TransCorp, Inc.

Trademark Trial and Appeal Board

Sep 18, 2014

No. 85537171 (T.T.A.B. Sep. 18, 2014)

Mailed: September 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re TransCorp, Inc.
————
Application No. 85537171
Filed: February 8, 2012
————
Frederick S. Burkhart, Gardner Linn Burkhart & Flory LLP, for TransCorp, Inc.
Cory Boone, Examining Attorney, Chris Doninger, Managing Attorney, Law Office 104.
————
Before Bucher, Mermelstein, and Ritchie, Administrative Trademark Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Based on the allegation of a bona fide intent to use its mark in commerce,
TransCorp, Inc. seeks registration of SPINEPORT (in standard characters) for use on
surgical medical apparatus and instruments used in spine
surgery for minimally invasive visualization and access to
the anterior spine; access and visualization system in the
nature of drills, guides, sleeves, fixation pins and guide-
wires used for herniated disc repair, biopsy, and harvesting
autogenous bone of the spine.
The examining attorney has finally refused registration, on the ground that appli-
cant’s mark is merely descriptive of the identified goods.1 Trademark Act § 2(e)(1); 15
U.S.C. § 2052(e)(1). We affirm.

1 Registration was also finally refused due to an alleged likelihood of confusion in view of a reg-
istered mark, but the examining attorney withdrew that ground for refusal in his appeal brief,
so we need not consider it.
This Opinion is Not a
Precedent of the TTAB
Application No. 85537171
2
I. Applicable Law
A term that is merely descriptive of the applicant’s goods may not be registered on
the Principal Register without a showing of acquired distinctiveness. Trademark Act
§§ 2(e)(1), 2(f). “A term is merely descriptive if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which it is
used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219
(Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009–10
(Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in rela-
tion to the goods for which registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). In other words, the issue is whether someone who knows what the goods are will
understand the mark to convey information about them. DuoProSS Meditech Corp. v.
Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012);
In re Tower Tech, Inc., 64 USPQ2d 1314, 1316–17 (TTAB 2002); In re Patent & Trade-
mark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). “On the other hand, if one must
exercise mature thought or follow a multi-stage reasoning process in order to deter-
mine what product or service characteristics the term indicates, the term is suggestive
rather than merely descriptive.” Coach Servs. Inc. v. Triumph Learning LLC, 96
USPQ2d 1600, 1616 (TTAB 2010) (quoting In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978)), vacated-in-part on other grounds, 668 F.3d 1356, 101 USPQ2d
1713 (Fed. Cir. 2012).
Application No. 85537171
3
II. Discussion
As its identification of goods makes clear, applicant’s goods are used in the field of
minimally invasive surgery. Using minimally invasive techniques, a surgeon gains ac-
cess to the body through one or more incisions just large enough to insert specially-
designed instruments and a scope to view the surgical field, allowing the surgery to be
accomplished with a minimum of damage to surrounding tissue. Unlike traditional
surgical techniques, which require an incision large enough to view the surgical site
and in which to maneuver standard surgical instruments, minimally invasive surgery
entails significantly less damage to surrounding tissues, usually resulting in shorter
hospital stays, faster recovery and rehabilitation, less pain, minimal scarring, and few-
er complications. Minimally invasive techniques are employed in a variety of surgical
settings, including spinal surgery. See generally, Rothman Inst., Minimally Invasive
Spine Surgery, www.rothmaninstitute.com/specialties/treatments/minimally-invasive-
spine-surgery (Mar. 16, 2012), attached to Ofc. Action (Mar. 16, 2012); Univ. of Pitts-
burgh, Minimally Invasive Spine Procedures (June 18, 2013), attached to Ofc. Action
(July 1, 2013).
Applicant’s mark is SPINEPORT, the combination of the words “spine” and “port.”
We first consider the meaning of those terms with respect to applicant’s goods and then
consider the descriptiveness of the words together, as they appear in applicant’s mark.
We have no doubt as to the meaning of the term “spine” in the field of medicine or
surgery. The term is a clear reference to the spinal column of a vertebrate, and in this
context, the spinal column of a human. MERRIAM-WEBSTER DICTIONARY (online), “spine”
(http://www.merriam-webster.com/dictionary/spine), attached to Ofc. Action (Oct. 12,
Application No. 85537171
4
2012); HOUGHTON MIFFLIN (online) “spine” (http://education.yahoo.com/reference/
dictionary/entry/spine), attached to Ofc. Action (Mar. 16, 2012). This is consistent with
the clear meaning of “spine” in applicant’s identification of goods and in its trade name
(“TransCorp Spine”), and applicant has offered no alternative definition of the term.
The examining attorney has submitted a variety of evidence bearing on the mean-
ing of the term “port” in the field of minimally invasive surgery. In that field, a “port” is
a device inserted at the site of an opening made in the patient’s body for safe and easy
visualization and access, enabling the introduction of any necessary surgical instru-
ments and scopes. Thus, the website of a medical institute informs the reader that in
order
[t]o access the spine through a small incision, the minimally
invasive spinal specialist uses a specialized tubular retrac-
tor or port to access the spine.
Rothman Institute, Minimally Invasive Spine Surgery. Likewise, one manufacturer’s
equipment is touted as having been
developed in order to provide surgeons with a complete
package for minimally invasive access to the spine, with a
system consisting of ports with superior lighting capabili-
ties..., a rigid arm that allows adjustments to be made with-
in the sterile field, and the most comprehensive microdiscec-
tomy instrument set.
DePuy, Products, Spotlight Access System, www.depuy.com/healthcare-professionals/
product-details/spotlight-access-system (March 16, 2012), attached to Ofc. Action
(March 16, 2012). And from another website:
The SILS™ Port is an advanced surgical product designed
to perform laparoscopic surgery through a single incision....
This product is designed to give surgeons the ability to use
multiple instruments with maximal maneuverability
Application No. 85537171
5
through adjustable cannulas all within a low-profile mallea-
ble blue port.
The SILS™ Port leaves a hidden scar when used in the
umbilicus and may minimize postoperative pain when com-
pared to traditional open procedures.
Covidien, SILS Port, Single Incision. Single Port. Simple Choice., www.covidien.com/
silsport/pages/aspx (July 1, 2013), attached to Ofc. Action (July 1, 2013). And the Uni-
versity of Pittsburgh website describes the use of a port in a lumbar discectomy (i.e., a
kind of spinal surgery):
The minimal access, minimally invasive procedure involves
localizing the disc space using fluoroscopy. A 1 cm para-
median skin incision is created and a series of dilation tubes
are used to increase the opening so that a 2 cm access port
may be secured in place. This access port provides a “tun-
nel” to the spinal canal.
Univ. of Pittsburgh, Neurological Surgery, Lumbar Discectomy, www.neurosurgery.
pitt.edu/centers-excellence/spine-services/minimally-invasive/lumbar-discectomy (June
18, 2013), attached to Ofc. Action (July 1, 2013); see also Spine Surgical Innovation,
The Swivel Port Family of Products www.spinesurgicalinnovation.com/products/
products/html (Mar. 16, 2012), attached to Ofc. Action (March 16, 2012).
We think it is clear from the record that surgeons and others in the field of mini-
mally invasive surgery would immediately understand the term “port” in regard to the
applied-for goods to refer to a device used to maintain a bodily opening so that instru-
ments can be introduced to conduct such surgery. Moreover, it seems obvious that us-
ers and potential purchasers of Applicant’s goods would immediately, and without fur-
ther conjecture, understand the words SPINE and PORT together to refer to a port
Application No. 85537171
6
used in minimally invasive surgery for “visualization and access to the anterior spine,”
as indicated in Applicant’s identification of goods.2
The examining attorney contends that applicant’s mark is nothing more than the
combination of its two descriptive terms and that — considered as a whole — the mark
is merely descriptive of applicant’s goods. Exam. Atty. Br. at 3 (unnumbered). Applicant
disagrees, noting that the applied-for mark is SPINEPORT, not the separate words
“spine” and “port,” and pointing out the absence of a dictionary definition of
SPINEPORT (as a single word) in the record. App. Br. at 7. In fact, applicant argues
that we may not consider the definitions of “spine” and “port” at all: “The present mark
is SPINEPORT, which is one word and, therefore a unitary mark. Since the mark is
unitary, the attempt to look at its terms individually as with a composite mark is abso-
lutely impermissible” Id.
Applicant’s mark is indeed unitary because the words are physically joined, i.e.,
written without the space usually inserted between words in English. But the fact that
the mark forms a unitary expression does not insulate it from a descriptiveness refusal.
A unitary mark is properly found to be descriptive when the mark — considered in its

2 Although it has not yet filed specimens and an allegation of use in support of its application,
the evidence from applicant’s website suggests that it may have commenced use of its mark on
the identified goods. See TransCorp Spine TransCorp Spine’s Latest Technological Innovation,
http://transcorpspine.com/surgeons/spineport (July 1, 2013), attached to Ofc. Action (July 1,
2013). Because there is little information about the specific goods applicant sells (or intends to
sell) under its SPINEPORT mark, we don’t know the extent to which applicant’s actual goods
in trade are similar to the other ports evidenced in the record. Nonetheless, we must base our
decision on the goods identified in the application rather than on the goods applicant is using
or intends to use its mark on. See Octocom Sys. Inc. v. Hous. Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the application re-
gardless of what the record may reveal as to the particular nature of an applicant’s goods”).
Application No. 85537171
7
entirety — is descriptive. Minn. Mining & Mfg. Co. v. Addressograph-Multigraph
Corp., 155 USPQ 470, 472 (TTAB 1967) (“It is almost too well established to cite cases
for the proposition that an otherwise merely descriptive term is not made any less so by
merely omitting spaces between the words....”). Contrary to Applicant’s argument,
there is no shortage of cases in which unitary marks formed by removing the spaces in
an otherwise descriptive phrase have been held descriptive or even generic. E.g., In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (holding
SCREENWIPE generic; “Whether compounded as ... two words ... [or] one ... either is
ordinary grammatical construction.... Nothing is left for speculation or conjecture in the
alleged trademark.”); In re Tower Tech Inc., 64 USPQ2d at 1315, 1318 (holding
SMARTTOWER descriptive; considering dictionary definitions of “smart” and “tow-
er”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (holding
AGENTBEANS descriptive; the fact that the term “does not appear in a dictionary is
not determinative”); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (hold-
ing BATTLECAM descriptive notwithstanding its absence from dictionaries); In re
Mine Safety Appliances Co., 66 USPQ2d 1694 (TTAB 2002) (holding WORKMASK de-
scriptive based on definitions of “work” and “mask”); cf. Seaguard Corp. v. Seaward
Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are “essen-
tially identical” in likelihood of confusion analysis); In re Best Western Family Steak
House, Inc., 222 USPQ 827 (TTAB 1984) (“there can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”). The salient inquiry
is whether the term formed by concatenating the words in an otherwise descriptive
Application No. 85537171
8
phrase has any different meaning or commercial impression than the phrase has when
spaced properly. If, for instance, the removal of the spaces in a descriptive phrase cre-
ates a new word with a non-descriptive meaning, then the resulting phrase is not de-
scriptive. But if the single-word term has no different meaning or impression than its
descriptive parts it is — as a whole — descriptive.
As discussed, we find the words “spine” and “port” merely descriptive, both individ-
ually and as a two-word phrase. Even when the space is removed to form the unitary
term SPINEPORT, we think that the relevant purchasers would readily recognize the
two separate words comprising applicant’s mark for several reasons. To begin with, the
combination in this case does not create any new or different impression (e.g. a differ-
ent meaning) than that conveyed by the two-word phrase, and we think that the sur-
geons and others who are potential purchasers of applicant’s goods would immediately
recognize the two words forming applicant’s mark because those words are highly rele-
vant to their field of medicine and in particular, to the identified goods. But more im-
portantly, because applicant seeks registration of its mark in standard-character form,
we must consider the fact that applicant’s mark covers applicant’s use of SPINEPORT
in any typeface, size, or color. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1258‒59 (Fed. Cir. 2011) (a standard-character mark is not
limited to “reasonable manners” in which the mark may be displayed). Indeed, alt-
hough applicant has not yet filed an allegation of use, it appears from applicant’s web-
site (submitted by the examining attorney with the final Office action), that applicant
is actually using the applied-for mark in a way that emphasizes the separate words it
Application No. 85537171
9
comprises. In text, applicant refers to its “SpinePort MIS Access System,” and the
mark is also displayed as follows:

TransCorp Spine, TransCorp Spine’s Latest Technological Innovation,
http://transcorpspine.com/surgeons/spineport (July 1, 2013), attached to Ofc. Action
(July 1, 2013). It is clear that the relevant purchasers of applicant’s goods would recog-
nize the words constituting applicant’s mark, and that those words — combined as they
are in applicant’s mark to form SPINEPORT — do not lose their descriptive signifi-
cance in relation to the identified goods.
Next, applicant contends that its mark is “at most suggestive of a desired or end re-
sult,” App. Br. at 8, but does not indicate what result that would be.3 As we have ex-
plained, we find applicant’s mark to be descriptive of the identified goods, not of some
unidentified result. Likewise, applicant urges that SPINEPORT “is not ‘only’ descrip-
tive....” App. Br. at 6. Again, applicant does not suggest what other impression is con-

3 Applicant criticizes the examining attorney, who noted in his brief that applicant offered “no
explanation of what unitary impression is created by the mark by virtue of combining ‘spine’
and ‘port.’ ” Reply Br. at 2 (citing Exam. Atty. Br. at 7). Applicant maintains that it “bears no
such duty when setting forth a one-word compound word mark that is arbitrary and, at most,
suggestive of Applicant’s goods.” Id.
It is true that the examining attorney bears the burden of coming forward with evidence to
support his refusal, and bears the ultimate burden of persuasion on the issue of descriptive-
ness. Applicant has no “duty” to submit any evidence at all (and in fact it elected not to submit
any in this case). But the examining attorney has made a prima facie showing that the mark is
descriptive, and if applicant believes that its mark has another non-descriptive meaning or
connotation (such as one “suggest[ing] a desired or end result”), it bears the risk of failing to
disclose it. Neither the examining attorney nor the Board can consider evidence or argument
that applicant declined to submit.
Application No. 85537171
10
veyed by the mark, and we perceive no other meaning or impression that would be con-
veyed by the mark to relevant purchasers, other than its descriptive meaning.
Applicant further argues that
the definition of each term in the unitary mark
SPINEPORT is completely unconnected to surgical medical
apparatus and instruments used in spine surgery for mini-
mally invasive visualization and access to the anterior
spine; access and visualization system in the nature of
drills, guides, sleeves, fixation pins and guide-wires used for
herniated disc repair, biopsy, and harvesting autogenous
bone of the spine.
App. Br. at 7. To the contrary, the evidence of record establishes that both “spine” and
“port” are related to the identified goods. If applicant means that its mark is not de-
scriptive because it does not exactly describe the goods, or that the mark might de-
scribe some goods not included in applicant’s identification of goods, applicant is mis-
taken. A descriptive mark need not tell a purchaser everything about the goods, In-
terpayment Svcs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1466 (TTAB 2003); In re
Ruffin Gaming LLC, 66 USPQ2d 1924, 1924 (TTAB 2002), and the mark is still de-
scriptive even if applicant’s goods are merely a subset of the goods described by the
mark.
Applicant also claims that its mark is not descriptive because the mark “requires
imagination and a multi-step reasoning process to determine what the goods might be,
and does not tell a consumer what Applicant’s goods are.” App. Br. at 6. Applicant’s ar-
gument relies on an incorrect test. As we have explained many times, the analysis re-
quired by Trademark Act § 2(e)(1) isn’t a guessing game. “[T]he question is not whether
someone presented only with the mark could guess the products listed in the descrip-
Application No. 85537171
11
tion of goods. Rather, the question is whether someone who knows what the products
are will understand the mark to convey information about them.” In re Phoseon Tech.
Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); see, e.g., DuoProSS Meditech Corp., 103
USPQ2d at 1757 (citing In re Tower Tech. Inc., 64 USPQ2d at 1316–17 (TTAB 2002);
In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); In re
Classic Media Inc., 78 USPQ2d 1699, 1700 (TTAB 2006); In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1538–39 (TTAB 1998); In re Truckwriters Inc., 219
USPQ 1227, 1228 (TTAB 1983).
Finally, we note applicant’s argument based on the length of the examining attor-
ney’s brief: “the very fact that it took [the examining attorney] almost five pages of rea-
soning to support [ ]his conclusion is strong support for Applicant’s position that signifi-
cant imagination is required to arrive at the feature or characteristic of Applicant’s
goods.” Reply. Br. at 2 (emphasis added). It is, of course, one of the law’s great ironies
that the frequently lengthy arguments submitted to a tribunal are called “briefs.” But
while terse (but thorough) briefs are usually preferred over the unnecessarily prolix, we
don’t decide cases based on a page count. A particularly well-crafted brief is easy to un-
derstand and will take a minimum of our time to read. But what is important is the
quality of the argument — and the evidence it depends on — not whether the prose
could have been more tightly crafted. In any event, we see no problem with the length
of the examining attorney’s brief in this case; we don’t keep statistics, but it seems
shorter than those usually filed by the Office. We do not think it unusual to spend as
much as five pages (or more) on a descriptiveness argument, nor do we consider the ex-
Application No. 85537171
12
amining attorney’s case weak because he did.
III. Conclusion
We have carefully considered all of the evidence and argument of record, including
that which we have not specifically discussed. For the foregoing reasons, we conclude
that applicant’s mark — SPINEPORT — is unregistrable under Trademark Act
§ 2(e)(1) because it is merely descriptive of applicant’s goods, namely,
surgical medical apparatus and instruments used in spine
surgery for minimally invasive visualization and access to
the anterior spine; access and visualization system in the
nature of drills, guides, sleeves, fixation pins and guide-
wires used for herniated disc repair, biopsy, and harvesting
autogenous bone of the spine.

Decision: The refusal to register is AFFIRMED.