Essenlix Corporation

Trademark Trial and Appeal Board

Jun 28, 2019

87467392 (T.T.A.B. Jun. 28, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 28, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Essenlix Corporation
_____

Serial No. 87467392
_____

Julian D. Gonzalez,
for Essenlix Corporation.
Natalie L. Kenealy, Trademark Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.
_____

Before Taylor, Kuczma and Larkin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Essenlix Corporation (“Applicant”) seeks registration on the Principal Register of
the term ISELF-TEST (in standard characters1) as a mark for the following goods
and services, as amended:
Assays for research purposes; Biochemical reagents
commonly known as probes, for detecting and analyzing

1 We recognize that Applicant has applied for a standard character mark. As such, the mark
may be presented in any style, regardless of font, size, or color. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012). We note, however, that the drawing
page displays the applied-for mark as iSELF-TEST, but we will display the mark in this
opinion as ISELF-TEST. See In re Calphalon Corp., 122 USPQ2d 1153, 1154 n.1 (TTAB
2017).
Serial No. 87467392
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molecules in protein or nucleotide arrays; Biochemical
reagents used for non-medical purposes; Biochemicals for
in vitro and in vivo scientific use in International Class 1;
Medical apparatus and instrument for diagnostic use,
namely, apparatus for medical diagnostic testing in the
fields of cancer or other tissue-based diagnostic testing,
cytology and cell-based testing; Medical devices for
obtaining body fluid samples; Medical diagnostic
instruments for the analysis of body fluids; Medical
diagnostic apparatus for testing cells and biomolecules in
International Class 10; and
Medical assistance; Medical consultations; Medical
counseling; Medical information; Medical services in
International Class 44.2
The Trademark Examining Attorney refused registration of Applicant’s applied-
for mark for the identified goods and services in Classes 1, 10 and 44 on the ground
that it is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §
1051(e)(1).3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. For the reasons discussed, we affirm the
refusal to register.

2 Application Serial No. 87467392 was filed on May 29, 2017, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

3 The Examining Attorney also required Applicant to provide information and documentation
regarding the nature of Applicant’s goods and services and the wording appearing in the
mark. Although the information requirement was made final, Applicant satisfied this
requirement in its request for reconsideration, and it was so noted by the Examining Attorney
in her September 19, 2018 denial of Applicant’s request for reconsideration.
Serial No. 87467392
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I. Applicable Law
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used.4 See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations
omitted); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538,
543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive
of the qualities, ingredients or characteristics of the goods or services related to the
mark.”)). The determination of whether a mark is merely descriptive must be made
in relation to the goods or services for which registration is sought. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order to find a
mark merely descriptive, that the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient, quality, characteristic, function,
feature, purpose or use of the goods or services. Id.; In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987). It is also not necessary to find each and every
good and service listed in each class of the recited goods and services descriptive. If a
proposed mark is held descriptive for any of the goods or services identified in a class
of an involved application, registration is properly refused as to the entire class. See

4 We thus find unavailing Applicant’s contention at page 4 of its brief (9 TTABVUE 5) that
“merely descriptive marks identify the goods themselves or call to the consumer’s mind the
most recognizable quality or characteristic of the product.”
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In re Sterotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (quoting
In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA 1975) (“Our
predecessor court … has stated that ‘registration should be refused if the mark is
descriptive of any of the goods [or services] for which registration is sought’”); In re
Quick-Print Copy Shop, Inc., 205 USPQ 505, 507.
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a non-descriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely
descriptive components is registrable only if the combination of terms creates a
unique, suggestive, or otherwise non-descriptive meaning, see, e.g., In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1515-16 (TTAB 2016), or if the composite has
a bizarre or incongruous meaning as applied to the goods or services. See In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217
USPQ 363 (TTAB 1983). If, however, when the mark is considered as a whole, the
merely descriptive components retain their merely descriptive significance in relation
to the goods and services, then the resulting combination is also merely descriptive.
See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1371.
Lastly, a mark comprising more than one element must be considered as a whole
and should not be dissected; however, we may consider the significance of each
element separately in the course of evaluating the mark as a whole. See DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1756-
Serial No. 87467392
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57 (Fed. Cir. 2012) (reversing the Board’s denial of cancellation for for
medical devices as not merely descriptive, but noting that “[t]he Board to be sure, can
ascertain the meaning and weight of each of the components that makes up the
mark”).
II. Arguments and Evidence
Applicant maintains that its applied-for ISELF-TEST mark is at most suggestive
and therefore registrable. Applicant particularly argues that its mark is not merely
descriptive because it has multiple connotations, and because “Applicant’s
prospective customers must utilize imagination, thought and perception to tie the
term ISELF-TEST to its [Applicant’s] products.”5 In support of its position, Applicant
attached to its brief multiple definitions of the letter “I” from the MERRIAM-
WEBSTER on-line dictionary and Acronym Finder, of which we presume Applicant
requests, and we take, judicial notice.6 For example, the letter “I” is defined by
MERRIAM-WEBSTER in part as “the one who is speaking or writing,”7 and the
Acronym Finder defines “I,” in part, as “immediate.”8

5 9 TTABVUE 6. The TTABVUE and Trademark Status and Document Retrieval (“TSDR”)
citations refer to the docket and electronic file database for the involved application. All
citations to the TSDR database are to the downloadable .pdf version of the documents.
Complete Urls can be found at the TSDR cite.
6 Id. at 15-37. The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests.
LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff'd, 823 F.3d 594, 118 USPQ2d 1632 (Fed.
Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
7 Id. at 18.
8 Id. at 35.
Serial No. 87467392
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The Examining Attorney conversely maintains that the term ISELF-TEST
immediately describes features or characteristics of Applicant’s identified goods and
services, namely that they will be “in the nature of a test that one can use themselves
that utilizes the Internet.”9 In support of her position, the Examining Attorney
introduced the following to show that the letter “i” or “I” used as a prefix means
“Internet”:10
1. Definitions of “i” or “I”:
Acronym Finder.com indicates “I” stands for “Internet”;11
Wikipedia.org indicates consumer recognition of “I” as an
“Internet-related prefix,” that has been widely used by
companies to stand for “Internet”;12
Wikipedia defines “I” as “[a]lluding to the Internet.”13
2. Third-party registrations for marks with the letter “I” (combined with
descriptive matter) that are used on or in connection with Internet-based goods
and/or services, where the mark was registered on the Supplemental Register.14
Third-party registrations featuring goods and/or services the same or similar to the
applicant’s goods and/or services may be probative evidence on the issue of
descriptiveness where the relevant word or term is disclaimed, registered under

9 We note that during prosecution, the word Internet was capitalized in some instances and
not in others. For consistency, we will capitalize the word throughout the decision, except
when used in a quote.
10 10 TTABVUE 4.
11 August 4, 2017 Office Action at TSDR 6.
12 September 19, 2018 Denial of Request for Reconsideration at TSDR 14-15.
13 Id. at TSDR 19.
14 Id. at TSDR 26-47.
Serial No. 87467392
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Trademark Act Section 2(f), or registered on the Supplemental Register. See In re
Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (citing
Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-28, 22
USPQ2d 1190, 1196 (Fed. Cir. 1992)). The registrations include, by way of example:
Registration No. 4303012 for the mark IHEALTH for, in
part, “Providing an interactive website featuring
information and links relating to healthy living and weight
loss; … Providing wellness services, namely, personal
assessments, personalized routines, maintenance
schedules, and counseling; Providing wellness services,
namely, weight loss programs offered at a wellness center;
Provision of health care and medical services by health
care professionals via the Internet or telecommunication
networks; Provision of medical services by health care
professionals via the Internet or telecommunication
networks; … Web-based cardiovascular analysis services
for medical diagnostic and treatment purposes; … Web-
based health assessment services, namely, a series of
health-related questions for response from the user that
result in a report that provides health-related information
in the form of recommended educational resources and
treatment information; … Wellness and health-related
consulting services”;15
Registration No. 4303013 for the mark IHEALTH for “In-
vitro ovulation prediction test kit for home use; Ovulation
test kits; Pregnancy test kits for home use; Test strips for
measuring blood glucose levels”;16
Registration No. 4476313 for the mark IVET for “Providing
temporary use of on-line non-downloadable computer
application software for mobile phones, namely, software
for transmitting and sharing information about veterinary
services, veterinary office locations, animal health and pet
nutrition; providing temporary use of on-line non-
downloadable computer software for creating searchable
databases of information and data; providing temporary

15 Id. at TSDR 31-33.
16 Id. at TSDR 34-35.
Serial No. 87467392
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use of on-line non-downloadable computer software for
providing an on-line database of information in the field of
veterinary services, veterinary office locations, animal
health and pet nutrition”;17
Registration No. 4753586 for the mark ISYNC for
“Computer software for managing chronic and acute
disease in and out-of-hospital settings through the
collaboration of health care providers and consumers to
achieve an approach to cultivate disease solutions;
downloadable cloud accessed computer software for
managing chronic and acute disease in and out-of-hospital
settings through the collaboration of health care providers
and consumers to achieve an approach to cultivate disease
solutions”; and “Cloud computing services featuring
software for use in managing chronic disease”;18 and
Registration No. 5494094 for the mark IHEALTH for
“Telemedicine services, namely, the delivery of healthcare
services by doctors, medical specialists, nurses, and other
healthcare professionals via telemedicine for urgent and
non-urgent illnesses and injuries, health maintenance,
home healthcare services, mobile healthcare services,
preventative healthcare and follow-up services; Providing
healthcare information.”19
To show that the wording SELF-TEST is descriptive when used in connection with
Applicant’s identified goods and services, the Examining Attorney also made of record
the following:
1. Relevant definitions of “SELF-TEST”
Dictionary.com defines “self-test” as:20
noun 1. “a test that can be administered to oneself”;

17 Id. at TSDR 36-38.
18 Id. at TSDR 39-41.
19 Id. at TSDR 45-47.
20 August 4, 2017 Office Action at TSDR 7.
Serial No. 87467392
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verb 2. [verb] “to administer a test to (oneself).”
2. Various Internet articles and printouts to show “that other entities
commonly use the term SELF TEST to describe goods and services that involve
methods for users to determine the presence of a disease or ailment themselves and
that it is increasingly common for ‘self tests’ to utilize the Internet via smart
devices.”21 The evidence includes, for example:22
An article from Genomeweb (www.genomeweb.com)
entitled “NIH Commits $2.6 to Fund Development of Self-
Testing HIV Assays” states that “[t]he National Institutes
of Health has earmarked $2.6 million in fiscal 2018 to fund
a series of projects aimed at developing HIV diagnostic
assays for self testing.”23
Printouts of product literature from Calpro
(https://calpro.no/wp) discussing the CalproSmart Self Test
Kit for determining Calprotectin levels in human stool
samples which integrates with a smartphone application,

21 9 TTABVUE 5.
22 We find references to both the singular and plural forms of “self-test”/“self-tests,” or with
or without the hyphen, equally probative. “It is well established that trademarks consisting
of singular and plural form of the same term are essentially the same mark.” Weider Publ’ns,
LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (citing Wilson v.
Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding no material difference
between the singular and plural forms of ZOMBIE such that the marks were considered the
same mark)). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470
(TTAB 2016) (“the hyphen in Applicant’s mark MINI-MELTS does not distinguish it from
Opposer’s mark [MINI MELTS].”).
We have given the article entitled “Use of diagnostic self-test on body materials among
Internet users in the Netherlands: prevalence and correlates of use” no probative value
because it discusses the use of self-tests outside of the United States (August 4, 2017 Office
Action at TSDR 8-17). We also have not relied on the article entitled “Astraeus Technologies
wins MIT $100K Acclerate with New Lung Cancer Test” (Id. at 41-44) because it is unclear
whether the new test is self-administered. The articles/printouts from the websites of
Women’s Health, Penn State News, Clear Choice, The Baton Rouge Clinic, and Seabrook
have some value in that they discuss the trends towards self-diagnosis and self-testing
generally, or are comprised of self-tests in question only format. (February 27, 2018 Final
Office Action at TSDR 32-40, 45-48, 55-64).
23 February 27, 2018 Final Office Action at TSDR 8.
Serial No. 87467392
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and includes reagents and components supplied with the
kit. The literature notes that “the test results are
automatically sent to the CalproSmart portal, from where
they could be viewed by a treating physician.”24
Printouts from Sentara Laboratory Services website
(https://www.sentara.com) explain that Sentara provides a
“self test” through its laboratory services that enables
patients in Hampton Roads to order a “variety of tests
without a doctor’s order, allowing patients to monitor their
health between visits to the doctor.”25
An article from the website of Accelerating Science Award
Program [ASAP] (http://asap.plos.org) entitled “HIV Self-
Test Empowers Patients” discusses an HIV SELF-TEST
for patients in the nature of an “integrated approach
[which] included HIV education, an online test to
determine HIV risk level…” and a “tailored smartphone
application.”26
A printout from the U.S. Army website (www.army.mil)
features a “self-test kit” that “warns soldiers of biological
exposure in the field,” and “transmits the results over Nett
Warrior, a field integrated dismounted situational
awareness system that displays tactical data on a
smartphone.”27
Printouts from Nature.com Scientific Reports
(www.nature.com) discuss “a new field of mass
manufacturable, ultra-fast smartphone-enabled consumer
diagnostics” that would support a “HIV self test for use in
the home [that would give] results in under 5 minutes.”28
Printouts from True Diagnostics (http://truediag.com)
show that it provides “self-testing” test systems that are

24 Id. at TSDR 16, 18 and 26.
25 Id. at TSDR 41.
26 Id. at 54.
27 Id. at TSDR 66.
28 Id. at TSDR 79, 75.
Serial No. 87467392
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optionally Wi-Fi® enabled, and that the TrueDX assays are
stable at room temperature.29
An article from the U.S. National Library of Medicine at
the National Institutes of Health (www.ncbi.nlm.nih.gov)
entitled “Perceptions of Self-Testing for Chlamydia:
Understanding and Predicting Self-Test Use” states that
“[s]elf-test technology allows people to test themselves for
illness without intervention from health care
professionals” and “self-test use could increase diagnosis
amongst people who would not otherwise come forward for
testing.”30
An article from DarkDaily (www.stoptheclot.org) entitled
“Cheap, Fast, Accurate Home Colon Cancer Test Joins
Growing List of Diagnostic Tests Shifting from Medical
Laboratories to Homes” states, “[s]teady progress is
happening in consumer self-test kits as new diagnostic
technology supports at-home kits that produce results with
accuracy approaching 90%” for colon cancer detection. The
article also notes that “[i]n the U.S., the FDA approved the
country’s first rapid at-home saliva test for HIV in July. To
address the concerns about the impact of potentially
devastating positive test results, the company agreed to
provide a 24-hour support hotline.”31
Printouts from the website of Atomo Diagnostics
(http://atomodiagnostice.com) show that Atomo is
“spearheading the development of the next generation of
HIV self-test products.”32
Printouts from Metro Heath of the University of Michigan
Health (https://metrohealth.net) discuss a self-test for
breath alcohol concentration.33
A second article from the DarkDaily website
(https://www.darkdaily.com) entitled “Consumers
Increasingly Purchase Medical Laboratory Self-Test Kits

29 February 27, 2018 Final Office Action at TSDR 10-12.
30 August 4, 2017 Office Action at TSDR 19.
31 Id. at TSDR 36.
32 February 27, 2018 Final Office Action at TSDR 15.
33 Id. at TSDR 43.
Serial No. 87467392
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for Blood Glucose, Cholesterol, and Colon Cancer
Screening, according to Consumer Reports” states that
“consumers increasingly purchase medical laboratory self-
test kits for blood glucose, cholesterol, and colon cancer
screening” and shows that telemedicine is being used in
conjunction with in-home testing and video counseling to
help manage HIV-related issues.34
III. Analysis/Conclusion
In view of the evidence submitted by the Examining Attorney, we find that the
individual components of ISELF-TEST have descriptive significance as used in
connection with the identified goods and services. With regard to the letter “I,” we
find that the “I-,” a prefix for “Internet,” immediately informs consumers that
Applicant’s goods and services will utilize an Internet connection. Notably, although
there is no specific reference to the Internet in Applicant’s recitation of goods and
services, and Applicant indicated that it is “unlikely” to provide the goods and services
online, Applicant admitted that: “Applicant’s goods will utilize internet connection,
but expected to utlize [sic] internet to transmit test results to the Cloud and connect
nationally and internationally.”35 Four of the five referenced third-party I-formative
registrations made of record by the Examining Attorney, e.g., Registration Nos.
4303012, 4303013, 4753586 and 5494094, show that goods and services of the types
identified in Applicant’s application are offered for sale or performed via the Internet.
Moreover, our conclusion is consistent with Board precedent, in which we have
recognized the prefix “i” or “I” is understood by purchasers to signify “Internet.” See

34 September 19, 2017 Denial of Request for Reconsideration at TSDR 48.
35 August 27, 2019 Request for Reconsideration at TSDR 5.
Serial No. 87467392
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In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2001) (ITOOL found merely descriptive
of computer software for use in creating web pages, and custom design of websites for
others).
The evidence of record also convinces us that the wording SELF-TEST merely
describes a test that is administered by oneself. Indeed, Applicant’s identification for
the Class 10 goods includes “apparatus for medical … diagnostic testing” and
Applicant admits that “Applicant’s goods are expected to enable users to test
themselves.”36 That a test may also be administered by someone else does not alter
our finding.
We further find that the record establishes that the designation ISELF-TEST, as
a whole, is merely descriptive of the identified goods and services. When the wording
ISELF-TEST is viewed in connection with the assays and reagents (Class 1), the
apparatus for medical tissue-based diagnostic testing (Class 10), and the medical
consultation and counseling services (Class 44), it immediately conveys, without any
imagination or thought, a feature of those goods and services, namely, that the
identified assays and reagents and apparatus for medical diagnostic testing are used
together in a test that one can conduct on oneself, and that the test results, and
consultation and counseling services concerning the results, are provided via an
Internet connection. The two components of the designation ISELF-TEST retain their
individual descriptive meanings and together convey a meaning that is descriptive.
That is, the combination of terms is not incongruous, and no additional information

36 Id.
Serial No. 87467392
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is needed for the merely descriptive significance thereof to be readily apparent to
prospective consumers of the goods and services. See, e.g., In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978) (Rich, J., concurring) (GASBADGE described
as a shortening of the name “gas monitoring badge”); Cummins Engine Co., Inc. v.
Continental Motors Corp., 359 F.2d 892, 149 USPQ 559 (CCPA 1966)
(TURBODIESEL held generically descriptive of engines having exhaust driven
turbine super-chargers).
Applicant’s arguments to the contrary are unavailing. While acknowledging that
“I” may refer to the Internet, and admitting that its goods will utilize an Internet
connection, Applicant asserts that “I” has other meanings, including as an acronym
for “immediate” and as “the person who is speaking or writing.” As such, Applicant
urges, a consumer viewing the mark as a whole may instead think “about the test
being performed by himself or herself” or how the test may be performed or the
results obtained. If a term has a primary significance that is descriptive in relation
to at least one of the recited goods and services, and does not create any double
entendre or incongruity, then the term is merely descriptive. See In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979) (“[S]ince the question of descriptiveness must
be determined in relation to the goods or services for which registration is sought, the
fact that a term may have meanings other than the one the Board is concerned with
is not controlling on the question.”). Even if consumers perceive “I” as meaning
performed by himself or herself or as immediate, it would still merely describe an
attribute of Applicant’s goods and services.
Serial No. 87467392
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We also are unconvinced that ISELF-TEST is too vague to be merely descriptive
of Applicant’s goods and services. Unlike in In re Hutchinson Tech., 852 F.2d 552, 7
USPQ2d 1490 (Fed. Cir. 1988), where the Court found the term TECHNOLOGY, in
the context of an appeal of an affirmance of a refusal to register a mark that was
found to be a surname, broad enough to encompass many categories of goods, as
discussed, each of the component terms at issue here has a particular meaning with
respect to the identified goods and services, and that meaning is retained when the
two terms are combined.
Lastly, Applicant relies on the principle that when there is doubt on the issue of
whether a mark is merely descriptive, that doubt should be resolved in favor of the
applicant.37 While we agree with the general principle, in the present case, we have
no doubt.
For the reasons discussed, we conclude that the term ISELF-TEST, as a whole, is
merely descriptive of the identified good and services.
Decision: The refusal to register ISELF-TEST as merely descriptive under
Section 2(e)(1) is affirmed.

37 See In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1144 (Fed. Cir. 1987) (on issue of mere descriptiveness, reasonable doubts are resolved in
favor of the applicant).