University of Florida Tissue Bank, Inc.

Trademark Trial and Appeal Board

Mar 10, 2000

No. 75292960 (T.T.A.B. Mar. 10, 2000)

Paper No. 10
ejs
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB MARCH 10, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re University of Florida Tissue Bank, Inc.
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Serial No. 75/292,960
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Gerard H. Bencen of Bencen & Van Dyke, P.A. for University
of Florida Tissue Bank, Inc.
Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney)
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Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
University of Florida Tissue Bank, Inc. has appealed
the refusal of the Trademark Examining Attorney to register
REGENERATION TECHNOLOGIES, INC. as a trademark for “medical
products, namely, grafts of human bone and other tissues,”
in Class 5, and “surgical implants made from human bone and
Ser. No. 75/292,960
2
other tissue,” in Class 10.1 Registration has been refused
pursuant to 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.
Applicant and the Examining Attorney have filed
briefs.2 An oral hearing was not requested.
It is essentially the Examining Attorney’s position
that REGENERATION TECHNOLOGIES is merely descriptive of
applicant's goods, and that the addition of the word INC.,
an entity designation without source indicating function,
does not avoid the descriptiveness of the mark as a whole.
The Examining Attorney has made of record dictionary
definitions of the words “regenerate” (“Biol. regrow or
cause (new tissue) to regrow to replace lost or injured
tissue”);3 “regeneration” (“reproduction or reconstitution
of a lost or injured part”);4 and “technology” (”the study

1 Application Serial No. 75/292,960, filed May 16, 1997,
asserting a bona fide intention to use the mark in commerce.
2 In its brief applicant has, for the first time, made reference
to certain third-party registrations for what are asserted to be
REGENERATE or REGENERATION marks. The Examining Attorney has
objected to our consideration of these registrations because they
were not made of record prior to the filing of the appeal, and
indeed have still not been properly made of record, applicant
merely listing registration numbers and goods in its brief. The
Examining Attorney’s objection is well taken on both points, and
these registrations have not been considered.
3 The Oxford Dictionary and Thesaurus, © 1996.
4 Stedman’s Medical Dictionary, 26th ed., © 1995.
Ser. No. 75/292,960
3
or use of the mechanical arts and applied sciences”).5 In
addition, the Examining Attorney has made of record
excerpts from articles taken from the NEXIS data base,
including the following which include references to
“regeneration technology” or “regeneration technologies.”6
Headline: Osiris Therapeutics strikes
deal to fund biotechnology research
Osiris said it hold worldwide marketing
rights to regeneration technologies or
treatments developed from the alliance.
“The Baltimore Sun,” March 17, 1998
Tissue regeneration technology is
complicated. But the basic idea is
simple: If it cracks or rips, regrow
it.
“The Columbus Dispatch,” March 28, 1994
An Anchorage orthopedic medical device
company has signed an agreement with a
children’s hospital for research and
limb regeneration technology.
“Alaska Journal of Commerce,” August 9,
1993
…leading corporate financings and
negotiating strategic partnerships will
be of great value to Orquest as we

5 The Oxford Dictionary and Thesaurus, © 1996.
6 Applicant has objected to those articles which were published
subsequent to the filing of applicant’s application, stating that
“even if third parties have used the Applicant’s mark in a
descriptive fashion subsequent to the Applicant’s filing date,
this should not be used against the Applicant.” Brief, p. 14.
However, our determination of whether a mark is merely
descriptive is based on current purchaser perception, and if
recent articles show that a term is, or has become descriptive,
such articles are clearly relevant. Applicant has not provided
any evidence that it has objected to such descriptive use, or
otherwise attempted to assert its trademark rights in connection
with the articles.
Ser. No. 75/292,960
4
continue developing our bone and
cartilage regeneration technologies.”
“Business Wire,” May 7, 19987
In addition to the Company’s tissue
regeneration technologies and products,
Integra LifeSciences has a variety of
other technologies and medical
products.
“PR Newswire,” January 14, 1998
Degenerative disc disease—only one of
the applications for Orquest’s new bone
regeneration technology—is the most
common identifiable cause of the
chronic back pain suffered by more than
five million Americans.
“Business Wire,” June 18, 1996
P.I. Medical’s expertise will be
combined with that of USBiomaterials’
Bioglass (R) bone and soft tissue
regeneration technology in order to
develop a wider range of implantable
devices without rejection from the
body’s defense system.
“PR Newswire,” May 31, 1994
Applicant has stated that it intends to use its mark
in connection with medical products made from human bone
and other tissues. Applicant also states that its
“products have, as one important function, the regeneration
of damaged tissue.” Response filed June 17, 1998.

7 We recognize that this listing, as well as those following,
are taken from wire reports, and therefore we have no evidence
that these articles were actually published in newspapers.
Applicant has not objected to the excerpts on this basis, and we
have considered them to the extent that they reflect the authors’
views regarding the phrase “regeneration technolog(ies)(y).”
Ser. No. 75/292,960
5
Section 2(e)(1) prohibits the registration of a mark
which, when used on or in connection with the applicant’s
goods, is merely descriptive of them. The test for
determining whether a mark is merely descriptive is whether
the involved term immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of a product or service. In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1986).
As applicant has acknowledged, one important function
of its goods is the regeneration of damaged tissue. The
NEXIS evidence shows that “regeneration technology” or
“regeneration technologies” is a term which is used to
refer to bone and tissue regeneration treatments. Thus,
when the mark REGENERATION TECHNOLOGIES, INC. (INC. having
no source-indicating value) is used in connection with
grafts of human bone and other tissues, and surgical
implants made from human bone and other tissue, the
relevant purchasers of such products will immediately
understand that these products are used for tissue
(including bone tissue) regeneration.
Applicant has made various arguments in which it
appears to dissect its mark into the separate elements
REGENERATION and TECHNOLOGIES, and then to discuss the
descriptivess of each. As the evidence indicates, however,
Ser. No. 75/292,960
6
the phrase “regeneration technologies” or “regeneration
technology” in its entirety has a descriptive meaning with
respect to applicant’s identified goods.8 See In re Shiva
Corp., 48 USPQ2d 1957 (TTAB 1998).
Applicant argues that “if the average consumer was
[sic] unaware that applicant was providing medically
relevant services, the mark ‘REGENERATION TECHNOLOGIES,
INC.’ would at the most provide only the vaguest suggestion
of this fact. However, applicant ignores the well-
established principle that the question of whether a term
is merely descriptive must be determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the significance that the mark is likely to

8 We would also point out that registrations for REGENERATION
per se for non-medical items (registrations which, as previously
stated, were not properly made of record) do not establish that
REGENERATION is not descriptive of surgical implants and grafts
of human bone and other tissue. Further, applicant’s reliance on
In re Hutchinson Technology, Inc., 852 F.2d 552, 7 USPQ2d 1490
(Fed. Cir. 1988), is misplaced. That case involved the question
of whether HUTCHINSON TECHNOLOGY, taken as a whole, was primarily
merely a surname. Although the Court discussed the impact of the
word TECHNOLOGY in determining that issue, the question before
the Court was never whether the mark was merely descriptive.
Further, the specific statements made by the Court in terms of
the descriptiveness of TECHNOLOGY indicate, at most, that the
word TECHNOLOGY, without any other term, may not describe with
sufficient particularity various electronic components. It
should also be noted that the Court remanded the application to
the Board for the entry of a disclaimer of “technology”; the
Office requires disclaimers only of unregistrable material, which
would include merely descriptive words.
Ser. No. 75/292,960
7
have, because of the manner in which it is used, to the
average purchaser as he encounters goods bearing the mark
in the marketplace. In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986). Because of the specialized nature
of applicant’s goods, they would be marketed only to those
in the medical field, and such purchasers, viewing the mark
in connection with the goods, would immediately understand
from the mark REGENERATION TECHNOLOGIES, INC. that the
surgical implants and grafts are used for tissue
regeneration, which is, as applicant acknowledges, an
important function of its goods.9 Although applicant also
appears to argue that purchasers will not be aware of the
specifics of how its goods regenerate tissue, it is
sufficient if a mark describes a single significant feature
or function of the goods. See In re Venture Lending
Associates, supra. Again, applicant itself has stated that
the regeneration of damaged tissue is an important feature
of its goods.

9 Applicant has made reference to a West Virginia company called
Regeneration Technologies Inc. which manufactures carbon-
activated devices. Applicant argues that the use by that company
of Regeneration Technologies Inc. as its name shows that
REGENERATION TECHNOLOGIES INC. cannot be descriptive of
applicant’s goods. This argument is not persuasive. That third-
party use for different goods is totally irrelevant to the
question before us, which is whether applicant’s mark is merely
descriptive of applicant’s identified goods.
Ser. No. 75/292,960
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We also reject applicant’s semantics argument that the
goods themselves are not regenerated from anything, and are
therefore not related to regeneration technologies per se.
It is clear from the evidence of record that the goods are
used in regeneration technologies.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board