Imperative Care, Inc.

Trademark Trial and Appeal Board

Feb 7, 2022

88654881 (T.T.A.B. Feb. 7, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: February 7, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Imperative Care, Inc. _____ Serial No. 88654881 _____ Steven J. Nataupsky, Jonathan A. Menkes, Brian M.Z. Reece of Knobbe, Martens, Olson & Bear, LLP, for Imperative Care, Inc. John E. Michos, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Kuczma, Goodman and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: Imperative Care, Inc. (“Applicant”) seeks registration on the Principal Register of the standard character mark LARGE DISTAL PLATFORM for “medical devices, namely, catheters for vascular use; access catheters for the introduction of interventional medical devices into the peripheral, coronary, and neuro vasculature; Serial No. 88654881 - 2 - interventional medical catheters for use in the peripheral, coronary, and neuro vasculature” in International Class 10.1 The Trademark Examining Attorney refused registration under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark, as applied to the goods identified in the application, is merely descriptive of them. When the refusal was made final, Applicant appealed to this Board and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. The appeal is fully briefed. For the reasons discussed below, we affirm the refusal to register in the absence of a disclaimer of “LARGE DISTAL.” I. Applicant’s Reply Brief Not Considered Before proceeding to the merits of the refusal, we address the improper formatting and length of Applicant’s Reply Brief2 in contravention of the Trademark Rules of Practice. Trademark Rule 2.126(a)(1), 37 C.F.R. § 2.126(a)(1), states that “[s]ubmissions must be made to the Trademark Trial and Appeal Board via ESTTA. Text in an electronic submission must be filed in at least 11-point type and double-spaced.” Trademark Rule 2.142(b)(2), 37 C.F.R. § 2.142(b)(2), in relevant part, 1 Application Serial No. 88654881 was filed on October 15, 2019, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Applicant’s Reply Brief, 21 TTABVUE. Page references herein to the application of record refer to the online database of the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system. All citations to documents contained in the TSDR database are to the downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. References to the briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE designation is the docket entry number; and after this designation are the page references, if applicable. Serial No. 88654881 - 3 - provides that “[b]riefs must meet the requirements prescribed in § 2.126 …. Without prior leave of the Trademark Trial and Appeal Board, a … reply brief from the appellant, if any, shall not exceed ten pages in length in its entirety.” See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.01 (2021) (discussing the format and length of appeal and reply briefs filed with the Board). Applicant’s Reply Brief is six pages, single-spaced. The Reply Brief would undoubtedly exceed 10 pages if Applicant used double-spaced text, as required. We therefore do not consider it. In re Dimarzio, Inc., 2021 USPQ2d 1191, *3-5 (TTAB 2021) (Examining Attorney’s objection to single-spaced format and length of Applicant’s Appeal Brief sustained); see also, In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (Board refused to consider applicant’s 29-page brief); but see In re University of Miami, 123 USPQ2d 1075, 1077 n.2 (TTAB 2017) (Board exercised its discretion to consider Applicant’s appeal brief and reply that were not double-spaced because it appeared that they would fall within the applicable page limits had they been double-spaced). II. Mere Descriptiveness - Applicable Law Absent an adequate showing of acquired distinctiveness,3 Trademark Act Section 2(e)(1) precludes registration of a mark on the Principal Register which, when used in connection with an applicant’s goods, is merely descriptive of them. A mark is 3 Applicant has not argued, nor has it provided evidence, that LARGE DISTAL PLATFORM has acquired distinctiveness through use in the marketplace. Serial No. 88654881 - 4 - “merely descriptive” within the meaning of Section 2(e)(1) “if it immediately conveys information concerning a feature, quality, or characteristic of the goods for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer A.G., 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Conversely, a mark is suggestive if it “requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods ….” See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (contrasting merely descriptive from suggestive marks) and In re Franklin Cty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (same). “A mark need not recite each feature of the relevant goods … in detail to be descriptive, it need only describe a single feature or attribute.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citation and internal quotation omitted). See also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods ….”) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)). Whether a mark is merely descriptive is evaluated “in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” In re Chamber of Commerce, 102 USPQ2d at 1219 (quoting In re Bayer, 82 USPQ2d at 1831) and “not in the abstract Serial No. 88654881 - 5 - or on the basis of guesswork.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). Thus, we ask “not whether someone presented with only the mark could guess what the goods … are. Rather, the question is whether someone who knows what the goods … are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (citation and internal quotation omitted). That a term has different meanings in different contexts is not controlling. In re Bright-Crest Ltd., 204 USPQ 591, 593 (TTAB 1979). Where a mark consists of multiple terms, the mere combination of descriptive terms does not necessarily create a non-descriptive word or phrase. In re Phoseon Tech., Inc., 103 USPQ2d 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 “function[s] as an indication of more than a mere description of the ingredients [or functions] of the goods on which the mark is used[,]” In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968), or results in the “coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and ‘mental pause’.” In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983). Serial No. 88654881 - 6 - However, if each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1374 (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet); see also In re Phoseon Tech., 103 USPQ2d at 1823 (“When two or more merely descriptive terms are combined, ... [i]f each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive.”). Thus, our determination as to whether LARGE DISTAL PLATFORM is merely descriptive is based on an analysis of the proposed mark as a whole. DuoProSS Meditech, 103 USPQ2d at 1756 (“When determining whether a mark is merely descriptive, the Board must consider the commercial impression of a mark as a whole.”). On the other hand, we may consider the significance of each element separately in the course of evaluating the mark as a whole. Id. at 1756-57 (noting that “[t]he Board to be sure, can ascertain the meaning and weight of each of the components that makes up the mark.”). Evidence that a term is merely descriptive to the relevant purchasing public “may be obtained from any competent source, such as dictionaries, newspapers, or surveys,” In re Bayer, 82 USPQ2d at 1831, as well as “labels, packages, or in advertising material directed to the goods.” In re Abcor, 200 USPQ at 218. It also may be obtained from an applicant’s own specimen of use and any explanatory text Serial No. 88654881 - 7 - included therein. In re N.C. Lottery, 123 USPQ2d at 1710. Such evidence similarly may come from an applicant’s own usage other than that found on its labels, packaging or advertising materials. See, e.g., In re Chamber of Commerce, 102 USPQ2d at 1220 (content of applicant’s website, along with articles discussing the activities of chambers of commerce, constituted substantial evidence supporting the Board’s mere descriptiveness finding). Additionally, evidence that a term is descriptive may be found in its third-party usage in connection with products or services similar or related to those at issue. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1728 (Fed. Cir. 2012). “[T]he burden of proof [is on and] remains with the [E]xamining [A]ttorney to establish that the mark [sought for registration] is merely descriptive of the recited … [goods].” In re Accelerate s.a.l., 101 USPQ2d 2047, 2053 (TTAB 2012). In this connection, “[i]t is incumbent on the Board to balance the evidence of public understanding of the mark against the degree of descriptiveness encumbering the mark, and to resolve reasonable doubt in favor of the [A]pplicant ….” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987). On the other hand, where “the Board … [does not] entertain[] any doubt [based on the evidence], the rule of resolving doubt in favor of the [A]pplicant does not apply.” In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1783 (Fed. Cir. 2003). Serial No. 88654881 - 8 - III. Mere Descriptiveness - Arguments and Evidence The Examining Attorney argues:4 Each of the three words [A]pplicant has chosen as its mark has widespread descriptive significance in relation to catheters for vascular access and interventional medical devices into the peripheral, coronary, and neuro vasculature. … LARGE DISTAL PLATFORM merely describes [A]pplicant’s distal catheters which have been shown to have a large inner diameter and a control platform for managing the devices. … [T]he term DISTAL identifies a category or class of catheter and interventional devices with proximal and distal ends and that consumers will recognize the term accordingly. … [T]he terms LARGE and PLATFORM, also are commonly used in connection with goods like the [A]pplicant’s to indicate the size of the distal catheter diameter and nature of the handle and control system, respectively. … Consumers who view the applied for mark LARGE DISTAL PLATFORM will [therefore] understand that it describes important features and properties of [A]pplicant’s catheters and interventional devices. (Emphasis original). Applicant contends:5 Applicant’s Mark is not merely descriptive of Applicant’s Goods as several mental steps are needed to ascertain any meaning for Applicant’s Goods, because it creates an incongruity that renders the mark at most suggestive, and because all known public references to Applicant’s Mark as a whole refer unambiguously to Applicant and Applicant’s Goods. *** [C]onsumers viewing Applicant’s Mark must perform a multi-step reasoning process to ascertain any possible meaning in connection with the mark LARGE DISTAL PLATFORM and Applicant’s Goods. … Consumers would first need to assess what characteristic or aspect of Applicant’s Goods the word “LARGE” applies to, if any. … Notably [Applicant’s Goods], vascular catheters[,] are not “large” in any obvious sense given their purpose (to fit inside a patient’s vein). *** 4 Examining Attorney’s Brief, 14 TTABVUE 5, 7-9. 5 Applicant’s Brief, 12 TTABVUE 4-7. Serial No. 88654881 - 9 - Second, consumers would consider the word “LARGE” as it relates to “DISTAL”, … defined as an orientation away from a central point …. Third, consumers would stop to consider the possible meaning of “large orientation.” Fourth, consumers would need to assess how “large orientation” relates to the word “platform.” Here, the wording “platform” has no readily identifiable significance or meaning to the wording “LARGE DISTAL.” Further, the word “platform” does not immediately describe any features of salient characteristics of Applicant’s vascular catheters, and the Examining Attorney has not produced any evidence that demonstrates consumers would understand “platform” to immediately refer to Applicant’s vascular catheters. … Thus, even when dissecting Applicant’s Mark into its constituent parts, Applicant’s Mark does not describe Applicant’s vascular catheters with immediacy or particularity. *** The Examining Attorney also fails to consider that the wording “LARGE DISTAL” in Applicant’s Mark creates an incongruity. One would not ordinarily use the incongruous phrase “LARGE DISTAL” to describe anything, especially as the wording “large” refers to size whereas “distal” refers to an orientation or placement of an object …. *** [Finally] Applicant provided evidence showing that the web results of a Google search for Applicant’s Mark refer unambiguously to Applicant and its … goods. … The Examining Attorney did not address Applicant’s strong evidence, but rather merely asserted that the disparate elements of Applicant’s Mark are commonly used in describing features of goods related to Applicant’s Goods. We begin our review of the prosecution file by examining the dictionary definitions made of record, as follows: • DISTAL - “Situated away from the center of the body, or from the point of origin; specifically applied to the extremity or distant part of a limb or organ; Anatomically located far from a point of reference, such as an origin or a point of attachment.”6 • PLATFORM - “a device or structure incorporating or providing a platform (such a structure on legs used for offshore drilling (as for oil)); a vehicle (such 6 Definition of DISTAL from THE FREE DICTIONARY, Office Action of August 17, 2020 at TSDR 83. The Examining Attorney made of record a similar definition of DISTAL from MERRIAM-WEBSTER. Id. at TSDR 88. Serial No. 88654881 - 10 - as a satellite or aircraft) used for a particular purpose or to carry a usually specified kind of equipment.”7 However, a relevant definition not made of record, which we now provide, is the term LARGE: • LARGE - “exceeding most other things of like kind especially in quantity or size; having more than usual capacity or scope.”8 We next summarize the promotional text from Applicant’s various advertising content (emphasis added): • ZOOM™ Aspiration System - Designed to work with the Large Distal Platform (LDP), our easy to deliver, highly trackable reperfusion catheters are optimized for fast, effective clot removal in a wide range of sizes to treat occlusions.9 • A New Category of intracranial Access, Large Distal Platform (LDP) - Large diameter catheters that combine the stability of a long sheath with the flexibility of an intermediate catheter. Track farther and get closer to the treatment site for both ischemic and hemorrhagic stroke procedures. … Large .088” inner lumen with an 8F outer diameter.10 • The Zoom 88 Large Distal Platform is the first stroke-specific .088” access catheter designed to reach higher than ever before enabling distal clot and flow control. … Redefining stroke access, Zoom 88 LDP is an .088” intracranial access catheter that gets closer to the clot, creating a position of advantage for the procedure. Ordering information PRODUCT NAME MODEL NUMBER LENGTH INNER DIAMETER Large Distal Platform Zoom 88-T Large Distal Platform ICTC088110 110 cm .088” 7 Definition of PLATFORM from MERRIAM-WEBSTER, Denial of Request for Reconsideration of April 2, 2021 at 66. 8 Definition of LARGE from MERRIAM-WEBSTER (https://www.merriam-webster.com/dictionary/large, last visited February 1, 2022). The Board may take judicial notice of dictionary definitions from online sources when the definitions themselves are derived from dictionaries that exist in printed form or have regular fixed editions. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013). 9 Applicant’s website, Office Action of January 27, 2020 at TSDR 31. 10 Applicant’s website, Office Action of August 17, 2020 at TSDR 70 and 82. Serial No. 88654881 - 11 - The Zoom 88-T Large Distal Platform (Zoom 88-T) is indicated for the introduction of interventional devices into the peripheral, coronary and neuro vasculature. The Zoom 88-T LDP should only be used by physicians who have received appropriate training in interventional techniques and are proficient in using guide sheaths and catheters. TracStar LDP LARGE DISTAL PLATFORM |The First Large Distal Platform Track Farther with Less Force - The only catheter to reach the distal cavernous ICA, while requiring significantly less force than leading competitive technologies. What is a Large Distal Platform? 2 Catheters in 1 - Combines the flexibility of a distal access catheter with the support of a long sheath in a single large .088” intracranial access catheter. Maximum Versatility, Large .088” Inner Lumen - For a wide range of neurovascular procedures. Reduce Cost and Complexity - LDP catheters can eliminate the need for additional catheters in neurovascular procedures by combining the benefits of two catheters in one. Ordering Information TracStar LDP Large Distal Platform MODEL NUMBER PRODUCT NAME LENGTH INNER DIAMETER ICAC088095 TracStar LDP 95 cm .088” ICAC088105 TracStar LDP 105 cm .088” Zoom™ STROKE SOLUTION Product Model Length Inner Diameter Zoom 88 Large Distal Platform™ Zoom 88-T Large Distal Platform ICTC088110 110 cm 0.088” TracStar LDP™ LARGE DISTAL PLATFORM Product Model Length Inner Diameter TracStar LDP ICAC088095 95 cm 0.088” TracStar LDP ICAC088105 105 cm 0.088” Rx only. The TracStar LDP Large Distal Platform (TracStar LDP) is indicated for introduction of interventional devices into the peripheral, coronary and neuro vasculature. Serial No. 88654881 - 12 - The Zoom 88-T Large Distal Platform (Zoom 88-T) is indicated for the introduction of interventional devices into the peripheral, coronary and neuro vasculature.11 • TracStarLDPTM, Flexibility of a distal access catheter. Support of a long sheath. … TracStar LDP redefines access by combining the flexibility of a distal access catheter with the support of a long sheath in a single large .088” intracranial access catheter.12 The Examining Attorney further provided examples of third-party trademark registrations in connection with catheter products and related surgical devices, wherein the term DISTAL was used in the Identification of Goods (emphasis added):13 Mark Reg. No. Goods SCIENCE PRO 2580278 Medical device, namely, distal protection device ABBOT VASCULAR 2849152 House mark for medical devices, including vascular devices, distal protection devices and occlusion devices FULCRUM 2818294 Balloon dilation material sold as an integral component of medical devices used in vascular and intra-vascular procedures, namely catheters, stents, guidewires and distal protection devices that filter or occlude blood flow. RACER 2920041 Medical devices for use in vascular and peripheral procedures, namely; stents, stent delivery catheters, balloons, guide wires, catheters and distal protection filters and occlusion balloons. SCION 4511592 Medical devices, namely, distal protection devices, anti-microbial barriers, and hemostats ANGIOTIP 5205176 Medical devices, namely, distal radiopaque tips sold as an integral component of medical catheters used in the treatment of vascular diseases ABSORB 5146930 Medical devices, namely, vascular devices, distal protection devices and occlusion devices, stents, guidewires, balloons and catheters for use in vascular procedures REVEAL 4796551 Medical device, namely, a cap that attaches to the distal end of an endoscope to maintain an appropriate distance between an endoscope tip and an observation site 11 Applicant’s promotional materials, Request for Reconsideration of February 17, 2021 at 12, 15, 17-19. 12 Applicant’s promotional materials, Denial Request for Reconsideration of April 2, 2021 at TSDR 5-6. 13 Third-party registrations, Office Action of August 17, 2020 at TSDR 6-24. Serial No. 88654881 - 13 - Mark Reg. No. Goods SDA 5191863 Medical devices, namely, distal access vascular catheters SYNERGY CT PICC 5200845 Peripherally inserted central venous catheters designed specifically for being inserted into a peripheral vein and advanced into the distal superior vena cava or the cavoatrial junction to provide intravenous access for the purposes of performing infusion, intravenous therapy, blood sampling and power injection of contrast media The Examining Attorney and Applicant also provided examples of third-party medical device manufacturers that use the term DISTAL in the marketing of their products (emphasis added): • Distal Catheters - Sophysa atrial/peritoneal catheters are specifically designed for CSF drainage from the valve to the right atrium of the heart, or to the peritoneal cavity.14 • The Penumbra 5MAX™ and 4MAX™ Distal Delivery Catheters (DOC) are designed to simplify therapy delivery to the most distal, tortuous anatomy.15 • [O]nly Teleflex Medical OEM offers you a winning combination of vertically integrated capabilities, deep expertise, decades of experience, and a history of industry changing innovations. … > Diagnostic and interventional catheters custom-engineered from proximal end to distal tip.16 • BENCHMARK™ 071 INTRACRANIAL ACCESS REDEFINED - Full distal shaft radiopacity; Distal Purchase Basilar Tip Anuerysm Coiling … BENCHMARKTM 071 is Now Packaged with a SF Penumbra SelectTM Catheter … Advantages of SelectTM Technology … Facilitates atraumatic placement into distal vasculature.17 • Take on tortuosity - The CATTM 5 Distal Access Catheter provides easy navigation and reliable support for distal access cases.18 14 Sophysa website, Office Action of January 27, 2020 at TSDR 37. 15 Penumbra website, Office Action of January 27, 2020 at TSDR 39. 16 Teleflex Medical website, Office Action of August 17, 2020 at TSDR 57. 17 Penumbra promotional literature, Request for Reconsideration of February 17, 2021 at TSDR 31-33. 18 Stryker Neurovascular website, Denial Request for Reconsideration of April 2, 2021 at TSDR 62. Serial No. 88654881 - 14 - The Examining Attorney further made of record the advertising of numerous third-party medical device manufacturers using the term PLATFORM in the marketing of their products (emphasis added): • US FDA clears Control Medical’s catheter platform - Control Medical Technology has received the US Food and Drug Administration’s (FDA) clearance for its Aspire MAX 7 - 11F Mechanical Thrombectomy platform to remove blood clots from peripheral vessels.19 • Platform Products & Technologies - we have developed a range of platform catheter products and technologies to which you can add features and specifications to customise a device to your specific needs. Platforms range from component technologies to sub-assemblies and complete catheter devices. Platform solutions reduce your development time and cost to market.20 • BLAZER PRIME™ Temperature Ablation Catheter - Intuitively engineered construction combined with our trusted BLAZER™ Catheter platform provides an ablation catheter designed to function as a physical extension of your hand. Manipulation of the handle translates predictably into movement of the catheter tip. Control and durability provide procedural confidence.21 • Designed to support the most extreme cases, the Quick-Cross Extreme support catheter platform has a new level of strength.22 • Interface Catheter Solutions DFW-1000 dual fluting and wrapping equipment provides a minimal profile wrapped balloon for catheter manufacturing. It has a top-loading, pivoting catheter platform to precisely control positioning of the catheter for both fluting and wrapping operation.23 • Surmodics balloon catheter platforms - Surmodics has complete capabilities for design, development and manufacturing of highly differentiated balloon catheters.24 • Freudenberg Medical touting new catheter handle platforms, hemostasis valve at TCT [Transcatheter Cardiovascular Therapeutics Conference] 2019 - The Composer Toccata catheter handle platform is meant to control smaller 19 Verdict Medical Devices website, Office Action of August 17, 2020 at TSDR 39-40. 20 Creganna Medical website, Office Action of August 17, 2020 at TSDR 48. 21 Boston Scientific website, Office Action of August 17, 2020 at TSDR 49, and Denial of Request for Reconsideration of April 2, 2021 at TSDR 25. 22 Philips website, Office Action of August 17, 2020 at TSDR 52. 23 Confluent website, Office Action of August 17, 2020 at TSDR 59. 24 Surmodics website, Office Action of August 17, 2020 at TSDR 76. Serial No. 88654881 - 15 - catheter applications up to 9.5 Fr OD. The platform provides extensive design flexibility with a variety of shaft options, a proximal luer connection and an adjustable tensioning system ….25 • Freudenberg Medical Presents Two New Catheter Handle Platforms and Hemostasis Valve - The Composer®EPIC Catheter Handle Platform provides next generation design options with a through lumen, modular distal end and a variety of shaft options for electrophysiology guide, diagnostic and therapeutic catheters. The Composer®Toccata Catheter Handle Platform is optimized for controlling smaller catheter applications up to 9.5Fr OD and provides extensive design flexibility with a variety of shaft options, a proximal luer connection and an adjustable tensioning system.26 • [I]n March 2018, Auris Health launched the MonarchTM Platform, the first FDA-cleared robotic platform for diagnostic and therapeutic bronchoscopic procedures. The Monarch Platform is designed to allow physicians to diagnose small, hard-to-reach peripheral lung nodules with greater precision than ever before.27 • Introcan Safety® 3 Closed IV Catheter - Integrated Stabilization Platform: Designed to improve catheter stability and minimize movement within the vessel.28 • BD Nexiva™ closed IV catheter system (Preserving sites and protecting veins) - Built-in stabilization Platform; Reduces dislodgement by 84% and complies with the Infusion Therapy Standards of Practice and CDC guidelines for catheter stabilization.29 • Cordis offers a complete platform of steerable guidewires for choosing the right guidewire given a specific clinical situation.30 The Examining Attorney and Applicant additionally made of record some examples showing third-party medical device manufacturers making combined use 25 Medical Tubing + Extrusion website, Office Action of August 17, 2020 at TSDR 78-79. 26 Freudenberg Medical website, Denial of Request for Reconsideration of April 2, 2021 at TSDR 79. 27 Auris Health website, Denial of Request for Reconsideration of April 2, 2021 at TSDR 30. 28 B Braun website, Denial of Request for Reconsideration of April 2, 2021 at TSDR 38-39. 29 BD website, Denial of Request for Reconsideration of April 2, 2021 at TSDR 45-46. 30 Cordis website, Denial of Request for Reconsideration of April 2, 2021 at TSDR 64. Serial No. 88654881 - 16 - of two (but not all three) of the terms comprising Applicant’s mark in the advertising of their products (emphasis added): • The SOFIA Plus catheter is designed to work in a support device to facilitate thrombectomy with a stentriever. Its ideal combination of distal trackability and a large 0.070” inner diameter enable it to engage with larger clot burdens.31 • AXS Vecta-71 ASPIRATION CATHETER - Redefine aspiration. Introducing Stryker’s large-bore aspiration platform to complement our comprehensive portfolio of retrieval, access, and flow control products for treating acute ischemic stroke.32 • Composer® Catheter Handle Platform - Single or multi-knob configuration on a modular platform … Flexible, modular design with patented control platform and in-line steering for direct catheter response and accurate distal tip positioning … Commercialization ready handle platform designed for controlling Electrophysiology guide, diagnostic and therapeutic catheters … Commercialization ready and adaptable handle platform designed for a wide range of catheter applications.33 • Neuron™ MAX 088: Soft Tip, 6F Long Sheath for Neurovascular Support - Distal Shaft Softness; Largest lumen in class to deliver the widest range of devices (.088”); Full length stainless steel braid reinforced proximal support zone transitioning to 4 cm distal flexible zone with large .088” inner lumen; Distal shaft has hydrophilic coating for optimal trackability; Stainless steel braided proximal shaft for support and torque response with a soft polymer distal shaft to enable atraumatic vessel selection.34 Applicant made of record one example of a third-party medical device manufacturer making combined use of all three terms comprising Applicant’s mark 31 MicroVention Terumo website, Office Action of August 17, 2020 at TSDR 64. 32 Stryker Neurovascular website, Denial Request for Reconsideration of April 2, 2021 at TSDR 43. 33 Freudenberg Medical website, Office Action of January 27, 2020 at TSDR 23-26, Office Action of August 17, 2020 at TSDR 43-45, and Denial of Request of Reconsideration of April 2, 2021 at TSDR 49-51. 34 Penumbra marketing materials, Request for Reconsideration of February 17, 2021 at TSDR 37-38. Serial No. 88654881 - 17 - in the advertising of its product; however, the terms are separated from one another (emphasis added): • AXS Infinity LSTM - Stable Platform; a stable platform from the start with a longer proximal segment and more midshaft support; Large 0.088 in[ch] Lumen; The large 0.088 in[ch] ID [internal diameter] is designed to deliver a wide range of devices including most dual-cather therapies and tri-axial approaches; Designed to be compatible with AXS Catalyst® Distal Access Catheters.35 The Examining Attorney made of record one example showing use of the term DISTAL in scientific literature (emphasis added): • Aspiration Thrombectomy with Off-Label Distal Access Catheters in the Distal Intracranial Vasculature - As occlusions in the distal cerebral vasculature are increasingly targeted for removal, distal access catheters (DACs) have been adapted for off-label aspiration thrombectomy. … The FDA recently published a letter to providers that urges caution when made particular mention that the risks of off-label aspiration thrombectomy with DACs may be accentuated in the distal vasculature. In light of this, we evaluated the efficacy and safety of distal access catheters used for aspiration thrombectomy m the distal vasculature at our institution. … Conclusions: Aspiration thrombectomy with off-label distal access catheters may be safe and effective in the distal vasculature. … [F]urther evaluation of distal access catheters in this capacity is warranted.36 The Examining Attorney also made of record a sole example of the terms LARGE and DISTAL used in scientific literature; but the terms are separated from one another (emphasis added): • Advances in ELVO Access and Management: An overview of the development and evolution of techniques and devices aimed at expediting effective and efficient delivery of endovascular stroke therapies - Acute ischemic stroke (AIS) remains the leading cause of long-term disability in the United States …. Up to one half of AIS is related to emergent large vessel occlusion (ELVO), most commonly of the internal carotid artery (ICA) or middle cerebral artery.… 35 Stryker marketing materials, Request for Reconsideration of February 17, 2021 at TSDR 36. 36 Congress of Neurological Surgeons website, Denial of Request of Reconsideration of April 2, 2021 at TSDR 53-54. Serial No. 88654881 - 18 - [U]se of aspiration systems, such as the Penumbra aspiration system (Penumbra, Inc.), were designed to prevent distal embolization while effectively removing thrombus. … The focus has now started to shift toward optimizing the mechanical thrombectomy procedure by improving first-pass effectiveness and speed while reducing emboli in distal or nonaffected territories. This direction has resulted in the evaluation of a variety of new strategies, such as … using balloon guides or large-bore distal aspiration in conjunction with stent retrievers .… [T]he use of a balloon guide catheter has been shown to reduce the risk of distal embolization.37 The Examining Attorney also made of record a single example showing usage of all three terms comprising Applicant’s mark in scientific literature; yet the terms are separated from one another (emphasis added): • Pentaxial access platform for ultra-distal intracranial delivery of a large- bore hyperflexible DIC (distal intracranial catheter): A technical note, SCIENCEDIRECT.COM - “Distal intracranial catheters can achieve ultra-distal intracranial positions safely with the pentaxial access platform. … Familiarity with catheter specifications including diameters and length is essential for the success of this system.”38 Finally, Applicant provided the results of a Google search for “large distal platform”,39 which Applicant says “refer[s] unambiguously to Applicant and its … goods.”40 IV. Mere Descriptiveness - Discussion and Analysis “Whether a mark is merely descriptive or not is ‘determined from the viewpoint of the relevant purchasing public.’” In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 37 ENDOVASCULAR TODAY online article, Denial of Request for Reconsideration of April 2, 2021 at TSDR 56-58. 38 SCIENCEDIRECT.COM article, Office Action of January 27, 2020 at TSDR 5-6. This article also was reprinted on the John Hopkins University website, Office Action of August 17, 2020 at TSDR 26-28. 39 Google search results, Request for Reconsideration of February 17, 2021 at TSDR 20-28. 40 Applicant’s Brief, 12 TTABVUE 7. Serial No. 88654881 - 19 - 1087, 1090 (Fed. Cir. 2005) (quoting In re Bed & Breakfast Registry, 791 F.2d 157, 160 (Fed. Cir. 1986)). In its first Office Action Response and its Request for Reconsideration,41 Applicant states that: Applicant’s goods are indicated for introduction of interventional devices in the peripheral, coronary and neuro vasculature, and are for use by highly skilled physicians who have received appropriate training in interventional techniques and are proficient in using guide sheaths, catheters and treatment of acute ischemic stroke. … [P]rospective customers would be medical device purchasing agents …. Based on Applicant’s above description, and consistent with the Identification of Goods in the subject Application, we find the relevant purchasing public comprises highly skilled physicians who use catheters and medical device purchasing agents who procure catheters, as well as similar or related medical devices, intended for surgical procedures. We begin with the observation that, except for proof of Applicant’s usage, none of the evidence made of record demonstrates the combined use of LARGE DISTAL PLATFORM, in its entirety with all three terms immediately next to one another, in connection with the goods of interest (medical surgical catheters). However, the fact that Applicant may be the first and only user of a designation we otherwise find merely descriptive does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Fat Boys, 118 USPQ2d at 1514; see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1839 (2004) (trademark law does not countenance someone obtaining “a 41 Office Action Response of July 27, 2020 at TSDR 5; Request for Reconsideration of February 17, 2021 at TSDR 5. Serial No. 88654881 - 20 - complete monopoly on use of a descriptive term simply by grabbing it first.”) (citation omitted). We immediately dispense with Applicant’s suggestion that LARGE DISTAL PLATFORM “functions as a [trade]mark simply because it appears … within a list of Google search results. We are not privy to Google’s page ranking algorithm, and we cannot simply assume that the … appearance in search results is an indicator of the trademark significance of Applicant’s [p]roposed [m]ark[].” In re The Consumer Protection Firm PLLC, 2021 USPQ2d 238, at * 19 (TTAB 2021). We also disagree with Applicant’s contention that the wording “LARGE DISTAL” in its mark creates an incongruity, because the wording “large” refers to size whereas “distal” refers to an orientation or placement of an object. True, “incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” In re Shutts, 217 USPQ 363, 364 (TTAB 1983). A trademark owner benefits from the “coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and ‘mental pause’.” Id. at 364-65. An apt definition of “incongruous” is as an adjective meaning “inconsistent within itself.”42 However, incongruity as a trademark principle cannot be applied in a vacuum, but rather by examining the mark sought for registration in connection with 42 Definition of “incongruous” from Merriam-Webster online (https://www.merriam- webster.com/dictionary/incongruous, last visited February 3, 2022). As we did above regarding the definition of “large,” we take judicial notice of the dictionary definition of “incongruous. In re White Jasmine, 106 USPQ2d at 1392 n.23. Serial No. 88654881 - 21 - the goods or services of interest. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 384 (CCPA 1968) (citing Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55, 60 (2d Cir. 1961)). Viewed in this fashion, particularly in light of how it is used in Applicant’s advertising, the wording “LARGE DISTAL” in its mark is not incongruous. Rather, from the advertising materials made of record, Applicant promotes its catheters as having a “large” internal diameter of 0.088” at the “distal” end, thus “combining the flexibility of a distal access catheter with the support of a long sheath in a single large .088” intracranial access catheter.”43 We therefore find that the relevant consumers of Applicant’s catheter products, surgeons and medical device purchasing agents, would immediately understand the qualities and characteristics of Applicant’s goods by the use of “LARGE DISTAL” without further thought or mental pause. Our finding is consistent with the third-party registration, competitor advertising and scientific literature evidence made of record, in which “large” contemplates the internal diameter of the catheter and “distal” is referred to as the farther endpoint (as opposed to the “proximal” near point) of a catheter medical device or system. This leaves us to consider the use of “PLATFORM” within Applicant’s mark. Unless we contort the dictionary definition provided (which we are loath to do), PLATFORM has no immediate connotation with respect to Applicant’s identified goods (medical catheters). Moreover, the evidence the Examining Attorney cites 43 Applicant’s promotional materials, Denial Request for Reconsideration of April 2, 2021 at TSDR 5-6. Serial No. 88654881 - 22 - (usage by third-party medical device manufacturers) simply does not support his argument that “[t]he term PLATFORM is descriptive in that [A]pplicant’s large bore distal catheters have a specially designed handle platform for controlling and operating the device[]” because “[m]anipulation and control of vasculature interventional devices is a critical function and companies have designed different types of control platforms for this purpose.”44 We see no verbiage in Applicant’s advertising that immediately informs surgeons or medical device purchasing agents what a “platform” is in the context of Applicant’s goods. Further, the third-party advertising and scientific literature made of record do not demonstrate the use of PLATFORM with any degree of consistency. In the context of describing medical catheter products, PLATFORM could mean the catheter itself, a controller attachment affixed to the catheter, an entire catheter system comprised of multiple parts and accessories, or a line of catheter products of different sizes, shapes or lengths. This evidence supports Applicant’s arguments that: 1. the wording platform … is not a uniformly recognized term of art in the medical field,45 2. the word “platform” does not immediately describe any features o[r] salient characteristics of Applicant’s vascular catheters, and the Examining Attorney has not produced any evidence that demonstrates consumers would understand “platform” to immediately refer to Applicant’s vascular catheters,46 3. there is nothing in Applicant’s materials that self-evidently ties the term[] … PLATFORM to any particular descriptive element of Applicant’s Goods,47 and 44 Examining Attorney’s Brief, 14 TTABVUE 7. 45 Request for Reconsideration of February 17, 2021 at TSDR 8. 46 Applicant’s Brief, 12 TTABVUE 6. 47 Applicant’s Brief, 12 TTABVUE 8. Serial No. 88654881 - 23 - 4. there is nothing in Applicant’s description of Applicant’s Goods that could be described as a “platform.”48 V. Conclusion Although we find that Applicant’s proposed mark LARGE DISTAL PLATFORM as a whole is not merely descriptive, we do find that “LARGE DISTAL” within the proposed mark is merely descriptive of Applicant’s identified goods. Decision: The refusal to register Applicant’s proposed mark LARGE DISTAL PLATFORM is affirmed only to the extent that “LARGE DISTAL” is merely descriptive of Applicant’s identified goods. We therefore find that Applicant’s proposed mark is not registrable on the Principal Register without a disclaimer of “LARGE DISTAL” apart from the mark as shown. See Trademark Act Section 6, 15 U.S.C. § 1056. If Applicant submits a disclaimer of “LARGE DISTAL” to the Board within 30 days of the mailing date of this decision, the application will proceed.49 Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); TBMP § 1218. See also In re Country Music Ass’n, Inc., 100 USPQ2d 1824, 1835 (TTAB 2011) (descriptiveness refusal to register marks COUNTRY MUSIC ASSOCIATION and CMA COUNTRY MUSIC and Design affirmed only to the extent that the term ASSOCIATION in both marks was generic; Applicant was allowed 30 days to submit a disclaimer of 48 Applicant’s Brief, 12 TTABVUE 8, n.1. 49 The disclaimer should read as follows: “No claim is made to the exclusive right to use ‘LARGE DISTAL’ apart from the mark as shown.” Serial No. 88654881 - 24 - “association,” in which case the applications would be forwarded to publication for potential opposition).