Idiag

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75592564 (T.T.A.B. Jun. 19, 2001)

6/19/01 Paper No. 16
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Idiag
________
Serial No. 75/592,564
_______
Peter C. Michalos and John Zaccaria of Notaro & Michalos P.C.
for Idiag.
David T. Taylor, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______
Before Hohein, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Idiag, a Swiss joint stock company, seeks registration of
the term
computer
operating
and for c
field of
rehabilit
scanning
spine and
and for “
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTABSPINALMOUSE for “data processors and computers;
operating programs; computer programs and software for
and measuring the input from spinal measuring devices
ollecting, processing and presentation of data in the
orthopedic and sports medicine, neurology, physical
ation and therapy; [and] computerized noninvasive
devices used to measure the shape and mobility of the
other parts of the body,” in International Class 9,
medical apparatus and instruments, namely, physical
Serial No. 75/592,564
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exercise apparatus for medical purposes,” in International Class
10.1
Registration has been finally refused under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that,
when used in connection with applicant’ goods, the term
SPINALMOUSE is merely descriptive of them. Applicant has
appealed. Briefs have been filed, but an oral hearing was not
requested. We reverse the refusal to register.
There is no dispute that applicant’s goods include, but are
not limited to, an electronic-measuring device and software for
assessing back shape, mobility and flexibility. The sole issue
before us, then, is whether the combined term SPINALMOUSE is
merely descriptive of applicant’s goods listed above in
International Class 9.2
Based upon the record as a whole, the Trademark Examining
Attorney argues that clearly the word “spinal” is descriptive of
applicant goods. Considering the identification of goods, a
1 Application serial number 75/592,564, filed on November 20, 1998.
This application is based upon an allegation of a bona fide intention
to use the mark in commerce.
2 Applicant’s brochure and manual seem to give meaning to the
collection of items enumerated in International Class 9. Further, we
note that the Trademark Examining Attorney has submitted extensive
evidence directed toward the “spinal measuring device” in
International Class 9. Hence, we consider that the Section 2(e)(1)
refusal was directed toward the goods in this class. It is not clear
to us exactly what is included in the “physical exercise apparatus” of
International Class 10, but to the extent this identifies something
different from the spinal measuring device, we do not find anything in
the record directed to a Section 2(e)(1) refusal of the goods in that
class.
Serial No. 75/592,564
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dictionary definition,3 the contents of applicant’s responses to
the Office actions, and the detailed text of applicant’s manual
and brochure accompanying applicant’s response to the first
Office action, we agree that the word “spinal,” considered
alone, is descriptive of the location of the body on which
applicant’s tracking device is used and the bodily structure
that provides it with a purpose.
Furthermore, the Trademark Examining Attorney argues that
the word “mouse” is also descriptive of the hand-held tracking
device used to measure the shape and mobility of the spine.
However, applicant argues that this small hand-held device,
whose operation is admittedly dependent upon a computer, is not
a computer mouse.4 It does not perform any of the defined moving
and pointing functions of a computer mouse. Applicant notes
3 Spinal Of, relating to, or situated near the spine or spinal
cord; vertebral; spinal injury. [The American Heritage Dictionary of
the English Language, Electronic Version (Third Edition 1992)].
4 Applicant’s counsel states that “ … it is not stated anywhere in
applicant’s manual or brochure that applicant’s goods are a ‘mouse.’”
Actually, several places on page 7 of the manual, for example, the
hand-held device is indeed referred to as a “mouse.” Additionally,
throughout the text in the manual, applicant’s trademark itself is
misused as the name of the product and on page 23 is incorrectly
pluralized (e.g., “ … the SpinalMouse …,” “ … two SpinalMice in the
same room… ”). However, we hasten to add that this is still an
intent-to-use application, and that these materials were requested by
the Trademark Examining Attorney under Trademark Rule 2.61(b). Upon
submission, applicant’s counsel expressly qualified these written
materials as being “in draft” and “not yet … distributed to the
public.” Presumably applicant’s U.S. trademark counsel will ensure
that when translated from the German language original into the
English language editions, the literature as distributed will avoid
such imprudent misuses of the trademark and ensure the adoption and
consistent usage of a correct generic designation for this device.
Serial No. 75/592,564
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that it is not structured like a computer mouse and its
operation is distinctly different. Applicant’s tracking device
is guided in one direction only, down the patient’s back over
the skin along the spinal column.
The Trademark Examining Attorney, having concluded that
each word individually (“Spinal” and “Mouse”) is descriptive,
then finds that the composite term (SPINALMOUSE) is merely
descriptive. By contrast, applicant points out that arguably
SPINALMOUSE is an arbitrary, coined term, or at worst, that the
combined term is suggestive of the goods.
During the prosecution of this application, the focus of
much of the evidence placed into the record by the Trademark
Examining Attorney was on the definition of a computer “mouse.”5
5 Mouse A common pointing device, popularized by its inclusion
as standard equipment with the Apple MacIntosh. With the
rise in popularity of graphical user interfaces in MS-DOS,
UNIX, and OS-2, use of mice is growing throughout the
personal computer and workstation worlds. The basic
features of a mouse are a casing with a flat bottom,
designed to be gripped by one hand; one or more buttons on
the top; a multidirectional detection device (usually a
ball) on the bottom; and a cable connecting the mouse to
the computer. By moving the mouse on a surface (such as a
desk), the user typically controls an on-screen cursor. A
mouse is a relative pointing device because there are no
defined limits to the mouse’s movement and because its
placement on a surface does not map directly to a specific
location. To select items or choose commands on the
screen, the user presses one of the mouse’s buttons,
producing a “mouse click.”
[Computer Dictionary, Microsoft Press (Second Edition, 1994) p. 262].
Mouse An input device, equipped with one or more control
buttons, that is housed in a palm-sized case and designed
so that you can roll it about on the table, next to your
keyboard. As the mouse moves, its circuits relay signals
Serial No. 75/592,564
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Accordingly, we are faced with the question of exactly what
minimal features are necessary for a computer mouse to still
qualify as a mouse?
There are certainly some superficial similarities between
these two devices. Both devices have a “palm sized case” that
is “gripped in one hand.” This tracking device communicates
with its base station via a radio link, not a cable. However,
while most computer mice still have a “cable” attaching them to
the computer terminal (see first definition supra), a state-of-
the-art cordless mouse is in every way still a mouse. Like a
computer mouse, this device has several “buttons” on top (viz.
on applicant’s device, merely “Stop” and “Start”) that would be
pressed with one’s forefinger.
As to the dissimilarities, applicant correctly notes the
significant difference in function between a computer mouse and
its hand-held device. All the definitions cited in this record
that correspondingly move a pointer on screen. A mouse is
distinguished by the internal mechanism it uses to generate
its signal and by its means of connection with the
computer.
[Webster’s New World Dictionary of Computer Terms (Seventh Edition
1999) p. 346].
Mouse An input device designed to assist in the use of a
computer system. For example, in a graphical user
interface environment like Macintosh or Windows, an icon is
displayed on the screen. The user selects the icon by
moving the cursor to point to the icon with a mouse,
automatically activating a set of commands without the user
having to enter complex instructions…
[Prentice Hall’s Illustrated Dictionary of Computing (Third Edition
1998) p.442].
Serial No. 75/592,564
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emphasize that a computer mouse is a pointing device designed to
assist the computer user in interacting with the computer. By
contrast, applicant’s hand-held device is not a pointing device
and is not designed to make a computer easier to use. While the
sole mission of a computer mouse is to assist one in operating a
computer, applicant has designed a high-tech, medical tracking
device that relies upon computerized technology to accomplish
its mission. As to form and operation, because a mouse is a
relative pointing device, it is necessarily multi-directional.
In its design and operation, applicant’s device is strictly uni-
directional. The computer mouse has a flat bottom. The bottom
of applicant’s tracking device is arcuate and offset at various
points with tracking wheels. The tracking device cannot rest on
a flat surface but rather, when not in use, sits in a cradle in
the base station. While a computer mouse is moved on a flat
surface, applicant’s device is designed to move down the highly
irregular surface of a patient’s back along the spine.6
6 This is a rough outline view of the hand-held device at the
center of this debate.
Serial No. 75/592,564
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On balance, we find this device falls outside the scope of
a computer mouse.7 Certainly, this device could never replicate
the critical functionalities of a computer mouse. This device
could not be used with a computer that does not have the base
station/receiver and applicant’s software.8 Applicant’s entire
set of goods listed in International Class 9 are useful only to
trained medical professionals in the fields of chiropractic
medicine, orthopedics, physical medicine, physiotherapy,
rehabilitation, neurology and sports medicine.
Hence, while the word “spinal” alone is merely descriptive
of these goods, we find that the word “mouse” is not merely
descriptive of this tracking device. Beyond the fact that this
device is not technically a mouse, we agree with applicant that
the combined expression, SPINALMOUSE, is somewhat incongruous,
and that no purpose or characteristic is readily described by
this combined term, either generally or with particularity. See
In re Shutts, 217 USPQ 363 (TTAB 1983) [SNO-RAKE not merely
descriptive for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid
7 The conclusion that “applicant’s device is an atypical mouse”
appears quite early in the dissenting opinion, infra. Of course,
whether applicant’s hand-held device is enough like a computer mouse
to be deemed a “mouse” is really what the debate herein is all about.
The dissenting judge has handed us a non-sequitur hardly capable of
removing the doubt of the majority members.
8 It would be misleading to equate the sophisticated computer-
applications software supporting applicant’s measuring device with
“the associated driver software” (see dissent, pp. 20 – 21) routinely
required for any computer device, including all pointing devices.
Serial No. 75/592,564
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uninterrupted construction without prongs.”]; In re Shop Vac
Corp., 219 USPQ 470 (TTAB 1983) [WET/DRY BROOM is not merely
descriptive of a vacuum cleaner or an electric cleaning
appliance of similar appearance]; Firestone Tire & Rubber Co. v.
Goodyear Tire & Rubber Co., 186 USPQ 557 (TTAB 1975) [BIASTEEL
is suggestive of the character of tires]; and In re Werner
Electric Brake & Clutch Co., 154 USPQ 328 (TTAB 1967) [ELECTRO-
MODULE not descriptive of goods even though each term,
considered separately, was found to describe applicant’s goods].
Finally, to the extent that there may be any doubt as to
whether applicant’s mark is merely descriptive or suggestive of
its goods, we resolve such doubt, in accordance with the Board’s
practice, in favor of the publication of applicant’s mark for
opposition. See In re Morton-Norwich Products, Inc., 209 USPQ
791 (TTAB 1981) and In re Gourmet Bakers, Inc., 173 USPQ 565
(TTAB 1972).
Decision: The refusal to register is reversed.
Serial No. 75/592,564
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Hohein, Administrative Trademark Judge, dissenting:
I would affirm the refusal to register. It is well
settled that a term is considered to be merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of the
Trademark Act, if it forthwith conveys information concerning
any significant 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). It is not necessary that a term describe all of
the properties or functions of the goods or services in order
for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a significant
attribute or idea about them. Moreover, 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. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365,
Serial No. 75/592,564
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366 (TTAB 1985). In addition, registration must be refused if
the mark is merely descriptive of any of the goods or services
for which registration is sought. See, e.g., In re Quik-Print
Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980) and
In re American Society of Clinical Pathologists, Inc., 442 F.2d
1404, 169 USPQ 800, 801 (CCPA 1971).
Applying the above principles to the present case,
there is simply no question that the evidence and admissions of
record establish that the word "spinal" is merely descriptive
of, in particular, applicant's "computer programs and software
for operating and measuring the input from spinal measuring
devices" and its "computerized noninvasive scanning devices used
to measure the shape and mobility of the spine." While
applicant, in light of the specious arguments to the contrary
presented in its reply brief,1 seems to lack the backbone to
admit it, the majority properly concedes that the Examining
Attorney is correct that the term "spinal" merely describes
applicant's goods, stating that it "agree[s] that the word
'spinal,' considered alone, is descriptive of the location of
the body on which applicant's tracking device is used and the
bodily structure that provides it with a purpose."
1 Such arguments also effectively undermine whatever credibility might
otherwise be given to applicant's arguments in its main brief.
Serial No. 75/592,564
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In this case, however, I also agree with the Examining
Attorney, and respectfully disagree with the majority, that
applicant's computerized noninvasive spinal scanning device,
along with the computer programs and software for operating and
measuring the input from such a device, in essence constitute a
highly specialized type of computer mouse. Moreover, when the
words "spinal" and "mouse" are combined to form the designation
"SPINALMOUSE," the result is a term which merely describes a
significant purpose, use or function of such goods within the
meaning of the statute.
As the majority notes, the record contains a number of
definitions of a what generally constitutes a computer "mouse,"
and judicial notice may usefully be taken of several additional
definitions.2 Unlike the majority, however, which views the
2 For example, The Dictionary of Computer Words (rev. ed. 1995) at 180-
81 defines "mouse Plural mice or mouses" in relevant part as (italics
in original):
A hand-held, button-activated input device that when
rolled along a flat surface controls the movement of a
cursor or pointer on a display screen. A mouse largely
frees the user from the keyboard. With menu-driven
applications the user simply points to a command choice and
clicks a button on the mouse. With draw or paint programs
the mouse can be used like a pen or brush. Mice are
distinguished by the way they work internally and by how
they connection to the computer.
A mechanical mouse has a rubber-coated ball on its
underside that rotates as you move the mouse. Optical
sensors detect the motion and move the screen pointer
correspondingly. You can roll the mouse over almost any
surface, but using a mousepad gives the best results.
Serial No. 75/592,564
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inquiry in this case as being whether applicant's computerized
noninvasive spinal scanning device possesses the minimum
Similarly, the Random House Personal Computer Dictionary (2d ed. 1996)
at 324 sets forth "mouse" as meaning, in pertinent part:
A device that controls the movement of the cursor or
pointer on a display screen. A mouse is a small object you
can roll along a hard, flat surface .... Its name is
derived from its shape, which looks a bit like a mouse, its
connecting wire that one can imagine to be the mouse's
tail, and the fact that one must make it scurry along a
surface. As you move the mouse, the pointer on the display
screen moves in the same direction. Mice contain at least
one button and sometimes as many as three, which have
different functions depending on what program is running.
Invented ... in 1963, and pioneered ... in the 1970s,
the mouse is one of the great breakthroughs in computer
ergonomics because it frees the user to a large extent from
using the keyboard. In particular, the mouse is important
for graphical user interfaces because you can simply point
to options and objects and click a mouse button. .... The
mouse is also useful for graphics programs that allow you
to draw pictures by using the mouse like a pen, pencil, or
paintbrush.
Such dictionary at 235 also points out that, of the three ways mice
connect to a computer, "[c]ordless mice aren't physically connected at
all. Instead they rely on infrared or radio waves to communicate with
the computer." In the IBM Dictionary of Computing (10th ed. 1994) at
441, "mouse" is listed as connoting:
(1) In computer graphics, a hand-held locator operated
by moving it on a flat surface. A mouse generally contains
a control ball or a pair of wheels. .... (2) In SAA
usage, a device that a user moves on a flat surface to
position a pointer on the screen. It allows a user to
select a choice or function to be performed or to perform
operations on the screen ....
In a similar vein, The Dictionary of Computing & Digital Media (1999)
at 202 lists "mouse" as signifying:
An input device for a computer. A mouse rolls on a
smooth surface and determines the location of the cursor on
the screen. A mouse has one or more buttons, which are
used to "click" on icons or hot spots on the screen. The
computer interprets these mouse clicks as instructions.
....
Serial No. 75/592,564
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features necessary to still qualify as an ordinary computer
mouse, I find that such a device has enough significant features
in common with a generalized computer mouse that, to the
sophisticated purchasers and users of applicant's goods, its
computerized noninvasive spinal scanning device would be readily
understood and regarded as a specialized version of a computer
mouse.
In particular, while the Examining Attorney focuses on
perhaps the broadest of the definitions of what basically
constitutes a computer mouse in arguing that, as set forth in
Prentice Hall’s Illustrated Dictionary of Computing (3rd ed.
1998) at 442, "the relevant definition of a 'MOUSE' is 'an input
device designed to assist in the use of a computer system'," it
is still the case that, as persuasively pointed out in his brief
(bold in original):
[A]pplicant's goods include ... a
computer input device (i.e., a mouse) used
to measure and characterize different
sections of a person's spine (i.e., to take
spinal measurements and make spinal
characterizations). According to the
brochures, pictures, and user's manual
submitted by the applicant, the device is
placed on a surface--in this case, on the
... back--and run ... down a person's spine
from a start point to a finish point. The
person using the "SPINALMOUSE" takes the
mouse from its base station and then presses
a button to select a measurement mode for
the patient's particular standing or seated
position. Once that is selected, the mouse
is then placed on the spine in the proper
starting position and the user presses the
Serial No. 75/592,564
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start button found on top of the mouse. The
user then runs the mouse along the spinal
column until the measurement is finished, at
which point the user presses the start
button to terminate the measurement. The
pair of wheels at the base of the mouse
enables the movement of the mouse along the
spinal column. The brochure, pictures, and
user's manual make readily apparent that a
chief device for which the mark
"SPINALMOUSE" is used happens to be a
specialized medical computer peripheral
input device (i.e., a mouse) that can be
used with a standard personal computer--
whether desktop, laptop or otherwise--to
take spinal measurements. Idiag, Spinal
Mouse Manual 15-19 (1999) (emphasis added).
Applicant's contention, however, that in terms of
cursor movement, its device apparently does not perform any of
the defined moving and pointing functions of a typical computer
mouse is not dispositive of the issue of mere descriptiveness
because applicant's device is an atypical mouse in that it
measures and inputs data concerning spinal shape and mobility
directly into a computer. This is clearly seen from applicant's
advertising literature, which under the heading "FUNCTION AND
DESCRIPTION," states in relevant part that (bold in original):
The computer-assisted SpinalMouse is a
newly developed device of medical and
therapeutic use to measure the spine's shape
and mobility in the sagittal plane. The
movement is simple, fast, accurate and
harmless to the patient.
The handy device is manually guided
over the skin of the back along the spinal
column; the measuring head follows
automatically the sagittal shape.
Clinically relevant parameters such as
Serial No. 75/592,564
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length, inclination relative to a vertical
line, sagittal curvature, segmental angles
of the thoracic and lumbar spine and pelvic
tilt are registered and shown in an easily
understandable drawing.
In comparison to existing methods the
SpinalMouse offers many advantages in terms
of accuracy, objectivity, data presentation,
non-invasiveness, absence of radiation, ease
of use and excellent cost-benefit ratio.
Notwithstanding that, like an ordinary computer mouse,
applicant's device is manually guided over a surface, applicant
further asserts that the operation of its device is distinctly
different in that the device, which is guided down a patient's
spinal column, is moved in only one direction. However, while
it is plain that, in order to take its measurements and input
the data gathered into a computer, applicant's device does
indeed, generally speaking, travel down a person's spine, in
actuality such a device, like a typical computer mouse, is
multi-directional rather than merely uni-directional as claimed
by applicant and the majority. Just as an ordinary mouse can
move in a variety of directions (up or down, left or right, or a
combination thereof) within the planar surface of a mousepad,
applicant's device in effect uses the skin covering a person's
spinal column as a three-dimensional (down, left or right, in or
out, or a combination thereof)3 mousepad surface as it measures
3 While applicant's device can also travel in an upward direction, it
is designed to provide useful data only when moved downwards. As
stated in the user manual at 19:
Serial No. 75/592,564
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sagittal shape and such relevant spinal parameters as length,
inclination to vertical, curvature, segmental angles and pelvic
tilt. The measurements so gathered by applicant's device are
automatically entered, through the use of applicant's programs
and operating software, into a computer. Applicant's user
manual at 17 states, for example, that "[a]s you run down the
patients [sic] back, the back curve will be generated real-time
on the computer screen." Clearly, like an ordinary computer
mouse, such ease of operation assists the user in the use of the
computer to provide various data presentations for evaluation.
Accordingly, I simply cannot agree with the stated
view of the majority, set forth below, that applicant is correct
as to there being a "significant difference in function between
a computer mouse and its hand-held device," based principally
upon the lack of both cursor-pointing capability and user ease
of computer interaction:
All the definitions cited in this record
emphasize that a computer mouse is a
pointing device designed to assist the
computer user in interacting with the
computer. By contrast, applicant’s hand-
held device is not a pointing device and is
Always begin measurement at the upper marker and roll down
the back .... The SpinalMouse is not bi-directional. If
you try measurements in the opposite direction the data
will be meaningless.
Thus, it is fair to say that applicant's device is uni-directional
only in the vertical plane; in terms of horizontal and depth
measurements, it is clearly multi-directional.
Serial No. 75/592,564
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not designed to make a computer easier to
use. While the sole mission of a computer
mouse is to assist one in operating a
computer, applicant has designed a high-
tech, medical tracking device that relies
upon computerized technology to accomplish
its mission. As to form and operation,
because a mouse is a relative pointing
device, it is necessarily multi-directional.
In its design and operation, applicant’s
device is strictly uni-directional. ....
While a computer mouse is moved on a flat
surface, applicant’s device is designed to
move down the highly irregular surface of a
patient’s back along the spine.
As noted earlier, applicant's device is specifically engineered
so as to not require a corresponding cursor movement in order
for the user to interact with a computer; instead, all the user
need do, after selecting a measurement mode, is to start at the
top of a patient's spine and move the device down the spinal
column, with the measurements so registered being automatically
entered into a computer.
The majority, moreover, glosses over the several
additional similarities shared by applicant's device and an
ordinary computer mouse, while seizing upon inconsequential
dissimilarities. As to those similarities which the majority
deems "superficial," I find it significant that in terms of ease
of use and interaction with a computer, applicant's device, like
a general purpose computer mouse, features a palm-sized case
which is gripped in one hand and has two buttons on top which
are "clicked" with a forefinger. With respect to the
Serial No. 75/592,564
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dissimilarities, the majority to its credit does not regard the
absence of a cable or "tail" on applicant's device as a notable
difference, accurately noting that:
This tracking device communicates with its
base station via a radio link, not a cable.
However, while most computer mice still have
a "cable" attaching them to the computer
terminal ..., a state-of-the-art cordless
mouse is in every way still a mouse.
The majority, nonetheless, finds that applicant's
device "is not technically a mouse," observing among other
things that:
The computer mouse has a flat bottom. The
bottom of applicant’s tracking device is
arcuate and offset at various points with
tracking wheels. The tracking device cannot
rest on a flat surface but rather, when not
in use, sits in a cradle in the base
station.
To me, however, such distinctions are without a meaningful
difference. While an ordinary mouse, which is designed to roll
along a flat surface, would typically have a flat bottom, it
must be kept in mind that applicant's specialized device has an
arcuate bottom, and rests in a cradle when not use, precisely
because it is designed to roll along the curves of a patient's
spinal column. Moreover, the fact that applicant's device uses
wheels instead of a ball does not, according to most of the
pertinent definitions, make it something other than a mouse.
Applicant, in fact, not only finds it necessary in its
user manual to distinguish between its "SpinalMouse" device and
Serial No. 75/592,564
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an ordinary computer mouse, variously referring to the latter
(at 14, 15, 21 and 25, respectively) as a "PC-mouse," "computer
mouse," "PC Mouse" and "PC mouse," but even refers to its own
device as a "mouse". In particular, under the heading "Problems
and Solutions," applicant indicates in its user manual at 7 that
the possible cause of the program-error message "Leave energy-
saving mode - press Marker button twice" is (emphasis added):
"The SpinalMouse was not used for at least 30 seconds. The
mouse is now in energy-saving mode." Likewise, with respect to
the program-error message "Movement too fast. Repeat the
measurement," applicant on the same page of such manual states
that the possible cause thereof is (emphasis added): "You
exceeded the maximum speed which the mouse can handle." These
instances not only show that it would be natural for applicant's
"SPINALMOUSE" device to be called a mouse, but more
significantly that the medically knowledgeable and highly
sophisticated purchasers and users of applicant's device would
readily understand that such a device, while quite specialized,
in essence is nevertheless a type of computer mouse.4
4 Although the majority rightfully chastises applicant for counsel's
demonstrably false representation that "it is not stated anywhere in
applicant’s manual or brochure that applicant's goods are a 'mouse',"
and properly takes applicant to task for the misuse of its mark,
counsel's characterization (if such can be believed) of applicant's
written materials as being "in draft" and "not yet ... distributed to
the public" does not alter the fact the applicant's literature plainly
evidences that applicant's computerized noninvasive spinal scanning
device is a kind of computer mouse and would be so regarded by
customers therefor and users thereof.
Serial No. 75/592,564
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In consequence of the above, I am unable to subscribe
to the majority's strained conclusion that:
On balance, we find this device falls
outside the scope of a computer mouse.
Certainly, this device could never replicate
the critical functionalities of a computer
mouse. This device could not be used with a
computer that does not have the base
station/receiver and applicant’s software.
Applicant’s entire set of goods listed in
International Class 9 are useful only to
trained medical professionals in the fields
of chiropractic medicine, orthopedics,
physical medicine, physiotherapy,
rehabilitation, neurology and sports
medicine.
The finding by the majority that applicant's goods could not
duplicate the usual workings of an ordinary computer mouse fails
in my view to give sufficient consideration to the fact that, as
previously explained, applicant's device is a specialized kind
of mouse designed solely for measuring and recording spinal
parameters. That such device, as well as applicant's other
goods, are therefore of use only to trained professionals in the
fields of chiropractic medicine, orthopedics, physical medicine,
physiotherapy, rehabilitation, neurology and sports medicine
does not alter the fact that applicant's device in essence is
still a kind of mouse. Furthermore, that such a device could
not be used with a computer that does not have the requisite
base station/receiver and operating software dismisses the very
fact, recognized by the majority, that a state-of-the-art
cordless mouse--including applicant's device--is still in every
Serial No. 75/592,564
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way a mouse and that no mouse, whether cordless or linked to a
computer by a cable, will function absent the associated driver
software required for its operation.
Accordingly, since for all of the above reasons,
applicant's computerized noninvasive spinal scanning device,
together with the computer programs and software for operating
and measuring the input from such a device, basically constitute
a highly specialized type of computer mouse, I would find that
combining the descriptive terms "spinal" and "mouse" into the
designation "SPINALMOUSE" creates a term which immediately
describes, without conjecture or speculation, a significant
purpose, use or function of such goods. Contrary to the
majority's holding, there is nothing in the term "SPINALMOUSE"
which, to the highly trained and medically knowledgeable
customers for and users of applicant's goods, is in the least
bit incongruous,5 nor is there anything which is ambiguous or
even suggestive of another plausible meaning. No imagination,
cogitation or mental gymnastics is required in order for
purchasers and users alike to readily understand the merely
descriptive significance of such term. Instead, the designation
5 What the majority perceives as an incongruity in the mark may more
likely be the apparent novelty of the applicant's device itself.
However, the fact that spinal shape and mobility have not previously
been measured using a computer-assisted noninvasive scanning device in
the form of a mouse does not make the designation "SPINALMOUSE" even
"somewhat incongruous" as contended by the majority.
Serial No. 75/592,564
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"SPINALMOUSE," especially in light of the manner in which it is
chiefly used (i.e., "SpinalMouse"), is merely descriptive of
applicant's goods because it conveys forthwith that the purpose,
use or function of applicant's computerized noninvasive scanning
device and associated software is that of a mouse for measuring
the spinal column or, in short, that such goods are a spinal
mouse. See, e.g., In re Abcor Development Corp., supra at 219
(Rich, J., concurring) [term "GASBADGE" held merely descriptive
of a device to determine and monitor pollution due to fact that,
since "users of language have a universal habit of shortening
full names," it is "inevitable that a gas monitoring badge will
be called a gas badge as the name of the goods to the same
extent as gas monitoring badge is the [full] name" of such
goods].