Cochlear Limited

Trademark Trial and Appeal Board

Aug 30, 2011

No. 77634585 (T.T.A.B. Aug. 30, 2011)

Mailed:
August 30, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cochlear Limited
________

Serial Nos. 77634585, 77634587 and 77634590
_______

Jason M. Vogel and Tracie R. Siddiqui of Kilpatrick
Stockton LLP for Cochlear Limited

Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (John Lincoski, Managing Attorney)
_______

Before Seeherman, Bucher and Kuhlke, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Cochlear Limited has applied to register three
applications, all for HYBRID in standard characters, for
the following goods and services:

Medical software in the field of audiology,
namely, clinical programming software, software
managing clinical data, and software for fitting,
diagnosing and programming prosthetic hearing
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77634585, 77634587 and 77634590
2
devices and implants and associated speech
processors, in Class 9;1

Medical electronic apparatus, namely, implantable
prosthetic hearing devices and associated
accessories and monitoring equipment, namely,
programmable prosthetic hearing implants, multi-
channel implantable hearing prosthesis; interface
devices for programming prosthetic hearing
implants in the nature of computerized diagnostic
programming systems comprised primarily of
medical electrode arrays and receiver-stimulator
modules, promontory stimulators, speech
processors, audio input selectors, cables,
headsets, headset coils, headset magnets, headset
inserts, headset earhooks, headset microphones,
and telephone adaptors, in Class 102

Audiologist services, namely, hearing aid
services and prosthetic hearing device services;
speech and hearing therapy; surgical services,
namely, the implantation of prosthetic hearing
devices and components thereof, in Class 44.3

The examining attorney has refused registration for
all three applications pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
HYBRID is merely descriptive of the identified goods and
services. In particular, the examining attorney asserts
that “hybrid” identifies a type of hearing aid system, and
that, with respect to the Class 9 application, HYBRID

1 Application Serial No. 77634585, filed December 16, 2008,
pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
2 Application Serial No. 77634587, filed December 16, 2008,
pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
3 Application Serial No. 77634590, filed December 16, 2008,
pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
Ser Nos. 77634585, 77634587 and 77634590
3
describes a feature and use of the software for this
system; with respect to the Class 10 application, describes
the components that are combined to create the system; and
with respect to the Class 44 application, describes the
purpose or use of the services, namely, that the services
feature a hybrid hearing aid or hearing aid system.
Applicant has appealed the refusal of each
application. Because the appeals involve the same issue
and similar records, we hereby consolidate the appeals and
decide each in this single opinion.
We turn first to an evidentiary point. In his brief
the examining attorney has objected to a listing of the
registration numbers and goods/services of certain third-
party registrations for HYBRID marks that applicant recited
in its appeal brief. Although the examining attorney
recognizes that applicant submitted the identical list with
its request for reconsideration, the examining attorney
asserts that such a listing is not the proper procedure for
making third-party registrations of record. Applicant did
not file a reply brief, so it has not responded to this
objection.
We sustain the objection. It is well established that
mere listings of registrations are not sufficient to make
the registrations of record. In re Duofold Inc., 184 USPQ
Ser Nos. 77634585, 77634587 and 77634590
4
638 (TTAB 1974). See also In re Classic Media Inc., 78
USPQ2d 1699, 1700 (TTAB 2006). In certain circumstances,
if an applicant includes a listing of registrations in a
response to an Office action, and the examining attorney
does not advise the applicant that the listing is
insufficient to make the registrations of record at a point
when the applicant can correct the error, the examining
attorney will be deemed to have stipulated the
registrations into the record. However, an improper
listing of third-party registrations will not be considered
if the list is submitted at a point where the applicant
cannot correct the format of the submission, and the
examining attorney does not treat the registrations as of
record. See TBMP §1208.02, and cases cited at Note 8.
Because applicant included the listings of the third-party
registrations with its request for reconsideration, i.e.,
at a point where applicant could not submit a further
response that would correct the format of the submission by
submitting copies of the registrations or the electronic
version thereof, taken from the Office’s database, the
listing of registrations has been given no consideration.4

4 We add that, given the different goods and services indicated
in the listing, even if the registrations had been properly made
of record they would not affect our decision herein.
Ser Nos. 77634585, 77634587 and 77634590
5
This brings us to the substantive issue on appeal,
whether HYBRID is merely descriptive of the identified
goods and services in the applications. A term is deemed
to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(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 Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (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 to be merely
descriptive; rather, it is sufficient 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); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use; that a term may have other meanings
in different contexts is not controlling. In re Bright-
Ser Nos. 77634585, 77634587 and 77634590
6
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, if
the mark is descriptive of any of the goods or services for
which registration is sought, it is proper to refuse
registration as to the entire class. In re Analog Devices
Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d without pub. op.,
871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
In support of his position that HYBRID is merely
descriptive of applicant’s goods and services, the
examining attorney has submitted evidence to show that
“hybrid” is a term used to describe a hearing aid system
which combines both a cochlear implant and an external
hearing aid.
Headline, New Hybrid Hearing Device Combining
Advantages Of Hearing Aids, Implants
A new hybrid hearing aid/cochlear implant device
designed for patients who can benefit from both
is being evaluated by UT Southwestern Medical
Center otolaryngologists….
Science Daily, www.sciencedaily.com

Hybrid hearing aids what are they? [title]
Hybrid hearing aids what are they? These are
hearing aids that combine a cochlear implant with
that of an inbuilt conventional hearing aid.
www.topix.com/med/otolaryngology

Cochlear Implant Hybrids: Who Is a Candidate?
You May be Surprised [title]
… Expanding criteria have led to an increased
number of patients who can now benefit from
cochlear implantation, specifically the use of
cochlear implant/hearing aid hybrids.
May 20, 2006, AudiologyOnline,
www.audiologyonline.com

Ser Nos. 77634585, 77634587 and 77634590
7
Hybrid Cochlear Implant [heading]
In June 2007, Dr. Herzog was interviewed
regarding a new type of cochlear implant. The
hybrid cochlear implant is an investigational
device which blends a hearing aid with a modified
cochlear implant.
The Center for Hearing and Balance Disorders,
www.stlouisear.com

‘Hybrid implants’ give more help for aging ears
[title]
Cochlear implants may not be just for the
profoundly deaf anymore; Iowa scientists are
developing the next generation, a “hybrid
implant” to combine the best of bionics with
regular hearing aids for age-related hearing
loss.
…
Make the electrode [of the cochlear implant]
shorter, so it only substitutes for the hearing
that’s already lost. Pair it with a regular
hearing aid to amplify their remaining low-
frequency hearing, and people just might hear
again more like they did years earlier.
So far, about 60 patients have received the
hybrid implant, manufactured by Cochlear
Americas.
MSNBC, March 14, 2006, www.msnbc.msn.com

In addition, the examining attorney has submitted
excerpts from applicant’s website, www.cochlear.com, that
show that applicant’s hearing system uses the hybrid
technology described in the foregoing articles:
Discover how Hybrid seamlessly integrates
cochlear implant and hearing aid technology.

The brilliance is in the mix--merging
technologies to restore hearing
…
It does this by seamlessly integrating electronic
stimulation provided by a cochlear implant with
acoustic amplification provided by a hearing aid.
The cochlear implant provides the high frequency
Ser Nos. 77634585, 77634587 and 77634590
8
information and the hearing aid provides the low
frequency information.

The foregoing evidence is sufficient to demonstrate
that consumers of applicant’s goods would immediately
understand, when seeing HYBRID used in connection with
them, that applicant’s identified software for fitting and
programming prosthetic hearing devices and implants are
used in connection with a hybrid hearing aid system
consisting of a cochlear implant and conventional hearing
aid, and that applicant’s identified implantable prosthetic
hearing devices and associated accessories and monitoring
equipment are products used as part of such a hybrid
hearing aid system. Therefore, applicant’s mark is merely
descriptive of the goods in application Serial Nos.
77634585 (Class 9) and 77643587 (Class 10). Moreover, when
the mark is used in connection with audiologist services,
namely hearing aid services and prosthetic hearing device
services, as well as surgical services, namely the
implantation of prosthetic hearing devices and components
thereof, consumers will understand HYBRID to refer to a
characteristic of the services, i.e., that the audiologist
services pertain to hybrid hearing aids and devices, and
the surgical services are for the implantation of
components of hybrid hearing devices.
Ser Nos. 77634585, 77634587 and 77634590
9
In reaching this conclusion, we have considered
applicant’s arguments, but have not found them to be
persuasive. First, applicant cites In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) for the
proposition that to be merely descriptive the mark must do
nothing other than immediately convey an understanding of
the goods for which registration is sought. It is true
that if a mark has a second, non-descriptive meaning, or
double entendre, it will not be considered merely
descriptive. This was the case in Colonial Stores, in
which the mark SUGAR & SPICE not only described the
ingredients of that applicant’s bakery products, but also
referenced the well-known nursery rhyme. In the present
case, however, applicant has not put forth a second non-
descriptive meaning of HYBRID from which we could conclude
that the mark conveys a double entendre.
Second, applicant points to the dictionary definition
of “hybrid” made of record by the examining attorney:
“something of mixed origin or composition,”5 and states that
its goods are not of mixed composition and therefore
“hybrid” does not describe its goods. Whether or not the
dictionary definition would be sufficient on its own to

5 The American Heritage Dictionary of the English Language, 4th
ed. (2000).
Ser Nos. 77634585, 77634587 and 77634590
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prove that HYBRID is merely descriptive of applicant’s
goods and services, the records in these three applications
show that “hybrid” is a term used to describe a hearing aid
system comprised of a cochlear implant and an external
hearing aid, which are referred to as “hybrid hearing
devices.”6
Applicant argues that thought or imagination is
required to reach a conclusion regarding the exact nature
of its goods and services. With respect to its software,
applicant contends that “[c]onsumers must use their
imagination to determine whether ‘HYBRID’ refers to the
characteristics of Applicant’s goods (is the software a
mixed composition of other software products?) or the
purpose for Applicant’s goods (is the software used to
combine two things?) or something else entirely.” Brief,
p. 5. However, given the evidence that “hybrid” is a term
used to describe a hearing aid system consisting of a
cochlear implant and external hearing aid, consumers
viewing the mark HYBRID in connection with medical software
for fitting and programming prosthetic hearing devices and
implants will immediately understand that a major

6 We add that, with respect to applicant’s goods in Class 10,
the very definition of “hybrid” shows that this term, when
applied to implantable prosthetic hearing devices with an
external hearing aid, describes a significant characteristic of
such goods.
Ser Nos. 77634585, 77634587 and 77634590
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characteristic of the software is that it is used in
conjunction with hybrid hearing devices.
Applicant makes a similar argument with respect to its
application in Class 10 for implantable prosthetic hearing
devices and associated accessories and monitoring
equipment, viz.: “Consumers must use their imagination to
determine whether ‘HYBRID’ refers to the characteristics of
Applicant’s Goods (are the goods made of a mixed
composition of constituent elements, such as metal and
plastic?) or the purpose for Applicant’s Goods (are the
goods used to combine two things?) or something else
entirely.” Brief, p. 5. Again, applicant’s argument
ignores the fact that the term used to describe a hearing
aid system comprising a cochlear implant and an external
hearing aid is “hybrid,” and that applicant itself uses the
phrase “hybrid hearing devices” to describe such equipment.
See page 5 of applicant’s brief.
Applicant makes the same argument with respect to its
application for services: “Consumers must use their
imagination to determine whether ‘HYBRID’ refers to the
characteristics of Applicant’s services (are they a mixed
composition of other services generally provided
individually?) or the purpose for Applicant’s services (are
they used to combine two things?) or something else
Ser Nos. 77634585, 77634587 and 77634590
12
entirely.” Brief, p. 5. However, we must consider the
question of descriptiveness of applicant’s mark in
connection with the identified services, and because the
evidence shows that hearing aid systems that are comprised
of cochlear implants and external hearing aids are referred
to as hybrid hearing devices, consumers seeing the mark
HYBRID in connection with hearing aid services and
prosthetic hearing device services, and surgical services
consisting of the implantation of prosthetic hearing
devices, will immediately understand the mark as referring
to audiologist services and surgical services relating to
such hybrid hearing devices. Put another way, if a patient
seeking surgery in order to have a hybrid hearing device
saw that a surgeon was offering HYBRID hearing device
implantation, he or she would immediately know that the
surgical services would implant a hybrid hearing device.
We recognize that we have discussed the
descriptiveness of HYBRID for certain of the goods and
services identified in each of the applications, rather
than for all of the goods and services. However, as stated
above, if a mark is descriptive of any of the goods or
services for which registration is sought, it is proper to
refuse registration as to the entire class. Thus, our
findings that the mark is merely descriptive for at least
Ser Nos. 77634585, 77634587 and 77634590
13
one of the identified goods or services in each of the
applications are a sufficient basis for us to find that the
refusal of registration should be affirmed with respect to
the entire application.
Decision: The refusals of registration in Application
Serial Nos. 77634585, 77634587 and 77634590 are affirmed.