Advanced Cardio-vascular Systems, Inc.

Trademark Trial and Appeal Board

Jul 31, 2001

No. 75687509 (T.T.A.B. Jul. 31, 2001)

7/31/01

Paper No. 14
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Advanced Cardiovascular Systems, Inc.
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Serial No. 75/687,509
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Michael W. Hicks of Blakely, Sokoloff, Taylor & Zafman for
Advanced Cardiovascular Systems, Inc.

Hanno Rittner, Trademark Examining Attorney, Law office 115
(Tomas Vleck, Managing Attorney).
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Before Cissel, Bottorff and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 21, 1998, Advanced Cardiovascular Systems,
Inc. (applicant) filed a trademark application to register
the mark STEELCORE (typed form) for goods identified as
“medical guide wires” in International Class 10.1
The Examining Attorney refused to register the mark on
the ground that the mark, when applied to the goods, is

1 Serial No. 75/687,509. The application alleges a date of first
use and a date of first use in commerce of February 1, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/687,509
2
merely descriptive under Section 2(e)(1) of the Trademark
Act. 15 U.S.C. § 1052(e)(1). When the Examining Attorney
made the refusal to register final, applicant filed a
notice of appeal. Both applicant and the Examining
Attorney have submitted briefs, but no oral hearing was
requested.
The Examining Attorney’s position is that the term
“core” is used to describe guide wires. Since applicant’s
advertising describes its wires as having a stainless steel
shaft, the term STEELCORE is merely descriptive of
applicant’s goods. The Examining Attorney relies on
dictionary definitions, LEXIS/NEXIS articles, information
from websites, and information provided by applicant to
support the refusal.
Applicant, on the other hand, argues that its mark is
at most suggestive of the goods, that the Examining
Attorney has failed to show use of the term STEELCORE by
others in relation to the identified goods, and that the
term does not have a clear meaning. Therefore, applicant
concludes by arguing that the Examining Attorney has not
met the Office’s burden of showing that applicant’s mark is
merely descriptive.2

2 Applicant also objects to two Internet printouts submitted by
the Examining Attorney. Applicant submits that the documents
Ser. No. 75/687,509
3
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). A term may
be descriptive even if it only describes one of the
qualities or properties of the goods or services. In re
Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). We look at the mark in relation to the goods or
services, and not in the abstract, when we consider whether

should not be considered because they were submitted after the
record was closed, the evidence went beyond the issue for which
applicant sought remand, and it was unfair to applicant since
applicant did not have the right to respond to the Examining
Attorney’s new evidence with its own evidence. Applicant’s
objection is not well taken. The Examining Attorney submitted
the evidence after applicant’s request for remand was granted and
applicant submitted additional evidence. This is the proper
procedure. TBMP § 1207.02 (“If a request to remand for
additional evidence is granted, the nonrequesting party may
submit additional evidence in response to the evidence submitted
with the request.”) The Examining Attorney’s evidence relates to
the issue for which remand was granted (the descriptiveness or
suggestiveness of the term). There is also nothing unfair in the
process. The Examining Attorney has the burden to establish that
the term is descriptive. In the examination process, the
Examining Attorney has the last opportunity to submit evidence as
a matter of right at the final Office action stage. Here, if
applicant desired to submit additional evidence to respond to the
Examining Attorney’s evidence, it could have filed another
request for remand, which it did not do.
Ser. No. 75/687,509
4
the mark is descriptive. Abcor, 588 F.2d at 814, 200 USPQ
at 218.
Inasmuch as the evidence of record supports the
Examining Attorney’s determination that the term STEELCORE
is merely descriptive for medical guide wires, we affirm
the Examining Attorney’s refusal to register.
The Examining Attorney originally made of record
evidence from the National Library of Medicine MEDLINE
database to show that the term “core” is used to describe
the center of guide wires. A sample of the evidence
follows.
A simple method to redirect malpositioned central
venous catheters using a guide wire with movable core
is described. (222-4).

To prevent the catheters from being obstructed by the
particles, a core shaft wire was passed through the
channels of the particles. (696-9).

A new mechanically related 20 MHZ intravascular
ultrasound guide wire (0.032 inch) with a transducer
core was placed through the central lumen of a
peripheral arterial balloon-expandable stent. (1213-
6).

It involves passage of a tapered, movable-core, J-
tipped guide wire across the right ventricle into the
pulmonary artery…. (264-5).

A curved, tapered, solid-core movable J guide wire was
developed for use in percutaneous transfemoral
pulmonary angiography. (864-5).

The Examining Attorney also made of record Internet
printouts that show that applicant itself, in a press
Ser. No. 75/687,509
5
release dated October 13, 1997, describes its product as
follows:
The ACS HI-TORQUE ALL STAR Guide Wire is a second
generation ACS HI-TORQUE EXTRA S’PORT Guide Wire – the
most popular stent delivery wire on the market. It
features a softer, less traumatic tip for good lesion
access, and has a large diameter stainless steel inner
core that offers good support and vessel-straightening
for stenting.

Applicant’s other promotional literature clearly
demonstrates that its goods have a steel “core” (“.018’
diameter and stainless steel shaft ensure desired support
with no compromise to flexibility or torqueability”).
Sometimes, applicant uses the term “shaft” to refer to the
center of its guide wires. The Examining Attorney has
submitted definitions of “shaft” as “a long, generally
cylindrical bar, especially one that rotates and transmits
power, as the drive shaft of an engine,” and “core” as “the
central or innermost part”3 to show that the terms would be
used to describe the center of applicant’s guide wires.
Also, the Examining Attorney has included evidence
that competitors use very similar terms to describe their
guide wires:

3 We can and do take judicial notice of these definitions
submitted by the Examining Attorney. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
While applicant suggests that these definitions should have been
submitted earlier, there is nothing improper with the Examining
Attorney making this request in the Appeal Brief.
Ser. No. 75/687,509
6
“AGILITY’s performance in tortuous neurovasculature
cases is quite remarkable,” Mr. Albiani continued.
“The unique construction of our one-piece stainless
steel core wire, coupled with a lubricious exterior
hydrophilic coating, enable the AGILITY™ 10 Steerable
Guideline to deliver excellent torque response to the
distal tip.” Johnson & Johnson website.

Another site, www.devicelink.com, has a notation under
Spring Guidewire Configuration Capabilities describing a
guide type with a “Fixed Core, movable core, and custom
designs” and material including “304 V stainless steel.”4
Finally, we note that applicant itself admits that
“[i]n the present case, it is clear that Applicant’s mark
consists of two undeniably descriptive words, ‘steel’ and
‘core.’” Response dated February 28, 2000, p. 3.
While admitting the descriptiveness of the individual
terms, applicant argues that the Examining Attorney ‘relies
on a non-existent literal application of the mark to
Applicant’s goods and does not try to present a true
figurative analysis, likely as it would show a multi-
thought process.” Applicant’s Br., p. 9. See also
Applicant’s Reply Br., p. 7 (“STEELCORE is a coined term
invented for the sole purpose of functioning as a

4 While we have considered these materials, to which applicant
has objected, we do not hesitate to note that the outcome in this
case would be the same even if we did not consider this evidence.
Ser. No. 75/687,509
7
trademark”). Applicant also criticizes the Examining
Attorney for not producing evidence of descriptive use of
the mark by others in the industry. Further, applicant
points out that a “search consisting of a combination of
the term ‘steelcore,’ either alone or in connection with
the term ‘guide wire’ on various relevant NEXIS databases
only yielded documents demonstrating Applicant’s
proprietary use of the mark.” Applicant’s Br., p. 3.
In response to applicant’s arguments, we agree that
even if the individual terms are descriptive, we must
determine if the mark in its entirety is descriptive of the
goods because when combined, the terms may not be merely
descriptive. We find in this case that when the terms are
combined, they have exactly the same descriptive meanings.
The term STEELCORE unequivocally describes medical guide
wires that have steel shafts or cores.
While applicant argues that the “evidence of record
fails to establish that the term STEELCORE has a meaning in
the relevant trade,” Applicant’s Br., p. 7, it is clear
that the centers of guide wires are frequently referred to
as “cores” and that the inner part of applicant’s guide
wires are made of stainless steel. It does not require any
“leap of faith,” as applicant suggests, to reach the
conclusion that “STEELCORE” describes a feature of a
Ser. No. 75/687,509
8
medical guide wire having a steel center or core. Courts
have long held that to be “merely descriptive,” a term need
only describe a single significant quality or property of
the goods. Meehanite Metal Corp. v. International Nickel
Co., 262 F.2d 806, 807, 120 USPQ 293, 294 (CCPA 1959);
Gyulay, 820 F.2d at 1217, 3 USPQ2d at 1009. The term
STEELCORE immediately conveys to potential purchasers the
fact that the goods have a steel center or core, which is a
feature of the goods.
While applicant combines the terms “steel” and “core”
without a space, the resulting combination does not convert
a merely descriptive term into a suggestive term. See
Abcor, 200 USPQ at 218. The commercial impression of the
combined term remains the same, i.e., guide wires having a
steel center. In addition, there is no requirement that
before a mark can be held merely descriptive, the Examining
Attorney must find descriptive uses of the exact term in
the industry. Id. (GASBADGE at least descriptive of gas
monitoring badges without any evidence of use of the term
by the industry).
When the admitted descriptiveness of the individual
terms is considered in light of the evidence, the Examining
Attorney’s refusal to register the mark on account of
descriptiveness must be affirmed. The evidence shows that
Ser. No. 75/687,509
9
the center of a medical guide wire is referred to as a
core. The core of applicant’s guide wires is made of
stainless steel. Nothing is left to the imagination when
the two descriptive terms are combined into applicant’s
term STEELCORE and applied to medical guide wires having a
steel center or core.
Decision: The Examining Attorney’s refusal to
register the mark STEELCORE under Section 2(e)(1) of the
Trademark Act on the ground that it is merely descriptive
of the goods, medical guide wires, is affirmed.