Dicom Grid, Inc.

Trademark Trial and Appeal Board

Jan 5, 2009

No. 78741604 (T.T.A.B. Jan. 5, 2009)

Mailed:
January 5, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dicom Grid, Inc.
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Serial No. 78741602
Serial No. 78741604

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Frank X. Curci of Jennings, Strouss & Salmon, P.L.C., for
Dicom Grid, Inc.

Nakia D. Henry, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
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Before Seeherman, Bucher, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Dicom Grid, Inc., applicant herein, seeks registration
on the Principal Register of the mark “RADIOLOGY IN REAL
TIME,” in standard character format, for “computer
networks, namely computer hardware, software and firmware,
for acquisition, digital storage, transmission or
reproduction of still images, moving images, video, text or
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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other data related to medical imaging of humans or animals;
computer software for organizing, transmitting and viewing
digital images, video and photographs,” in International
Class 9.1 Applicant also seeks registration on the
Principal Register of the same mark for “computer aided
transmission of information, images and videos; electronic
delivery of images, video and photographs via a global
computer network; electronic, electric and digital
transmission of voice, data, images, video signals and
messages; transmission of information, images and video
relating to pharmaceuticals, medicine and hygiene; wireless
electronic transmission of voice signals, data, facsimiles,
images, video and information; online document delivery via
a global computer network,” in International Class 38.2
The trademark examining attorney refused registration
of both applications on the ground that applicant’s mark3 is
merely descriptive of the identified goods and services
under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1),
or in the alternative that applicant’s mark is deceptively

1 Serial No. 78741602, filed on October 27, 2005, under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona
fide intent to use the mark in commerce.
2 Serial No. 78741604, filed on October 27, 2005, under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona
fide intent to use the mark in commerce.
3 Although applicant is appealing two separate applications, we
refer herein to the singular “mark” since applicant is attempting
to register the same mark in both applications.
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misdescriptive. Both applicant and the examining attorney
filed briefs. These two appeals involve common questions
of law and fact, and are appropriate for consolidation.
After careful consideration of all of the arguments and
evidence of record, we affirm the refusals to register on
the ground that applicant’s mark is merely descriptive of
its identified goods and services.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). 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 those 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-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Moreover, it is settled that “[t]he question
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is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002);
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985). If a term
immediately conveys such an idea but the idea is false,
although plausible, then the term is deceptively
misdescriptive and is also unregistrable under §2(e)(1).
See In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB
1987) (CAMEO deceptively misdescriptive of jewelry); In re
Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I.
deceptively misdescriptive of gun cleaning patches, rods,
brushes, solvents and oils).
We consider a composite mark in its entirety. The
composite is registrable only if as a unitary mark it has a
separate, non-descriptive meaning. In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR
& SPICE not merely descriptive of bakery products). Thus,
we consider whether the words “RADIOLOGY IN REALTIME” have
a descriptive meaning as a unitary phrase. Both applicant
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and the examining attorney have submitted relevant
dictionary definitions as follows:
“Radiology”: The branch of medicine that uses
ionizing and nonionizing radiation for the diagnosis
and treatment of disease. . . More recently, radiology
has also embraced the use of radioactive isotopes and
of nonionizing radiation such as ultrasound waves and
nuclear magnetic resonance imaging (MRI).
MedicineNet.com.

“Realtime”: As fast as required. The Computer
Language Company Inc.; The actual time during which
something takes place. The Merriam-Webster Online
Dictionary.

The examining attorney argues that “RADIOLOGY IN
REALTIME” in relation to applicant’s identified goods and
services would be perceived by consumers as indicating a
feature or characteristic thereof, namely, that they may be
used to acquire or transmit medical information and images
instantaneously. To exemplify this point, the examining
attorney references applicant’s own advertising materials,
submitted by applicant, which state that applicant’s
“RADIOLOOGY IN REALTIME” product and service is an
“approach to instant medical imaging access.”
In addition, the examining attorney submitted evidence
of third-party uses of the entire term “radiology in
realtime,” or “realtime radiology” used in a descriptive
manner in connection with the same type of goods and
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services offered by applicant. A sampling of the examining
attorney’s evidence includes the following:
“Real-time radiology – new concepts for teleradiology:
By Kinosad Y, Takada A, Hosoba M.; We propose two new
concepts for teleradiology: ‘real-time radiology’ and
‘seamless operation of a workstation to view images from
both local and remote hospitals.’ In this paper, we
describe an experimental real-time radiology system with a
new multimedia diagnostic workstation, which has been
established under teleradiology concepts and can be used
for cooperative diagnosis by interchanging radiographic
images bilaterally in real-time during an audio-visual
discussion. The clinical evaluation of real-time radiology
using a newly developed diagnostic workstation demonstrated
the system to be practical and routinely available to
enhance the radiological diagnostic quality of
teleradiology.” Abstract on www.pubmed.gov, July 2001.

PACS extends real-time radiology to rural clinics:
. . . Now, with PACS implemented at KRMC and teleradiology
service extended beyond the local Kalispell Valley, images
are available in less than an hour, initial voice clip
report summaries in less than two hours, and completed
reports in six to 10 hours.” eeProductCenter.com, June 9,
2005.

“It automatically monitors, analyzes and interprets
clinical data stored in ancillary information systems in a
variety of departments, such as pharmacy and radiology, in
real time.” Managed Care Weekly Digest, October 31, 2005.

Applicant nevertheless argues that its mark is
suggestive, rather than merely descriptive, asserting that
applicant is neither a radiologist nor does it provide only
instant images, instead merely providing a forum (via goods
in International Class 9 and services in International
Class 38) for radiologists and others to store their images
for long periods of time if they so desire. See In re MBNA
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America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003). However, applicant’s argument is belied
by the statements in its advertising materials as well as
in its request for reconsideration that applicant’s
services are “instant” and “consist of, in large part,
digital sharing of medical imaging study results.”
Accordingly, consumers would require no imagination to
arrive at the understanding that applicant’s proposed mark
refers to a feature of its network product or its
transmission services.
The primary purposes for refusing registration of a
merely descriptive mark are “(1) to prevent the owner of a
mark from inhibiting competition in the sale of particular
goods; and (2) to maintain freedom of the public to use the
language involved, thus avoiding the possibility of
harassing infringement suits by the registrant against
others who use the mark when advertising or describing
their own products.” In re Abcor, 200 USPQ at 217. If
applicant were allowed to register “RADIOLOGY IN REALTIME,”
it would be difficult for competitors to describe this
apparently popular feature of their own products or
services, namely that the products enable consumers to
acquire, and the services enable consumers to transmit,
medical information and images instantaneously.
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In sum, it is clear that a consumer would understand
“RADIOLOGY IN REALTIME” used in connection with applicant's
goods and services as conveying information about them.
See In re Tower Tech Inc., 64 USPQ2d at 1316-17; see also
In re Conductive Services, Inc., 220 USPQ 84, 86 (TTAB
1983). Therefore we find that the mark is merely
descriptive of the identified goods in International Class
9 and the services in International Class 38. Accordingly,
we affirm the refusals to register the mark on that ground.4
Decision: The refusals to register under Trademark Act
Section 2(e)(1) are affirmed.

4 Since we affirm the refusals to register on the ground that the
mark is merely descriptive, we need not consider the alternative
ground that the mark is deceptively misdescriptive.