DTC Eye Surgery Center, Inc.

Trademark Trial and Appeal Board

Feb 15, 2001

No. 75065953 (T.T.A.B. Feb. 15, 2001)

2/15/01 Paper No. 20
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re DTC Eye Surgery Center, Inc.
___________
Serial No. 75/065,953
___________
Timothy J. Martin, Esq. for applicant.
Geoffrey D. Aurini, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
____________
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
DTC Eye Surgery Center, Inc. has filed a trademark
application to register the mark shown below for “medical
services in the nature of corrective surgery for eyes.”1

1 Serial No. 75/065,953, in International Class 42, filed March 1, 1996,
based on use of the mark in commerce, alleging first use and use in
commerce as of September 1, 1995 and November 15, 1995, respectively.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/065,953
2
The Trademark Examining Attorney has issued a final
requirement for a disclaimer of LASER INSTITUTE OF THE
ROCKIES, under Section 6 of the Trademark Act, 15 U.S.C.
1056, on the ground that this phrase is merely descriptive
in connection with applicant’s services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
The Examining Attorney contends that “Laser Institute”
is merely descriptive, if not generic, in connection with
applicant’s services. He contends, further, that “Rockies”
is primarily geographically descriptive in connection with
applicant’s services because “Rockies” is synonymous with
“Rocky Mountains,” which is a particular geographic area;
that applicant is located, and its services are rendered, in
the Rocky Mountain region, which is the geographic area in
close proximity to the Rocky Mountains; and that a
services/place association is presumed. In support of his
position, the Examining Attorney submitted dictionary
definitions of “Rockies,” “laser” and “institute”; excerpts
of articles from the LEXIS/NEXIS database; and copies of
third-party registrations.
Serial No. 75/065,953
3
Applicant contends that the Examining Attorney’s
evidence is inapposite; and argues that, in view of the
several connotations of “institute,” the term “Laser
Institute” is not merely descriptive. Applicant argues,
further, that “of the Rockies” is not primarily
geographically descriptive “when viewed in the context of
Applicant’s services”; that the Rocky Mountain region covers
too broad an area to describe a particular geographic place
and that, even if it is a particular geographic place, there
is no services/place association herein; that “Rockies” has
“widely used” meanings other than that of the Rocky
Mountains; and that the phrase in its entirety, LASER
INSTITUTE OF THE ROCKIES, is neither merely descriptive nor
primarily geographically descriptive. In support of its
position, applicant submitted dictionary definitions of
“laser” and “institute.”2
We consider, first, whether the phrase “Laser
Institute” is merely descriptive in connection with
applicant’s identified services.
The test for determining whether a mark, or a portion
thereof, is merely descriptive is whether the involved term
immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature

2 Applicant submitted additional evidence with its brief; however, the
record must be complete prior to appeal in an ex parte case. See
Trademark Rule 2.142(d). This evidence is untimely and not subject to
judicial notice. Thus, it has not been considered.
Serial No. 75/065,953
4
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 term merely descriptive, that it 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).
The record includes a definition of “institute” as,
inter alia, “an association of persons or organizations that
collectively constitute a technical or professional
authority in a field of work or study”3; and of “laser” as
“any of several devices that convert incidental
electromagnetic radiation of mixed frequencies to one or
more discrete frequencies of highly amplified and coherent
visible radiation[,] [a]lso called ‘optical maser.’”4 The

3 Webster’s Third New International Dictionary, unabridged.
4 The American Heritage Dictionary of the English Language.
Serial No. 75/065,953
5
Examining Attorney has submitted 13 third-party
registrations for marks including the term “institute” with
a disclaimer of that term. Nine of these registrations are
for medical services analogous to applicant’s services.
Four additional third-party registrations include the phrase
“Laser Institute,” with a disclaimer of that phrase. Three
of these registrations are for medical services analogous to
applicant’s services. Several excerpts from articles in the
LEXIS/NEXIS database are of record and include three
excerpts referring to three different “Laser Institute(s)”
offering laser eye surgery.
Based on the evidence of record it is clear that, when
applied to applicant’s services, the term LASER INSTITUTE
immediately describes, without conjecture or speculation, a
significant feature or function of applicant’s services,
namely that applicant is an organization that offers
corrective eye surgery using lasers. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for purchasers of
and prospective customers for applicant’s services to
readily perceive the merely descriptive significance of the
term LASER INSTITUTE as it pertains to the identified
services.
We are not persuaded otherwise by applicant’s arguments
to the contrary. There is no question that applicant
Serial No. 75/065,953
6
utilizes lasers in connection with its services. In fact,
applicant’s Web page states that it was the first to offer
LASIK in the Rocky Mountain region and that it continues to
limit its practice to “corrective laser surgery.” Further,
not only does the definition of “institute” encompass
applicant’s specialized services, but the evidence indicates
that the term “institute” has been used in connection with
other medical practices. The fact that “institute” may have
multiple definitions is not relevant as we must consider the
term in connection with the services rendered and, thus, the
meaning of the term is clear. We conclude that the phrase
“Laser Institute” is, at least, merely descriptive and
disclaimer thereof is appropriate.
We consider, next, the Examining Attorney’s contention
that the “of the Rockies” portion of applicant’s mark is
primarily geographically descriptive.
In order for a mark, or a portion thereof, to be
considered primarily geographically descriptive under
Section 2(e)(2), it is necessary to show that (i) the mark
or relevant portion is the name of a place known generally
to the public, and that (ii) the public would make a
goods/place association, that is, believe that the goods or
services for which the mark or relevant portion is sought to
be registered originate in that place. See, e.g.,
University Book Store v. University of Wisconsin Board of
Serial No. 75/065,953
7
Regents, 33 USPQ2d 1385, 1402 (TTAB 1994); and In re
California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988),
citing In re Societe Generale des Eaux Minerals de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
Moreover, where there is no genuine issue that the
geographical significance of a term is its primary
significance, and where the geographical place named is
neither obscure nor remote, a public association of the
goods with the place may ordinarily be presumed from the
fact that the applicant’s goods or services come from the
geographical place named in the mark. See, e.g., In re
California Pizza Kitchen, Inc., supra; and In re Handler
Fenton Westerns, Inc., 214 USPQ 848, 850 (TTAB 1982).
The Examining Attorney contends that the primary
significance of the phrase “of the Rockies” in the mark is
geographic because the primary significance of “the Rockies”
is geographic; that, even though the Rockies encompass a
large area, it is a specifically defined geographic area
which is neither vague nor remote or obscure in the context
of consumer awareness. The Examining Attorney submitted
excerpts from The American Heritage Dictionary of the
English Language (3rd ed. 1992) of the following entries:
Rockies – See Rocky Mountains.
Rocky Mountains also Rockies – A major mountain
system of western North America extending more
than 4,827 km (3,000 mi) from northwest Alaska to
Serial No. 75/065,953
8
the Mexican border. The system includes numerous
ranges and forms the Continental Divide. Its
highest elevation is Mount Elbert, 4,402.1 m
(14,433 ft) in central Colorado. …
We also take judicial notice of the definition of
“Rocky Mountain states” in The Random House Dictionary of
the English Language (2nd ed. 1987) as “those states in the
region of the Rocky Mountains, including Colorado, Idaho,
Montana, Nevada, Utah and Wyoming, and sometimes Arizona and
New Mexico.”
The Examining Attorney submitted excerpts from
applicant’s Web site, wherein applicant states “Laser
Institute of the Rockies was the first location to perform
LASIK in the Rocky Mountain Region, and we are the only
location in Colorado that specializes and limits our
practice to corrective laser surgery” and “[p]atients have
been coming to Dr. Dishler for LASIK from the Rocky Mountain
region for over four years.”
The Examining Attorney also conducted a search of the
NEXIS database for “Rockies” within two words of “Denver.”
He submitted excerpts from five of 498 stories. Of the five
excerpts, the two most relevant excerpts are from the Denver
Rocky Mountain News, and refer to two companies, the
Community Health Plan of the Rockies and the Food Bank of
the Rockies, both located in Denver, Colorado.5

5 The Examining Attorney submitted two third-party registrations owned
by the First National Bank of the Rockies of Meeker, Colorado. Both
Serial No. 75/065,953
9
Considering the first part of the test, we find the
evidence clearly establishes that “the Rockies” is the name
of a place known generally to the public. Not only does it
identify a specifically defined, albeit large, mountain
range, but the region encompasses specified states,
including applicant’s state of Colorado. See Burke-Parsons-
Bowley Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590,
10 USPQ2d 1443, 1444 (6th Cir. 1989) (“Appalachian” in the
mark APPALACHIAN LOG STRUCTURES found to define a specific
large geographic region); and In re Mid-West Abrasive Co.,
146 F.2d 1011, 64 USPQ 400 (CCPA 1945) (based primarily on a
dictionary definition, “Mid-West” found to refer to a
specific geographic place). Further, the phrase “of the
Rockies” retains the primarily geographic character of “the
Rockies” because, in the context of the entire mark, it
indicates the region within which the “Laser Institute” is
located and the services are rendered.
Considering the second part of the test, as applicant
states on its Web site, applicant is located, and its
services are rendered, in Colorado in the “Rocky Mountain
region.” Thus, we presume a public association of the goods
with the place from the fact that the applicant’s services
come from the geographical place named in the mark. Because

registrations include the organization’s name, but only one of the
registrations includes a disclaimer of “the Rockies.” While we do not
have the records of those registrations before us, it would appear that
Serial No. 75/065,953
10
both parts of the enunciated test have been met, we find “of
the Rockies” is primarily geographically descriptive.
As with the issue of mere descriptiveness, we are not
persuaded otherwise by applicant’s arguments to the
contrary. The term “Rockies” in the name of the baseball
team, the Colorado Rockies, retains its geographic
significance even as it may suggest a double entendre. This
reinforces, rather than detracts from, the conclusion that
“the Rockies” has primarily a geographical significance.
Applicant also contends that the mere fact that the
Examining Attorney found a few stories using “Rockies” in
conjunction with “Denver” does not mean that “of the
Rockies” in applicant’s mark is primarily geographically
descriptive “in the context of applicant’s services”; and
that there is no association between applicant’s services
and the Rocky Mountain region because these types of
services are performed throughout the United States and in
other countries. However, we are not concerned that
services similar to applicant’s services may be rendered
worldwide. What is relevant in this case is that
applicant’s services are located and rendered in the Rocky
Mountain region.
For the foregoing reasons, we conclude that the entire
phrase LASER INSTITUTE OF THE ROCKIES consists of

these two registrations indicate inconsistency in USPTO practice. Thus,
Serial No. 75/065,953
11
unregistrable matter under Sections 2(e)(1) and 2(e)(2) of
the Trademark Act, and the Examining Attorney correctly
required a disclaimer thereof.
Decision: The requirement, under Section 6 of the
Trademark Act, for a disclaimer of LASER INSTITUTE OF THE
ROCKIES is affirmed.
In accordance with Trademark Rule 2.142(g), this
decision will be set aside and this application will be
returned to the Examining Attorney to place in condition for
publication for opposition if applicant, no more than thirty
days from the mailing date of this decision, submits an
appropriate disclaimer of LASER INSTITUTE OF THE ROCKIES.

this evidence is not useful herein.