to the goods or services for which
Serial Nos. 78596887 and 78596957
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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 Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978).
The examining attorney contends that “[t]he term
‘neurobotics’ is used by third parties to describe a new
field of science regarding the fusion of neuroscience and
robotics for augmenting human capabilities [and]
applicant’s goods are augmented surgical interfaces and
systems for assisting surgeries and for allowing the
operator to control the physical positioning of surgical
equipment, etc.” Br. p. 13. In regard to the services the
examining attorney argues that applicant’s “services design
and develop ‘medical apparatus providing enhanced surgical
capabilities,’ and ‘medical systems in the nature of
augmented surgical equipment.’” ‘957 Br. p. 15.
With regard to the meaning of the term “neurobotics”
the examining attorney submitted the following evidence
retrieved from various sources on the Internet:
Neurobotics...A new word is entering the
vocabulary: Neurobotics. It means: The Fusion
of Neuroscience and Robotics for Augmenting Human
Capabilities...More particularly Neurobotics aims
at: 1) systematically exploring the area of
Hybrid Bionic Systems (HBSs) 2) deeply
investigating the theme of human augmentation 3)
Serial Nos. 78596887 and 78596957
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developing new integrated robotic artefacts, as
much biomorphic as required to be effectively
interfaced with the human body and brain. Three
robotic platforms featuring different levels of
hybridness (i.e., mechanical coupling with the
human body) and of connectivity (to the human
nervous system) will be developed to be used in
experiments on human augmentation: biomimetic
scalable artefacts to be remotely controlled by
human operator; intelligent wearable artefacts
loosely physically coupled with the human body;
arm-hand sub-systems tightly physically coupled
with the human body.

Robotic Nation Evidence, robotic nation.blogspot.com;
Neurobotics is a new field that lies at the
intersection of Robotics and Neuroscience.
Neurobotics is currently a small community but is
growing rapidly in both engineering and
science...Robotic systems are developed to
augment, replace and rehabilitate damaged
sensorimotor functions.

University of Southern California, www.cs.usc.edu;
NEUROBOTICS will consolidate the area of “human
augmentation” and “hybrid bionic systems,” whose
state of the art is at present scattered and
rather weak (Dairo et al. 1993).

EU FET Neurobotics, www.neurobotics.org;
NeuroBotics – Bioinspired computation for
Robotics...International Workshop on
NeuroBotics:... Substantial progress has been
made recently in bio-inspired computation and
robotics. This international workshop invites
contributions to robotics which use methods of
learning or artificial neural networks and/or are
inspired by observations and results in
neuroscience, cognitive science and animal
behaviour.

www.mail-archive.com; and
Serial Nos. 78596887 and 78596957
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Neurobotics will systematically explore the area
of Hybrid Bionic Systems (HBSs) and will deeply
investigate the theme of human augmentation.
Starting from the most advanced state of the art
in neuroscience, NEUROBOTICS will aim at
developing new integrated robotic artefacts, as
much biomorphic as required to be effectively
interfaced with human body and brain.

Web.gbt.tfo.upm.es.5
In addition, the examining attorney submitted
excerpted articles discussing the use of robots in surgery.
See, e.g., Indianapolis Star, www.indystar.com
(“Specialists work on new breed of surgical robots...The
research of Purdue University mechanical engineering
assistant professor William Peine and medical doctors is
intended to make such futuristic-sounding procedures come
true. They are working to create a new breed of cheaper,
smaller, portable and adaptable surgical robots that could
be common in operating rooms.”) She also submitted
dictionary definitions for the words neurosurgery, robot
and robotics.
With regard to applicant’s goods and services, the
record includes a patent submitted by applicant that
addresses applicant’s medical apparatus:
...method and apparatus for controlling a
surgical robot to mimic, harmonize and enhance

5 While this may be a foreign website, it retains some probative
value. See In re Remacle, 66 USPQ2d 1222, 1224 n. 5 (TTAB 2002).
Serial Nos. 78596887 and 78596957
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the natural neurophysiological behavior of a
surgeon.
...
The present invention was developed by a
neurosurgeon and seeks to mimic the results of
primate neurological research which is indicative
of a human’s actual neurological control
structures and logic. Specifically, the motor
proprioceptive and tactile neurophysiology
functioning of the surgeon’s hands and internal
hand control system from the muscular level
through the intrafusal fiber system of the neural
network is considered in creating the robot and
method of operation for the present invention.
Therefore, the surgery is not slowed down as in
the art, because the surgeon is in conscious and
subconscious natural agreement and harmonization
with the robotically actuated surgical
instruments based on neurological mimicking of
the surgeons’ behaviour with the functioning of
the robot. Therefore, the robot can enhance the
surgeon’s humanly limited senses while not
introducing disruptive variables to the surgeon’s
naturally occurring operation of his
neurophysiology. This is therefore also a new
field, neurophysiological symbiotic robotics.
...
The present invention relates to the field of
robotic and computer assisted surgery...for
example, neurosurgery...

One result of the present invention, and
associated discoveries, was that preservation of
the hand tremor motion was unexpectedly found to
be necessary, to an extent, to maintain a natural
and efficient synergy between the human surgeon
and the robotics in order to maintain the normal
pace of surgery. This is because the present
invention inventively recognizes that the
surgeon’s own neurophysiology beneficially uses
tremor motion, and moreover the human body
expects and anticipates the tremor to exist for
calibration purposes...

Therefore, in summary, the present invention in
its various controller robot embodiments includes
the following features which are adjustable by
Serial Nos. 78596887 and 78596957
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the surgeon to his individual requirements: Hand
tremor sensing, management, modulation and
smoothing with scaling capability in all natural
and anatomical degrees of freedom directions...

Applicant argues that:
The NEUROBOTICS mark does not have any
significance with respect to the goods [services]
offered in association with Applicant’s mark, and
the Examining Attorney fails to provide even one
iota of evidence otherwise. The references cited
by the Examining Attorney relate to the use of
neuroscience theories for the development of
artificial intelligence to allow automation of
tasking in robots, which is quite distinct from
Applicant’s equipment for use in surgery. As
noted, Applicant’s goods [services] relate to
augmented surgical interfaces [the development of
augmented surgical interfaces] for neurosurgical
applications. The equipment does not utilize
artificial intelligence as a substitute for a
human operator, and accordingly is not “robotic.”
Furthermore, although the term “neurosurgical”
would be descriptive of the purpose of the
equipment developed by Applicant, deletion of the
“surgical” portion of that term clearly requires
any consumer viewing the mark to take a mental
step, just as the Examining Attorney did, before
associating “NEUROBOTICS” with equipment for
performing surgical procedures, and in
particular, neurosurgical procedures.

Applicant’s Br. p. 8 and in brackets ‘957 Br. p. 7.
The evidence of record, shows the development of a
relatively new field called “neurobotics” that encompasses
a wide range of applications. The field of neurobotics is
essentially directed at integrating human and robotic
capabilities in a variety of ways which clearly encompasses
applicant’s surgical goods as described in the patent and
Serial Nos. 78596887 and 78596957
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the design services related to such goods. As stated in
the excerpt from Robotic Nation, one of the types of
apparatus sought to be developed within this field is a
“biomimetic scalable artefact to be remotely controlled by
a human operator.” Biomimetics is defined as “the study
and development of synthetic systems that mimic the
formation, function, or structure of biologically produced
substances and materials and biological mechanisms and
processes.” Random House Unabridged Dictionary (2006),
available at dictionary.com.6 As stated in the patent
addressing applicant’s medical apparatus:
The present invention was developed by a
neurosurgeon and seeks to mimic the results of
primate neurological research which is indicative
of a human’s actual neurological control
structures and logic. And the surgeon is in
conscious and subconscious natural agreement and
harmonization with the robotically actuated
surgical instruments based on neurological
mimicking of the surgeons’ behaviour with the
functioning of the robot.

Applicant’s identification of its goods which is
replete with surgical instruments designed to augment the
surgeon’s capabilities falls squarely within the definition

6 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Serial Nos. 78596887 and 78596957
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of neurobotics in this record: The Fusion of Neuroscience
and Robotics for Augmenting Human Capabilities.
Based on this record, we find that the examining
attorney has made a prima facie case, which has not been
rebutted by the applicant, that the term NEUROBOTICS is
merely descriptive of a significant feature of applicant’s
goods and services, namely, devices and design services
that mimic human neurological control structures and logic
to create surgical robots that augment the human surgeon’s
capabilities.
For completeness we address the other refusals in the
alternative.
Deceptive Misdescriptiveness
The test for deceptive misdescriptiveness has two
parts. First it must be determined if the matter sought to
be registered misdescribes the goods or services. If so,
then it must be ascertained if it is also deceptive, that
is, if anyone is likely to believe the misrepresentation.
In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984).
See also In re Phillips-Van Heusen Corp., 63 USPQ2d 1047
(TTAB 2002).
It has already been established that the term
“neurobotics” is descriptive of biomimetic apparatus
designed to augment human capability and that this includes
Serial Nos. 78596887 and 78596957
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surgical equipment and design services with that feature.
Thus, if applicant’s goods and services do not include that
feature then the term “neurobotics” is misdescriptive of
them.
With regard to the next inquiry, whether consumers
would believe the misrepresentation, applicant argues that
its customers are doctors and medical facilities and
“surgeons are highly educated individuals and are not
likely to be confused when utilizing applicant’s medical
apparati [sic] into believing that there is some connection
with the purported field associated with the study of
robots.” Br. pp. 10-11. In addition, applicant argues
that “there is no reason to believe that physicians and
hospitals would even know of the purported ‘emerging field’
of ‘neurobotics,’ let alone envision any relation between
such purported field and Applicant’s medical apparati [sic]
[and] there is no reason to believe that research
scientists in the field of robotics would believe any
connection exists with a company providing medical apparati
[sic].” Br. p. 12. Finally, applicant argues that “for a
mark to be deceptive, the deception must be intentional”
and, referencing a prior abandoned application not of
record, states that applicant “adopted its mark at least as
early as January, 2002” and the date of filing, presumably
Serial Nos. 78596887 and 78596957
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of the abandoned application, “precedes any evidence of
record of NEUROBOTICS having any meaning beyond Applicant’s
coined term...[thus] there can be no deceit.” Br. p. 11.
The examining attorney argues that it is because of
the sophistication of the purchasers that deception is
likely, noting that “[s]urgeons and other related medical
professionals, looking for the cutting edge of technology
regarding augmented surgical and medical devices and seeing
the proposed mark NEUROBOTICS, will assume the applicant
will use this new field of science in developing and
designing their products.” Br. p. 19. She further argues
that “[t]his is supported by evidence that even the
applicant is developing goods using a combination of
neuroscience and robotics. As already shown, third parties
describe this combination of sciences as ‘neurobotics.’ If
goods similar to applicant’s can and do possess the
quality, function, composition or use that applicant’s mark
misdescribes, it is reasonable to infer that purchasers
will believe the misdescription. In re Budge Mfg. Co., 857
F.2d 773, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988).” Br. pp.
19-20.
First, with regard to the issue of intent, this is not
part of the test. The case cited by applicant, In re
Sweden Freezer Mfg. Co., 159 USPQ 246, 249 (TTAB 1968),
Serial Nos. 78596887 and 78596957
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does not stand for the proposition that intent is a
required element. In that case, the Board states that
there have been cases wherein “deception is not present
where a geographical trademark may involve a degree of
untruth but the deception may be perfectly innocent,
harmless or negligible.” Id. at 249. The Board went on to
state that it did not find deception because there was
nothing in the record to support a finding that “SWEDEN”
was known for the goods in issue in that case. Id.
Moreover, applicant’s “adoption” of the mark based on a
prior filed application is not relevant to this
application. Cf. In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (The Board must decide each case on
its own merits).
As noted by the examining attorney, there is evidence
in the record of surgical robots and even applicant’s
patent highlights its use of neuroscience to develop its
surgical device to augment the surgeon’s capabilities.
Thus, we may infer that at least some of the potential
purchasers would be familiar with this term and understand
its value with regard to the goods and services and, thus,
would be deceived. While applicant asserts that
sophistication of the purchasers would prevent deception,
Serial Nos. 78596887 and 78596957
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there is nothing in the record to support such a
conclusion.
Deceptiveness
The test for determining whether a mark is deceptive
under Section 2(a) has been stated by the Court of Appeals
for the Federal Circuit as: 1) is the term misdescriptive
of the character, quality, function, composition or use of
the goods or services; 2) are prospective purchasers likely
to believe that the misdescription actually describes the
goods or services; and 3) is the misdescription likely to
affect the decision to purchase. Budge Manufacturing Co.,
Inc., 8 USPQ2d at 1260.
The first two factors have already been established
in connection with the refusals under Section 2(e)(1)
discussed above. What remains is to determine whether the
misdescription is likely to affect the decision to
purchase.
Based on the patent it is clear that the biomimetic
feature of the goods and its augmentation of the surgeon’s
capability would be highly desirable. In addition, the
evidence submitted by the examining attorney referencing
use of robotics in surgery supports a finding that robotics
in surgery is desirable. We find this sufficient to
establish that the presence of this feature would
Serial Nos. 78596887 and 78596957
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materially affect the purchasing decision. Thus, we
conclude that the proposed mark NEUROBOTICS is deceptive in
connection with the identified goods and services.
Decision: The refusals to register under
Sections 2(e)(1) and 2(a) of the Trademark Act are
affirmed.