SonoSite, Inc.

Trademark Trial and Appeal BoardMar 27, 2002

No. 75868073 (T.T.A.B. Mar. 27, 2002)

03/27/02 Paper No. 9 PTH U.S. DEPARTMENT OF COMMERCE PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re SonoSite, Inc. ________ Serial No. 75/868,073 _______ Catherine H. Tran of Perkins Coie LLP for applicant. Geoffrey A. Fosdick, Trademark Examining Attorney, Law Office 111 (Craig Taylor, Managing Attorney). _______ Before Cissel, Seeherman and Hairston, Administrative Trademark Judges. Opinion by Hairston, Administrative Trademark Judge: SonoSite, Inc. has filed an application to register the mark ONSITE for: “providing educational services, namely, conducting classes, seminars, conferences and workshops in the use of medical diagnostic devices, including ultrasound devices; [and] training in the use and THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B. Ser No. 75/868,073 2 operation of medial diagnostic devices, including ultrasound devices.”1 The Trademark Examining Attorney has refused registration under Section 2(e)(1) of the Trademark Act on the ground that applicant’s mark, if used in connection with the identified services, would be merely descriptive of them. When the refusal was made final, applicant appealed. Applicant and the Examining Attorney have filed briefs on the case, but an oral hearing was not requested. We affirm the refusal to register. The Examining Attorney contends that the mark ONSITE immediately describes a significant feature of the services, namely, that the services are performed at the particular site in question. The Examining Attorney submitted a definition of “on-site” as “done or located at the site, as of a particular activity: an on-site.”2 Additionally, the Examining Attorney submitted eleven excerpts of articles retrieved from the NEXIS database that demonstrate use of the term “on-site” or “onsite” to refer 1 Application Serial No. 75/868,073, filed December 10, 1999; based on an allegation of a bona fide intention to use the mark in commerce. 2 The American Heritage Dictionary of the English Language, Third Edition, 1992. Ser No. 75/868,073 3 to the location at which educational services and training services are conducted. Following are several examples: A new federally funded Red Cross Family Community Partnership Program established in two complexes can help families that might be close to the financial edge with money management counseling and additional on-site educational services. (The San Francisco Examiner, December 14, 1995); He will be responsible for public programs, research and collections, and outreach and on-site educational services at Jamestown Settlement and the Yorktown Victory Center. (The Richmond Times Dispatch, December 25, 1995); . . . suppliers are delineated in the company’s supplier handbook. Black Belts reinforce this process with quality audits and continuous improvement by onsite training at Invensys plant locations. (Purchasing Magazine, April 20, 2000); and The FastForward offer also provides implementation services delivered by Oracle Consulting, three days of onsite training, one year of Oracle-Silver 24x7 global telephone support, and regular account management reporting, officials said. (InfoWorld Daily News, April 27, 2000). Applicant contends that its mark is at most suggestive; that a good deal of imagination would be required before a prospective consumer could determine the nature of applicant’s services; and that persons encountering the mark would not have the benefit of the Ser No. 75/868,073 4 description of the services as does the Examining Attorney. In support of its contention that the mark is not merely descriptive, applicant submitted copies of Internet printouts showing that the word “Onsite” is used in several company names in various industries. The test for determining whether a mark is merely descriptive of goods or services 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 Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). However, 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 quality, feature, etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-established that the 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). Ser No. 75/868,073 5 The evidence submitted by the Examining Attorney establishes that the term “onsite” or “on-site” has a readily understood meaning as used in connection with educational and training services. The term is used to indicate that the services are performed at the site of the activity. In this case, the activity is the use and operation of medical diagnostic devices. Thus, customers and prospective customers of applicant’s educational and training services would readily understand ONSITE to mean that applicant will perform its services where the medical diagnostic devices are used and operated. We find applicant’s arguments to the contrary to be unpersuasive and, for the most part, based incorrectly on viewing ONSITE in a vacuum, without reference to the identified services. Moreover, we are not persuaded by the Internet printouts to reach a different result in this case. Some of the “hits” in these printouts show company names, which include the term “ONSITE” or “ON-SITE,” and other hits show company descriptions wherein the term is used. Apart from the fact that the printouts provide limited information about the companies identified therein, the fact that a term is used in a company name is not evidence that the term is not descriptive. Moreover, in at least two of the hits, the term “onsite” is used in a Ser No. 75/868,073 6 descriptive manner. The hit for Integral Results states that this company “[o]ffers onsite training and consulting in the San Francisco area;” and the hit for KC Consulting states this company “[p]rovides onsite consulting for networking, [and] security.” (emphasis added). In view of the foregoing, we find that when applied to applicant’s educational and training services in the use and operation of medical diagnostic devices, the term ONSITE immediately describes a significant feature of the services, namely, that the services will be performed where the medical diagnostic devices are used and operated. Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for purchasers and prospective customers for applicant’s services to readily perceive the merely descriptive significance of the term ONSITE as it pertains to applicant’s services. Decision: The refusal to register under Section 2(e)(1) of the Trademark Act is affirmed.