Cook Pacemaker Corp.

Trademark Trial and Appeal Board

Aug 13, 1999

No. 75118809 (T.T.A.B. Aug. 13, 1999)

Paper No. 14
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 23, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cook Pacemaker Corporation
________
Serial No. 75/118,809
_______
Richard J. Godlewski for applicant.
John D. Dalier, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Cook Pacemaker
Corporation to register the term LEAD EXTRACTION for
“medical kits comprised of various combinations of one or
more of locking stylets, coils, sheaths, catheters,
cannulae, tubes, locking wire guides, wire guides,
hemostats, clamps, gauge pins, clippers, pin vises, coil
expanders, stylet wires, dilators, dilator sheaths and
baskets for the percutaneous or transvenous snaring,
Ser No. 75/118,809
2
removal, retrieval or withdrawal of surgical leads.”1
Applicant claims that the term sought to be registered has
acquired distinctiveness as provided by Section 2(f) of the
Trademark Act.
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that LEAD EXTRACTION, when used in connection
with applicant’s medical kits, is not just merely
descriptive, but is generic and, thus, incapable of
functioning as a source identifying mark. The Examining
Attorney further contends that, in view of the generic
nature of the term LEAD EXTRACTION, the evidence of
acquired distinctiveness submitted by applicant is
insufficient to permit registration on the Principal
Register.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs. An
oral hearing was not requested.
The Examining Attorney’s position is that the term
sought to be registered is generic. Further, the Examining
Attorney maintains that if it is determined that the term
is not generic, but rather merely descriptive, then the

1 Application Serial No. 75/118,809, filed June 14, 1996,
alleging dates of first use of April 11, 1991.
Ser No. 75/118,809
3
evidence of acquired distinctiveness is insufficient to
support registration on the Principal Register. In the
Examining Attorney’s view, the term names the category of
applicant’s goods, namely medical instruments used in lead
extraction. The Examining Attorney has relied upon
dictionary definitions and excerpts retrieved from the
NEXIS database.
Applicant contends that the term sought to be
registered is inherently distinctive, but, at worst, is
merely descriptive.2 Applicant goes on to contend that in
the event the term is determined to be merely descriptive,
the applicant has submitted sufficient evidence of acquired
distinctiveness and that, thus, the term LEAD EXTRACTION is
registrable on the Principal Register. In maintaining its
position, applicant more specifically argues that there are
a variety of more accurate terms (e.g., “removal”) to
describe the function of applicant’s goods, and that
inasmuch as the term “extraction” in the medical field
suggests a forcible tearing or pulling of an object from
the body, the term is fanciful and incongruous when applied
to applicant’s goods. Applicant concludes that any doubts

2 We also note, however, applicant’s statement that it
“recognizes that the question of genericness may well be a close
one...” (reply brief, p. 1)
Ser No. 75/118,809
4
must be resolved in its favor, pointing out that those in
the medical field will then have an opportunity to oppose
registration of the term sought to be registered.
The issues on appeal are whether the term LEAD
EXTRACTION is merely descriptive or generic for applicant’s
goods and, alternatively, if such designation is not
regarded as generic but rather as merely descriptive,
whether it has acquired distinctiveness.
We turn first to the issues of whether LEAD EXTRACTION
is generic, and whether it is merely descriptive, as used
in the context of a medical kit used to perform a lead
extraction procedure. A mark is merely descriptive if, as
used in connection with the goods or services in question,
it describes, i.e., immediately conveys information about,
an ingredient, quality, characteristic, feature, etc.
thereof, or if it directly conveys information regarding
the nature, function, purpose, or use of the goods or
services. See: In re Abcor Development Corp., 588 USPQ
811, 200 USPQ 215 (CCPA 1978); In re Eden Foods Inc., 24
USPQ2d 1757 (TTAB 1992); and In re American Screen Process
Equipment Co., 175 USPQ 561 (TTAB 1972). A mark is a
generic name if it refers to the class or category of goods
or services on or in connection with which it is used. H.
Marvin Ginn Corp. v. International Association of Fire
Ser No. 75/118,809
5
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The test for determining whether a mark is generic is its
primary significance to the relevant public. Section 14(3)
of the Act; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra. The
Patent and Trademark Office has the burden of establishing
that a mark is generic and thus unregistrable. In re
Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
relevant public’s understanding of a term may be obtained
from any competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). The Patent and
Trademark Office may, in appropriate cases, satisfy its
evidentiary burden by means of dictionary definitions
showing that “the separate words joined to form a compound
have a meaning identical to the meaning common usage would
ascribe to those words as a compound.” In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed. Cir.
1987).
Given the type of refusal at issue here, and the
highly specialized and technical nature of applicant’s
Ser No. 75/118,809
6
medical kit, it is important to understand the goods.
Applicant has provided the following background:
Applicant’s particular goods are useful
in performing a minimally invasive and
minimally traumatic procedure for the
percutaneous or transvenous snaring,
removing, retrieving or withdrawing
from a patient a previously implanted
cardiac lead, such as a pacemaker lead.
The removal of a cardiac lead is very
problematic because the lead, and in
particular the tip of the lead, can
become highly enmeshed and encapsulated
in the tissues and vessels in which the
lead is positioned. Prior procedures
have often entailed forcibly tearing a
lead and lead tip from any
encapsulating material, resulting in
substantial trauma to the patient, and
possibly even leading to stroke or
cardiac arrest during the removal
procedure. Such forcible tearing can
sometimes fracture the lead or separate
the lead tip from the balance of the
lead. Applicant’s goods permit
implanted cardiac leads to be removed
while avoiding these drawbacks of prior
procedures.
This appeal involves the trademark
designating the only medical devices
presently approved by the FDA for
distribution in interstate commerce for
percutaneously or transvenously
snaring, removing, retrieving or
withdrawing implanted cardiac leads.
Applicant’s devices were developed in
response to a problem encountered with
the use of Telectronics Accufix atrial
pacemaker leads, such as models 330-801
and 329-701, which were voluntarily
withdrawn from the market. The
specific problem was the fracture or
extrusion of a J-shaped retention wire
on the Accufix leads. Such extrusion
Ser No. 75/118,809
7
can result in laceration of the atrium
or the surrounding vascular structures.
It became clear to medical
practitioners and regulators that it
would be highly desirable to develop a
technique or a device for removing from
a patient the entirety of such leads
(including their potentially
problematic retention wires) with
relative safety and efficiency.
Applicant and its associated companies
have pioneered percutaneous and
transvenous procedures and devices for
snaring, removing, retrieving or
withdrawing whole leads. Applicant’s
devices are the sole devices presently
approved by the FDA for distribution in
interstate commerce for this purpose,
and are in fact used for the
performance of a significant number of
procedures annually.
While prior procedures for the removal
of cardiac leads may have entailed the
forcible tearing of a lead and lead tip
from any encapsulating tissue,
applicant’s goods do not involve the
forcible pulling or removal of anything
from a patient. Instead, the goods are
used to first separate the lead from
any encapsulating material with minimal
trauma to the patient, while the lead
is generally maintained in its original
position. Only after such separation
are the goods then employed to remove
the lead from the patient, while
simultaneously also protecting the lead
and preventing its fracture during
removal.
In support of the refusal to register, the Examining
Attorney submitted dictionary definitions of the words
“lead” and “extraction.” Although the term “lead” is
defined in terms of an electrocardiograph, there is a
Ser No. 75/118,809
8
listing for the term “pacemaker lead” which is more
pertinent to applicant’s goods and the issue before us.
That term is defined as “the connection between the heart
and the power source of an artificial cardiac pacemaker,
comprising an electrode to contact the heart, a conductor
coil, and a terminal pin to connect to the generator.” The
term “extraction” is defined as “the process or act of
pulling or drawing out.” Dorland’s Illustrated Medical
Dictionary (28th ed. 1994). In addition, we take judicial
notice, as requested by the Examining Attorney in his
brief, of the listing showing that the term “extraction” is
synonymous with the term “removal.” The Original Roget’s
Thesaurus of English Words and Phrases (Americanized
Version 1994).
The Examining Attorney also has introduced numerous
excerpts retrieved from the NEXIS database wherein the term
“lead extraction” is used in a generic fashion.3 The
following examples are representative of the generic uses
made of record by the Examining Attorney:
Thus, the risk of leaving the lead in
place must be balanced against the risk
of lead extraction for each individual
patient. Removal of a pacemaker lead
is a specialized procedure. Only some
of the doctors who implant pacemakers

3 Applicant takes issue with certain aspects of the NEXIS
evidence. Suffice it to say that applicant’s views are not well
taken, and we have accorded appropriate probative value to this
evidence.
Ser No. 75/118,809
9
can perform lead extractions.
Harvard Heart Letter, September 1995
...including a pacing/defibrillation
lead extraction system...
Health Industry Today, November 1992
Standard lead extraction techniques
include...
PACE—Pacing and Clinical
Electrophysiology, October 1996
Chronic pacemaker lead extraction...
Primary Cardiology, August 1995
This unique procedure can be used to
avoid the morbidity associated with
percutaneous lead extraction or
thoracotomy and to prevent potential
dislodgment and embolization of the
retention wire during lead extraction.
Mayo Clinic Proceedings, April 1995
Indications for lead extraction were...
Journal of Thorasic and Cardiovascular
Surgery, June 1991
...serious consideration should be
given to transcatheter or surgical lead
extraction after a period of
anticoagulation.
American Journal of Cardiology, July
1995
Further evidence of genericness is shown by the five
letters solicited by applicant from physicians who use
applicant’s goods in their practices. As pointed out by
applicant, these are not form letters, but rather letters
written in the physicians’ own words. The letters
essentially indicate that each of these five physicians
associate the term sought to be registered as identifying
goods originating with applicant. The letters also
Ser No. 75/118,809
10
include, however, the following statements showing the
writers’ usage of “lead extraction” in a generic manner:
I have had experience now with over 200
lead extractions. As you know, I have
been able to speak worldwide about my
experience with lead extractions and
have been involved with all of the
latest developments.
Raymond H.M. Schaerf, M.D.
When my father required removal of his
permanent pacemaker leads, there was no
tool set nor was the concept of lead
extraction developed.
Bruce L. Wilkoff, M.D.
As those of us involved in pacing and
pacemaker lead extraction are well
aware, the only company to market lead
extraction devices with approved
technology is that of [applicant].
Charles J. Love, M.D.
When I think of lead extraction or a
lead extraction system, I think of
[applicant] and its lead extraction
kit.
Carey S. Fredman, M.D.
As you know, I’ve used the Cook lead
extraction system for quite some time
and have found it to be exceptional in
its capabilities for removing some
leads under very difficult situations.
This system employed unequivocally is
involved with lead extraction and
should be considered a lead extraction
system...
Mark H. Schoenfeld, M.D.
After reviewing the entirety of the record, we
conclude that the term LEAD EXTRACTION is a generic name
Ser No. 75/118,809
11
for the type or category of applicant’s goods, namely lead
extraction medical kits (or medical kits used in lead
extraction). The words comprising applicant’s applied-for
mark have readily understood meanings as shown by the
medical dictionary definitions. There is absolutely
nothing left for speculation or conjecture in the alleged
trademark. In the present case, “the terms remain as
generic in the compound as individually, and the compound
thus created is itself generic.” In re Gould Paper Corp.,
supra at 1111-12. Indeed, the compound itself, as shown by
the other evidence of record, would appear to have a
commonly used and readily recognized meaning. Simply put,
LEAD EXTRACTION is a name for a type or category of medical
kits, that is, lead extraction medical kits, rather than a
mark identifying the source of the goods.
We recognize that the term “lead extraction” may not
be the only generic term for the category of goods involved
here. As shown by the brochure of applicant’s German
competitor, it uses “lead removal.” Applicant has
suggested the following alternative designations: lead
snaring, lead removal, lead withdrawal and lead retrieval.4

4 We note in this connection that the Examining Attorney
conducted a search of the NEXIS database for all of these
alternative terms suggested by applicant. The search yielded
Ser No. 75/118,809
12
Indeed, a product may have more than one generic name. In
re Recorded Books Inc., 42 USPQ2d 1275, 1281-82 (TTAB
1997), citing In re Sun Oil Company, 426 F.2d 401, 165 USPQ
718, 719 (CCPA 1970) (J. Rich, concurring). Nevertheless,
as Judge Rich instructed in his concurring opinion, “[a]ll
generic names for a product belong in the public domain.”
Id. (emphasis in original). See: J. T. McCarthy, McCarthy
on Trademarks and Unfair Competition, § 12:10 (4th ed.
1999). And, we point to the evidence showing that the
terms “extraction” and “removal” are synonymous.
Applicant’s specimen, which appears to be a label for
application directly to the goods, is reproduced below.
We particularly note that applicant’s videotape is titled
“Intravascular Extraction of Chronic Pacemaker Leads.”

only one story, but this excerpt discussed “withdrawal” in the
context of the metal lead, not surgical leads.
Ser No. 75/118,809
13
This title certainly undermines applicant’s argument that
the term “extraction” is not one which would be used in
connection with or associated with the procedure undertaken
with applicant’s goods. Rather, as applicant’s own use
would seem to indicate, the term is used in connection with
the removal, i.e., extraction of leads.
In finding that the designation LEAD EXTRACTION is
incapable of being a source identifier for applicant’s
medical kits used to perform lead extraction procedures, we
have considered, of course, all of the evidence touching on
the public perception of this designation, including the
evidence of acquired distinctiveness. In re Paint Products
Co., 8 USPQ2d 1863 (TTAB 1988). As to acquired
distinctiveness, applicant has the burden of proof to
establish a prima facie case of acquired distinctiveness.
Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Applicant submitted the declarations of Louis Goode,
applicant’s president, wherein he asserts that the term
sought to be registered has become distinctive as a result
of substantially exclusive and continuous use since April
11, 1991 in connection with applicant’s goods. Mr. Goode
also indicated that applicant’s goods are the only such
goods presently approved by the Food and Drug
Ser No. 75/118,809
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Administration (FDA) for the percutaneous or transvenous
removal of cardiac leads. Mr. Goode states that the market
for applicant’s goods is highly specialized and that the
relevant purchasers are highly sophisticated, namely
physicians who remove previously implanted cardiac leads
from patients. These physicians number approximately 495
in the United States, all of whom must use applicant’s
goods as regulated by FDA. Mr. Goode states his belief
that a majority of these physicians recognize applicant as
the sole source of goods identified by LEAD EXTRACTION.
Mr. Goode also indicates that a German entity is
applicant’s only competitor outside the United States, and
that this competitor’s product brochure, a copy of which
accompanies Mr. Goode’s declaration, uses the term
“removal” but not “extraction.”
Also of record, as noted above, are the five letters
from physicians who essentially state that they associate
the term sought to be registered as indicating source in
applicant.
Applicant’s evidence of acquired distinctiveness
suggests that at least some relevant purchasers (5 out of
an alleged pool of 495 physicians) view LEAD EXTRACTION as
a trademark. Nonetheless, if the evidence as a whole
establishes--as it does to our satisfaction--that the term
Ser No. 75/118,809
15
is used and would be primarily perceived as a generic term,
the recognition of the term as a trademark by some of
applicant’s customers must be deemed no more than a de
facto secondary meaning that, in legal effect, can neither
confer nor maintain trademark rights in the designation
sought to be registered. See, e.g., Kellogg Co. v.
National Biscuit Co., 385 U.S. 111, 39 USPQ 296, 299
(1938); J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280
F.2d 437, 126 USPQ 362, 364 (CCPA 1960); and Schulmerich
Electronics, Inc. v. J. C. Deagan, Inc., 202 F.2d 772, 97
USPQ 141, 145-46 (CCPA 1953). See also: McCarthy on
Trademarks and Unfair Competition, § 12:47 (4th ed. 1999).
We recognize that applicant’s use dates back to 1991,
and that at least five “customers” assert that they
perceive the term LEAD EXTRACTION as a source identifier
for applicant’s goods. In our view, this evidence clearly
is outweighed by the other evidence of record. For us, the
dictionary definitions, the NEXIS excerpts, and each of
these physicians’ own generic use of the term “lead
extraction”5 persuade us of the unambiguously generic
meaning of the words that make up applicant’s alleged mark.

5 Indeed, in the words of applicant: “And yes, applicant may
wish that the letters had been ghost-written by counsel rather
than by the doctors themselves.” (reply brief, p. 8)
Ser No. 75/118,809
16
Accordingly, even if the term LEAD EXTRACTION were
found to be not generic, but merely descriptive, given the
highly descriptive nature of the term LEAD EXTRACTION, we
would need to see a great deal more evidence than applicant
has made of record in order to find that the term has
become distinctive of applicant’s medical kit used in lead
extraction procedures. That is to say, the greater the
degree of descriptiveness, the greater the evidentiary
burden on the user to establish acquired distinctiveness.
Yamaha Int’l. Corp. v. Hoshino Gakki Co., supra; and In re
Merrill Lynch, Pierce, Fenner & Smith, Inc., supra. See
also: Restatement (Third) of Unfair Competition (1993),
Section 13, comment e:
The sufficiency of the evidence offered to prove
secondary meaning should be evaluated in light of
the nature of the designation. Highly
descriptive terms, for example, are less likely
to be perceived as trademarks and more likely to
be useful to competing sellers than are less
descriptive terms. More substantial evidence of
secondary meaning thus will ordinarily be
required to establish their distinctiveness.
Indeed, some designations may be incapable of
acquiring distinctiveness.
Lastly, we acknowledge applicant’s emphasis on the
fact that it is the sole source of goods approved by the
FDA to be used in lead extraction procedures in this
country. In the unique circumstances of the present case,
however, the fact that applicant may be the first or the
Ser No. 75/118,809
17
only one using LEAD EXTRACTION in the field is not
dispositive. In re Central Sprinkler Co., 49 USPQ2d 1194,
1199 (TTAB 1998); and In re E S Robbins Corp., 30 USPQ2d
1540, 1542-43 (TTAB 1992). Although it appears that
applicant is the only one in the field using the term LEAD
EXTRACTION in connection with medical kits, this is
undoubtedly due to the fact that applicant is the only
entity which manufactures and sells the particular medical
kits approved by the FDA. Thus, we are entirely
unpersuaded by applicant’s claim that there is no
competitive need to use the term LEAD EXTRACTION. The
absence, therefore, of any third-party uses of the term
LEAD EXTRACTION does not mean that prospective competitors
of applicant would not need to use such term to name their
medical goods used in lead extraction procedures.
Competition certainly would be hindered at the point when
others in the field gain FDA approval for their goods to be
used in lead extraction procedures. In re Tekdyne Inc., 33
USPQ2d 1949, 1953 (TTAB 1994).
Ser No. 75/118,809
18
Decision: The refusal to register is affirmed.
E. J. Seeherman
T. J. Quinn
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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