Intuitive Surgical, Inc.

Trademark Trial and Appeal Board

Jul 25, 2008

No. 76654345 (T.T.A.B. Jul. 25, 2008)

Mailed:
July 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Intuitive Surgical, Inc.
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Serial No. 76654345
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Michelle D. Kahn and Michelle J. Hirth of Sheppard, Mullin,
Richter & Hampton LLP for Intuitive Surgical, Inc.

Bernice Middleton, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
Intuitive Surgical, Inc. has appealed from the final
refusal of the examining attorney to register on the
Principal Register the term CARDIOVAC (in standard
character form) as a trademark for the following goods:
“medical devices, namely, suction apparatus for use during
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76654345
2
urologic, gynecologic, pediatric, cardiac and general
surgical procedures” in International Class 10.1
The examining attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that, when used on
applicant's goods, the mark CARDIOVAC would be merely
descriptive of such goods.
After the examining attorney issued a final action,
applicant filed an appeal and a request for
reconsideration. The examining attorney denied the request
for reconsideration, and subsequently both applicant and
the examining attorney filed briefs. We affirm the refusal
to register.
The examining attorney maintains that applicant's mark
is a combination of the terms “cardio” and “vac,” and that
both terms have significance in connection with applicant's
goods. She has entered a definition of “cardio” from
dictionary.cambridge.org into the record, which provides
that “cardio” is a prefix meaning “of the heart,” and she
states that the term “will immediately convey to consumers
that applicant's goods are to be used in cardiac or
cardiovascular procedures.” Brief at unnumbered p. 3.

1 Application Serial No. 76654345 was filed on January 31, 2006,
based on applicant's assertion of its bona fide intention to use
Serial No. 76654345
3
“Vac” is identified as an abbreviation for “vacuum” in
Merriam-Webster’s Online Dictionary located at merriam-
webster.com.2 As an adjective, the record shows that
“vacuum” is defined in part in bartleby.com as “operating
by means of suction or by maintaining a partial vacuum.”3
According to the examining attorney,
The mark is descriptive because it immediately
conveys that the goods provide suctioning in
procedures affecting the heart and/or blood
vessels. Applicant's goods, a suction
apparatus[,] would clearly utilize suction.
Therefore applicant's use of the word ‘vac’ is
descriptive for a suction apparatus and/or goods
operating by suction.

Id. at unnumbered p. 3.
Applicant responds that its goods “have nothing
whatsoever to do with the heart and blood vessels” and that
they “are used in a wide variety of surgical procedures to
remove or evacuate fluids that accumulate during those
procedures … and do not affect the heart or blood vessels
themselves.” Brief at pp. 5 – 6. It adds that even if it
were to implicate the heart and blood vessels, “cardio”

the mark in commerce.
2 We take judicial notice of this dictionary definition of “vac.”
The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See
also University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
3 As a noun, “vacuum” is defined in part as “a vacuum cleaner.”
Serial No. 76654345
4
suggests “the importance of maintaining a clear surgical
field while operating and that such maintenance is central
or at the ‘heart’ of any successful surgical procedure.”
Id. at p. 7.
With respect to the term “vac,” applicant makes three
arguments. First, applicant distinguishes a vacuum from
the suction caused by applicant's goods. Referring to
definitions of “vacuum” and “suction,” applicant argues
that suction “is the process of producing a pressure
differential that attracts substances to a region of lower
pressure”; that “[w]hile a vacuum is often created to
achieve suction and often one is related to the other, a
vacuum and suction are two different things”; and that
“[t]he ‘vac’ portion of Applicant's mark is suggestive of
the suction that is used by a vacuum cleaner or the suction
created by a vacuum but is not descriptive of it.” Id. at
pp. 8 – 9.
Second, applicant maintains that applicant’s apparatus
“does not itself create the suction used to remove fluids,
and instead simply transmits the suction effect through its
tubing.” Applicant quotes from a submission by applicant
to the Food and Drug Administration, made of record by the
examining attorney with her final Office action, and states
that “the goods offered under CARDIOVAC transmit the
Serial No. 76654345
5
suction, they do not themselves create the vacuum from
which the suction results.” Id. at p. 9.
Third, applicant argues that “vac” has a suggestive
connotation because “evacuate” is commonly used to refer to
the removal of fluids from the body; that an “evacuator” is
a medical device for removing fluid or small particles from
a body cavity;4 and that “[s]urgeons and health care
professionals, the consumers of Applicant's goods, commonly
use the term evacuate and are highly likely to interpret
the term ‘vac’ when used in connection with Applicant's
goods … to be suggestive of fluid removal or evacuation.”
Reply at p. 8.
As to the term CARDIOVAC as a whole, applicant argues
that it is suggestive rather than merely descriptive of
applicant's goods. According to applicant, neither
“cardio” nor “vac” is merely descriptive of applicant's
goods; the combination creates an incongruity because “the
concept of using a vacuum in a medical procedure, whether
involving the heart or not, seems strange and does not

4 The definition of record of “evacuate” from www2.merriam-
webster.com is “2: to discharge (as urine or feces) from the body
as waste).” The definition of record of “evacuator” from
medical-dictionary.com is “a mechanical evacuant; an instrument
for the removal of fluid or small particles from a body cavity
….” The definition of “evacuator” from medical-
dictonary.thefreedictionary.com is “an instrument for removal of
material from a body cavity.”
Serial No. 76654345
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comport with the common understanding of vacuuming.” Id.
at p. 10.
Applicant has also introduced into the record several
third-party registrations for marks with either the term
CARDIO or the term VAC that have registered without
disclaimers. In particular, we note the following
registered marks containing VAC; SAF-T-VAC for suction
devices for removing by-products of electrocautery medical
procedures; MEDI-VAC for medical suction collection
containers; and PLAK-VAC for “aspirating oral hygiene
instrument for use in conjunction with a separate suction
system.” Applicant points out that the lack of a
disclaimer of “vac” indicates the term is suggestive.
Further, applicant has introduced into the record the
registration for the mark CARDIOVAD for “blood pumps,”
arguing that a “vad” is a common abbreviation for
“ventricular assist device” or a heart pump. In view of
these registrations without any disclaimers, applicant
maintains that its mark is suggestive.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
Serial No. 76654345
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USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant's goods or services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute, function or property
of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
1973).
Both the examining attorney and applicant have
considered the mark as having two components, CARDIO and
VAC, and so do we. We consider each component and then
consider the mark as a whole.
The examining attorney has established that “cardio”
is a prefix meaning “of the heart.” Because applicant's
identification of goods specifies that applicant's goods
are to be used, inter alia, in cardiac or cardiovascular
procedures, we find that the term CARDIO in applicant's
mark immediately informs the purchaser of a use of
applicant's goods. We are not persuaded by applicant's
argument that the goods “have nothing whatsoever to do with
the heart and blood vessels.” Brief at p. 5. Applicant's
identification of goods provides that applicant's suction
apparatus is for cardiac procedures. Further, even if
Serial No. 76654345
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applicant's goods can be used in other non-cardiac surgical
procedures, the term may be deemed merely descriptive. As
mentioned above, a term need not immediately convey an idea
of each and every specific feature of the applicant's goods
or services in order to be considered merely descriptive;
it is enough that the term describes one significant
attribute, function or property of the goods or services.
Id. We also find little merit in applicant's argument that
“cardio” “suggests the importance of maintaining a clear
surgical field while operating and that such maintenance is
central to or at the ‘heart’ of any successful surgical
procedure.” Brief at p. 7. The connotation suggested by
applicant is not one that purchasers are likely to give to
the term “cardio” in applicant's mark in the context of
cardiac procedures in which applicant's goods may be used.
Turning then to the term VAC, the examining attorney
has established that “vac” is an abbreviation for “vacuum,”
defined as “operating by means of suction or by maintaining
a partial vacuum,” and that applicant's “suction apparatus”
operates through the use of a vacuum. The term “vac” in
applicant's mark hence informs the purchaser that
applicant's goods operate in conjunction with a vacuum and
hence too informs the purchaser of a feature of applicant's
goods.
Serial No. 76654345
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Applicant's argument that the goods “transmit the
suction, they do not themselves create the vacuum from
which the suction results,” and its reliance on statements
made in its submission to the Food and Drug Administration,
are not persuasive. Applicant has chosen to describe its
goods as “suction apparatus” and not the “sterilized tubing
assemblies” described in the Food & Drug Administration
submission. The Board considers the issue of mere
descriptiveness based on the identification of goods; other
goods on which applicant may use its mark are not relevant
to our analysis.5 Further, applicant's “suction apparatus”
is sufficiently general to be construed as including an
element that provides the suction, or a vacuum. And, even
if “suction apparatus” is the equivalent of “sterilized
tubing assemblies,” “vac” indicates that the tubing
assemblies are specifically suited for use in a vacuum
environment. See material regarding “Medi-Vac Suction
Tubing” submitted by applicant with its request for
reconsideration, emphasizing that “[t]hick tubing walls
offer safety and collapse resistance at high vacuum
pressures.”
Applicant has also argued that the word “evacuate” and
“evacuator” are commonly used by health care professionals

5 Also, the present application is an intent-to-use application.
Serial No. 76654345
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in connection with the removal of fluids from the body,
citing to dictionary definitions of “evacuate” and
“evacuator,” and concludes that “consumers of Applicant's
goods are highly likely to interpret and understand
Applicant's mark as having this suggestive connotation.”
Brief at p. 10. The dictionary definitions do not persuade
us that consumers of applicant's goods would consider “vac”
as a reference to “evacuate” or “evacuator” rather than as
a reference to “vacuum.” We consider it more likely that
health care professionals would give “vac” its dictionary
definition rather than the “suggestive” meaning applicant
advocates.
We are also not persuaded by the evidence of third-
party registrations of marks containing CARDIO or VAC.
These registrations may not contain disclaimers of the
terms CARDIO and VAC because the examining attorneys may
have considered the marks as unitary and hence not
requiring a disclaimer. Further, as the examining attorney
pointed out, third-party registrations are not conclusive
as to the question of descriptiveness and each case must be
analyzed based on the facts pertinent to that case. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001).
Serial No. 76654345
11
Thus, we find that CARDIO is merely descriptive of a
use of applicant's goods, i.e., that they are used in
connection with cardiac procedures. VAC also is merely
descriptive of the vacuum component of applicant's goods.
Combining the two terms into CARDIOVAC does not negate the
mere descriptiveness of these terms; the composite is as
merely descriptive of the goods as the two terms are when
considered separately – a separate non-descriptive meaning
is not created by combining the two terms. Applicant is
not entitled to appropriate for itself (via Federal
registration) the exclusive right to use the term CARDIOVAC
in connection with suction apparatus for use during
urologic, gynecologic, pediatric, cardiac and general
surgical procedures.
Decision: The refusal to register is affirmed.