James S. Fallon

Trademark Trial and Appeal Board

Oct 21, 2020

86882668 (T.T.A.B. Oct. 21, 2020)

This Opinion is a
Precedent of the TTAB

Mailed: October 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re James S. Fallon
_____

Serial No. 86882668
_____

Morland C. Fischer of Law Offices of Morland C. Fischer,
for James S. Fallon.
Christopher Buongiorno, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Kuczma, Larkin, and Coggins,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
James S. Fallon (“Applicant”) seeks registration on the Principal Register of the
proposed standard character mark THERMAL MATRIX (THERMAL disclaimed) for
goods ultimately identified as a “Heat responsive and malleable liner that is an
integral component of an oral dental appliance used in the mouth and worn over the
teeth of an individual while sleeping to reduce the effects of snoring and sleep apnea,”
in International Class 10.1

1 Application Serial No. 86882668 was filed on January 21, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
Serial No. 86882668
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The Trademark Examining Attorney initially issued three refusals of registration
of Applicant’s mark under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051
and 1127, all based on the claimed insufficiency of the specimen of use submitted with
Applicant’s Statement of Use, which is depicted below:2
3
The first refusal was that “the specimen does not show the applied-for mark in use in
commerce with a liner that is an integral component of an oral dental appliance”

intention to use the mark in commerce. As discussed below, following publication of the
application for opposition, Applicant filed a Statement of Use supported by a specimen of use.
2 In his initial appeal brief, Applicant claimed that this appeal “has facts and issues that are
similar to those” in Applicant’s appeal in Application Serial No. 86915495, and suggested
that “for purposes of efficiency, both appeals could be decided at the same time.” 4 TTABVUE
1. That request is now moot because the refusal to register in Application Serial No. 86915495
has been affirmed.
3 As discussed below, the specimen as submitted by Applicant has relatively poor resolution.
Serial No. 86882668
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because “the package displays the proposed mark without any reference to the liner
so that consumers would associate the mark with a liner.”4 The second refusal was
that “the applied-for mark, as used on the specimen of record, [fails to] function as a
trademark to indicate the source of applicant’s goods and to identify and distinguish
them from others.”5 The third refusal was that “the specimen does not show the
applied-for mark in the drawing in use in commerce” because “the specimen displays
the mark as NEW Thermal Matrix [and] the drawing displays the mark as
THERMAL MATRIX.”6
After Applicant appealed, and he and the Examining Attorney filed briefs
regarding these three refusals, the Examining Attorney requested a remand of the
application to issue a fourth refusal that the proposed mark is “merely descriptive” of
the goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). 8 TTABVUE 1.7 The Board granted that request, 9 TTABVUE 2, and
remanded the application to the Examining Attorney, who issued the new mere

4 September 29, 2017 Final Office Action at 1. All citations in this opinion to the record, both
before appeal and following the remand discussed below, are to pages from the Trademark
Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark
Office (“USPTO”). The May 3, 2017 Office Action initially rejecting the specimen stated that
Applicant could submit a new drawing of the mark that agreed with the mark on the
specimen, or a substitute specimen, but Applicant elected to do neither.
5 September 29, 2017 Final Office Action at TSDR 1.
6 Id.
7 Citations in this opinion to the briefs and the remand request refer to TTABVUE, the
Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear.
Serial No. 86882668
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descriptiveness refusal. After Applicant responded to the new refusal,8 the
Examining Attorney made that refusal final,9 and the appeal was resumed. 11
TTABVUE. Applicant and the Examining Attorney subsequently filed supplemental
briefs directed to the mere descriptiveness refusal. 12 TTABVUE; 14 TTABVUE.
We affirm the specimen and mere descriptiveness refusals, and reverse the refusal
based on disagreement between the mark shown in the drawing and the mark shown
on the specimen. We do not reach the failure-to-function refusal. See In re Soc’y of
Health and Physical Educators, 127 USPQ2d 1584, 1590 (TTAB 2018).
I. Record on Appeal and Evidentiary Issue
In the Office Action making final the initial three refusals to register, the
Examining Attorney made of record a page from the website at dynaflex.com on which
one of Applicant’s apparent competitors displays what the website describes as a
“thermal acrylic liner” as part of its “DynaFlex Dorsal Device.”10 In the Office Action
asserting the new mere descriptiveness refusal, the Examining Attorney made of
record a dictionary definition of the word “matrix,”11 and Internet webpages
discussing Applicant’s goods as well as the term “thermal matrix” as used in
connection with Applicant’s goods.12 In the Office Action making final the
descriptiveness refusal, the Examining Attorney made of record additional webpages

8 November 12, 2019 Response to Office Action at TSDR 1.
9 December 2, 2019 Final Office Action at TSDR 1.
10 September 29, 2017 Final Office Action at TSDR 2.
11 May 22, 2019 Office Action at TSDR 2-3 (MERRIAM-WEBSTER DICTIONARY).
12 Id. at TSDR 3, 5-6.
Serial No. 86882668
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regarding the use of the term “thermal matrix” in connection with Applicant’s goods,
including pages from third-party websites and pages from Applicant’s website at
snorerx.com.13
Before proceeding to the merits of the four refusals, we address an evidentiary
matter. Applicant attached to his initial appeal brief what he describes as “a copy of
a drawing from the applicant’s pending U.S. Patent Application No. 15/229,715, filed
August 5, 2016.” 4 TTABVUE 4. Applicant states that he submitted the patent
drawing “as extrinsic evidence of the visible nature of the applicant’s liner (i.e., solely
for the purpose of clarity)” and that the drawing “illustrates an oral dental appliance
which is substantially identical to the oral dental appliance that is pictured on the
applicant’s package.” Id. The Examining Attorney objects in his initial brief to the
patent drawing on the grounds that it was not previously made of record, and that
Applicant “has not established the relevancy of a patent document that is not readily
available to consumers when viewing product packaging.” 6 TTABVUE 4. We sustain
the objection on the untimeliness ground.14
Rule 2.142(d) of the Trademark Rules of Practice, 37 C.F.R. § 2.142(d), provides
in pertinent part that the “record in an application should be complete prior to the

13 December 2, 2019 Final Office Action at TSDR 2-7.
14 The Examining Attorney’s second ground involves the probative value of the patent
drawing if it were deemed to be part of the record. To the extent that this ground is an
evidentiary objection at all, it is mooted by our exclusion of the drawing. In any event, as
discussed below, we must assess the sufficiency of Applicant’s specimen primarily by resort
to the specimen itself, because the specimen must show a direct association of the proposed
mark with the goods for which registration is sought. Materials other than the specimen that
are not exposed to the consuming public when viewing the product may not be probative of
whether the use of the mark on the specimen creates such an association.
Serial No. 86882668
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filing of an appeal,” that “[e]vidence should not be filed with the Board after the filing
of a notice of appeal,” and that if an appellant “desires to introduce additional
evidence after an appeal is filed, the appellant . . . should submit a request to the
Board to suspend the appeal and to remand the application for further examination.”
The patent drawing was available to Applicant for submission during prosecution if
Applicant wished to make it of record, and Applicant did not request a remand to
submit it post-appeal. The submission of the patent drawing with Applicant’s appeal
brief is untimely, and we have given the patent drawing no consideration in our
decision. In re Jimmy Moore, LLC, 119 USPQ2d 1764, 1766-67 (TTAB 2016)
(excluding as untimely the first page of the applicant’s patent submitted with its
appeal brief).
II. Analysis of Refusals
“An application initially based on Trademark Act Section 1(b) must, upon the
filing of . . . a statement of use under Section 1(d), include one specimen showing the
applied-for mark in use in commerce, on or in connection with those goods or services
identified in the application . . . .” In re Florists’ Transworld Delivery, Inc., 119
USPQ2d 1056, 1062 (TTAB 2016). “A trademark specimen must show use of the mark
on the goods, on containers or packaging for the goods, on labels or tags affixed to the
goods, or on a display associated with the goods.” Trademark Rule 2.56(b)(1), 37
C.F.R. § 2.56(b)(1).15 Applicant submitted a photograph of a package, i.e., a “container

15 See also Trademark Act Section 45, 15 U.S.C. § 1127: “a mark shall be deemed to be in use
in commerce . . . on goods when . . . it is placed in any manner on the goods or their containers
or the displays associated therewith or on the tags or labels affixed thereto, or if the nature
Serial No. 86882668
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for the goods,” as a specimen of use, and the Examining Attorney does not dispute
that the packaging is an appropriate specimen type under Trademark Rule 2.56(b)(1).
Instead, the Examining Attorney bases the initial three refusals on the manner in
which the proposed mark is used on the package. He bases the fourth refusal (i.e.,
mere descriptiveness) on evidence other than the specimen, which he argues shows
the descriptive significance of the proposed mark in relation to the goods.
A. Whether the Specimen Shows the Mark Used in Connection
With the Goods Identified in the Application
The Examining Attorney first argues that the specimen “does not show the mark
used in a manner that would be perceived by potential purchasers as identifying
applicant’s specific goods and indicating the source of the goods.” 6 TTABVUE 4. In
particular, he argues that
The picture of the dental appliance on the package does not
show or highlight the lining of the dental appliance in a
way where consumers are likely to associate the wording
in the mark as the source indicator for a liner. The only
component shown in the picture that is discernable from
the rest of the appliance is the part that is colored black
with a downward white arrow and the term “SQUEEZE”
appearing in white. Other than this one particular
component, the picture of the dental appliance shown on
the package does not call to attention any other
components because it is presented as a single mold.
Id. at 4-5. The Examining Attorney contrasts the depiction of the liner on Applicant’s
specimen with “the display of another liner for a competitor’s product that is very
similar to applicant’s dental appliance,” on which display he claims that “the liner is

of the goods makes such placement impracticable, then on documents associated with the
goods or their sale.”
Serial No. 86882668
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clearly visible and shown as a component of a dental appliance.” Id. at 5. We depict
below the portion of the webpage in the record to which the Examining Attorney
refers:
16
The Examining Attorney concludes that it “would have been very simple to make a
reference to the liner or highlight it in some manner where prospective customers
would unquestionably associate the wording THERMAL MATRIX with a liner,” but
that it “cannot be said that applicant achieved such an association with the
[specimen]” because “the picture of the appliance on the package lacks sufficient
clarity to illustrate any liner component.” Id. at 5-6.
Applicant argues that his “applied-for mark is particularly positioned on [his
specimen] so as to lie alongside the pictured oral dental appliance and adjacent the
integral liner,” 4 TTABVUE 2, that the “liner which is an integral part of the
applicant’s oral dental appliance is clearly visible on the [specimen],” and that the

16 September 29, 2017 Final Office Action at TSDR 2 (emphasis supplied by the Examining
Attorney).
Serial No. 86882668
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proposed mark “is strategically located on the packaging so as to be positioned
immediately adjacent the appliance and [to] lie as close as is practicable to the liner
that is shown running along the top thereof.” Id. at 4.
Neither Applicant nor the Examining Attorney discusses the standard for
determining when a proposed mark is associated on a specimen with the goods for
which registration is sought.17 The predecessor of our primary reviewing court has
made clear that “the manner in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be carefully considered in determining
whether the asserted mark has been used as a trademark with respect to the
goods named in the application.” In re Bose Corp., 546 F.2d 893, 192 USPQ 213,
216 (CCPA 1976) (emphasis added). In Bose, the court affirmed the refusal because
the specimen depicted that the mark was used on the applicant’s loudspeaker-testing
computer, not on “loudspeaker systems,” which were the identified goods. Id.
Similarly, the court in In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ
166 (CCPA 1975), affirmed the refusal to register OXINITE for a “mixture of gases
used in a sewage treatment process” because the specimen showed that what the
applicant was commercializing was not the gases themselves, but an apparatus that
produced the gases. 186 USPQ at 167. In this regard, we have previously said that

17 The Examining Attorney cites no cases in support of this refusal, 6 TTABVUE 4-6, while
Applicant cites In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987), in arguing that
the use of THERMAL MATRIX on his specimen was “calculated to project to purchasers or
potential purchasers a single source or origin for” his goods. 4 TTABVUE 4. Remington is
inapposite because it held that the term PROUDLY MADE IN USA did not function as a
mark for electric shavers because it was merely an informational slogan. 3 USPQ2d at 1715.
The question here is whether the mark is associated with the applied-for goods.
Serial No. 86882668
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“[i]mplicit in the definition of a trademark is a requirement that there be a direct
association between the mark sought to be registered and the goods specified in the
application, that is, that the mark be used in such a manner that it would be readily
perceived as identifying the specified goods and distinguishing a single source or
origin for the goods.” In re Minerva Assocs., Inc., 125 USPQ2d 1634, 1638 (TTAB
2018). “The mere fact that a designation appears on the specimens of record does not
make it a trademark.” Id. at 1639.
Under this standard, we must determine whether the mark as it appears on
Applicant’s specimen would be readily perceived as identifying a “heat responsive and
malleable liner that is an integral component of an oral dental appliance used within
the mouth and worn over the teeth of an individual while sleeping to reduce the
effects of snoring and sleep apnea,” as the goods are ultimately described in the
application. The manner in which Applicant “has employed [his] asserted mark, as
evidenced by the [specimen] of record, must be carefully considered in determining
whether the asserted mark has been used as a trademark with respect to the goods
identified in the application.” Id. at 1636. We “may also consider other evidence
bearing on the question of what impact applicant’s use is likely to have on purchasers
and potential purchasers.” In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381
(TTAB 1992).
Applicant’s specimen displays a picture that shows the entire oral dental
appliance in which the liner is contained, but the liner for which registration is sought
is a component that is distinct from the entire appliance that is shown on the
Serial No. 86882668
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specimen. The Examining Attorney, however, does not contend that Applicant’s mark
identifies the appliance itself rather than the liner component. Cf. TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1402.05(a) (Oct. 2018) (when
the goods identified in an application are only a component or ingredient of a product,
“[t]he examining attorney should examine the specimen to determine whether it
shows use of the mark to identify the separate component or ingredient or the finished
product in its entirety” because such components or ingredients are classified in the
class of the finished product). Instead, the Examining Attorney essentially claims
that the mark on the specimen does not identify the component itself. We agree.
Specimens for goods and services must embody “something which creates in the
mind of the purchaser an association between the mark and the [identified goods or
services] . . . .” In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting
In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). The specimen
here displays the registered SNORE Rx® mark at the top of the package, above the
tagline “The Prescription for Snoring” and a picture of the appliance. Given the
relative size and positioning of the SNORE Rx mark, it is that mark that will be
viewed as identifying the appliance itself.
The specimen also displays the words “Thermal Matrix™” beneath the word
“NEW,” all within a sunburst or gold seal, which is positioned at one end of the
appliance:
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The positioning of the words “Thermal Matrix” within the sunburst, the presence of
the descriptive term “NEW” above “Thermal Matrix,”18 and “the ‘use of the
designation ‘™,’ [which] lends a degree of visual prominence to the term,’” In re Sones,
590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (quoting In re Dell, Inc., 71
USPQ2d 1725, 1729 (TTAB 2004)), combine to suggest Applicant’s intention to use
THERMAL MATRIX as a mark for some “new” feature of the appliance, but the issue
is whether the proposed mark THERMAL MATRIX creates “in the mind of the
purchaser an association between the mark” and the specific liner component for
which registration is sought. WAY Media, 118 USPQ2d at 1698.
Where, as here, an applicant seeks registration for a component of a product
rather than for the product itself, it is particularly important that the specimen
contain some visual or verbal identification of the component to create the required
direct association between the mark and the identified goods. See Minerva Assocs.,
125 USPQ2d at 1638-39 (a mark must “be used in such a manner that it would be

18 We discuss below the Examining Attorney’s separate refusal based on the claim that the
drawing of the applied-for mark THERMAL MATRIX is not a substantially exact
representation of the mark as actually used because that mark is “NEW Thermal Matrix.”
Serial No. 86882668
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readily perceived as identifying the specified goods and distinguishing them from the
goods of others.”). The use of the proposed mark in a separate display of the liner
component would create the direct association, but it is not necessary so long as there
is “something which creates in the mind of the purchaser an association between the
mark and the [component] . . . .” WAY Media, 118 USPQ2d at 1698.
We agree with the Examining Attorney that Applicant did not make a sufficient
“reference to the liner or highlight it in some manner where prospective customers
would unquestionably associate the wording THERMAL MATRIX with [the] liner.” 6
TTABVUE 5. The specimen that Applicant submitted does not sufficiently identify
any specific component, much less the component for which registration is sought,
visually or verbally, to create the required direct association between the proposed
mark and that component. We affirm the refusal to register on the ground that the
specimen does not show the mark used in commerce in connection with the goods
identified in the application.
B. Whether the Mark on the Specimen is a Substantially Exact
Representation of the Mark as Shown in the Drawing
As noted above, the Examining Attorney also refused registration because the
mark depicted on the specimen is NEW THERMAL MATRIX, not THERMAL
MATRIX, as depicted in the drawing. See Trademark Rule 2.52, 37 C.F.R. § 2.52 (the
drawing of a mark in an application “depicts the mark sought to be registered”). As a
result, according to the Examining Attorney, the specimen runs afoul of the
requirement of Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b), that “[i]n an application
under section 1(b) of the Act . . . once a statement of use under § 2.88 has been filed,
Serial No. 86882668
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the drawing of the mark must be a substantially exact representation of the mark as
used with the goods . . . .” The drawing here depicts the proposed THERMAL MATRIX
mark in standard characters. For ease of reference in following our analysis of this
refusal, we depict below how the words THERMAL MATRIX appear on Applicant’s
specimen:

Specifically, the Examining Attorney argues that the “specimen displays the mark
as ‘NEW Thermal Matrix’ and the drawing displays the mark as THERMAL
MATRIX,” that the “term ‘NEW’ is descriptive but not a generic word” and that it
“modifies the wording THERMAL MATRIX,” and that “the term NEW will not be
read as a separate word,” but rather “will be read in conjunction with THERMAL
MATRIX because it functions as an adjective for the wording THERMAL MATRIX.”
6 TTABVUE 7.
Applicant argues that “consumers are not likely to believe that the highly
descriptive (i.e., laudatory) word ‘NEW’ as printed on the applicant’s packaging is
part of the applied for mark THERMAL MATRIX” because “the letter size and style
of the word ‘NEW’ are visually distinguishable from those of the words ‘Thermal
Matrix’ which are located separately on the package.” 4 TTABVUE 5. We agree with
Applicant.
Serial No. 86882668
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In In re Yale Sportswear Co., 88 USPQ2d 1121, 1122-23 (TTAB 2008), the Board
observed that the principle under Trademark Rule 2.51(b) that “if the drawing
includes less than the mark which is actually used, registration must be refused”
raises “an obvious question: what mark is applicant actually using?” The Board held
that the “answer is sometimes not clear, because it is not at all unusual for specimens
to comprise multiple trademarks, artwork, and other matter, whether registrable or
not.” Id. The Board noted that “it is up to the applicant to choose what it seeks to
register,” but that “what applicant seeks to register must not only be in use , it must
make a distinct commercial impression as used.” Id. at 1123 (citing In re 1175856
Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006) (“[I]t is well settled that an
applicant may seek to register any portion of a composite mark if that portion
presents a separate and distinct commercial impression”)). Yale Sportswear candidly
acknowledged that “‘it all boils down to a judgment as to whether that designation
for which registration is sought comprises a separate and distinct ‘trademark’ in and
of itself,’” id. (quoting Institut Nat’l Des Appellations d’Origine v. Vintners Int’l Co.,
958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. 1992)), and found that the proposed mark
UPPER 90 did not make a separate and distinct commercial impression from the term
UPPER 90° that appeared on the applicant’s specimen. Id. at 1123-24.
We find here that the proposed mark THERMAL MATRIX “comprises a separate
and distinct ‘trademark’ in and of itself,’” id. at 1123, as it appears on Applicant’s
specimen. The word NEW appears in all capital letters on the specimen above the
words “Thermal Matrix,” which are depicted in initial capital letters and are followed
Serial No. 86882668
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by the ™ symbol. Given the descriptive, non-source identifying nature of the word
NEW acknowledged by the Examining Attorney and Applicant, and the fact that the
words “Thermal Matrix” are set apart visually from the word NEW, we find that the
drawing of the mark as THERMAL MATRIX is “a substantially exact representation
of the mark as used with the goods,” Trademark Rule 2.51(b), and we reverse the
refusal to register based on that rule.
C. Whether the Mark is Merely Descriptive
1. Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,” unless the mark has acquired
distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f).19 “A term is deemed
to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if
it forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services.” In re Canine Caviar Pet
Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018) (citing In re Chamber of Commerce
of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978)).

19 Applicant does not claim that if THERMAL MATRIX is found to be merely descriptive, it
is registrable because it has acquired distinctiveness.
Serial No. 86882668
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“A mark need not immediately convey an idea of each and every specific feature
of the goods in order to be considered merely descriptive; it is enough if it describes
one significant attribute, function or property of the goods .” In re Fat Boys Water
Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016) (citing Gyulay, 3 USPQ2d at 1010).
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,’” Chamber of Commerce, 102
USPQ2d at 1219 (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007)), and “not in the abstract or on the basis of guesswork.” Fat Boys, 118
USPQ2d at 1513 (citing Abcor Dev., 200 USPQ at 218). We ask “whether someone
who knows what the goods and services are will understand the mark to convey
information about them.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965,
128 USPQ2d 1370, 1374 (Fed. Cir. 2018) (quoting DuoProSS Meditech Corp. v. Inviro
Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (internal
quotation omitted)). A mark is suggestive, and not merely descriptive, if it requires
imagination, thought, and perception on the part of someone who knows what the
goods are to reach a conclusion about their nature from the mark. See, e.g., Fat Boys,
118 USPQ2d at 1515.
Applicant’s proposed mark consists of the words THERMAL and MATRIX . We
“must consider the commercial impression of a mark as a whole.” Real Foods, 128
USPQ2d at 1374 (quoting DuoProSS, 103 USPQ2d at 1757 (citation omitted)). “In
Serial No. 86882668
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considering [a] mark as a whole, [we] ‘may not dissect the mark into isolated
elements,’ without ‘consider[ing] . . . the entire mark,’” id. (quoting DuoProSS, 103
USPQ2d at 1757), but we “may weigh the individual components of the mark to
determine the overall impression or the descriptiveness of the mark and its various
components.” Id. (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d
1370, 1372 (Fed. Cir. 2004)). Indeed, we are “required to examine the meaning of each
component individually, and then determine whether the mark as a whole is merely
descriptive.” DuoProSS, 103 USPQ2d at 1758.
If the words in the proposed mark are individually descriptive of the identified
goods, we must then determine whether their combination “conveys any distinctive
source-identifying impression contrary to the descriptiveness of the individual parts.”
Fat Boys, 118 USPQ2d at 1515-16 (quoting Oppedahl & Larson, 71 USPQ2d at 1372).
If each word instead “retains its merely descriptive significance in relation to the
goods, the combination results in a composite that is itself merely descriptive.” Id. at
1516 (citing In re Tower Tech., Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)); see also
In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953-55 (TTAB 2018).
“Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers[,] and other publications.” Real Foods, 128
USPQ2d at 1374 (quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127
USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
publications and use ‘in labels, packages, or in advertising material directed to the
Serial No. 86882668
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goods.’” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017)
(quoting Abcor Dev., 200 USPQ at 218). See also In re Omniome, Inc., 2020 USPQ2d
3222, *5 (TTAB 2019) (cataloging sources of evidence of descriptiveness).
“It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services.” Fat Boys, 118 USPQ2d at 1513 (citing
Gyulay, 3 USPQ2d at 1010). “If such a showing is made, the burden of rebuttal shifts
to the applicant.” Id. (citing In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632
(Fed. Cir. 2003)). “The Board resolves doubts as to the mere descriptiveness of a mark
in favor of the applicant.” Id.
2. Summary of Arguments
Applicant argues that “the Examining Attorney has reached his conclusion that
THERMAL MATRIX is merely descriptive of a feature or characteristic of the
applicant’s goods entirely in the abstract.” 12 TTABVUE 3. Applicant “admits that
‘thermal’ and ‘matrix’ have dictionary definitions and that he has disclaimed the
descriptive word ‘thermal,’” but contends that “the Examining Attorney has focused
entirely on the meanings of the individual words ‘thermal’ and ‘matrix’ while
overlooking the significance of the mark THERMAL MATRIX taken as a whole.” Id.
at 4.
Applicant further argues that “[t]here is simply no direct relationship between the
words ‘thermal’ and ‘matrix’ that would enable a potential purchaser to appreciate or
understand a feature or characteristic of the applicant’s goods as being an integral
liner of an oral dental appliance.” Id. He concedes that “the individual words ‘thermal’
and ‘matrix’ may be descriptive and unregisterable [sic] in and of themselves,” id. at
Serial No. 86882668
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4-5, but argues that “the compound mark THERMAL MATRIX creates a new and
different commercial impression that imparts a meaning which can function as an
indication of more than a mere description of a feature or characteristic of the
applicant’s heat responsive and malleable liner for an oral dental appliance.” Id. at
5.
Applicant also contends that in his mark, “normally descriptive words like ‘matrix’
have been combined to create an unusual or unique combination when applied to the
applicant’s goods.” Id. According to Applicant, “nothing from the dictionary definition
[in the record] would lead consumers to believe that the totally innocuous word
‘matrix’ is in some way associated with an oral dental appliance,” and that “other
than vague references thereto made by the applicant in his advertising, the
Examining Attorney has provided no evidence to show that ‘thermal matrix’ would or
could be understood by consumers to refer to a liner for a dental appliance.” Id.
Applicant concludes that “rather than being merely descriptive . . . the applied for
mark THERMAL MATRIX is otherwise arbitrary and fanciful and readily able to
distinguish the applicant’s dental appliance having an integral heat responsive and
malleable liner from the oral appliances of his competitors.” Id.
The Examining Attorney responds that the “wording THERMAL MATRIX is
merely a combination of two descriptive terms.” 14 TTABVUE 5. He notes that
Applicant disclaimed the exclusive right to use THERMAL apart from the mark as
shown during prosecution, and argues that the “evidence shows the applicant uses
the word ‘matrix’ to describe a design feature of the liner of the dental appliance.” Id.
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He cites a dictionary definition of “matrix” as “‘something shaped like a pattern of
lines and spaces,’” id.,20 and argues that the “record includes actual marketing and
promotional evidence which shows the word ‘matrix’ used to describe the design
feature of applicant’s liner.” Id. The pertinent portions of the cited materials include
the following (all highlighting was supplied by the Examining Attorney):
21

20 May 22, 2019 Office Action at TSDR 2 (MERRIAM-WEBSTER DICTIONARY).
21 Id. at TSDR 3 (SnoreLab website).
Serial No. 86882668
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22

22 Id. at TSDR 4 (tuck.com).
Serial No. 86882668
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23
24

23 Id. at TSDR 5 (amazon.com).
24 Id. at TSDR 6 (Apnea Sciences website).
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25
26

25 Id.
26 December 2, 2019 Final Office Action at TSDR 2 (Well Aware Systems website).
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On the basis of these materials, the Examining Attorney argues:
One of the prominent features of applicant’s oral
appliances touted in various advertising materials is the
ability of each user to personalize their device with a
custom impression. It is this matrix design which permits
the personalization of the liner through the use of heat
which achieves the custom impression. Consumers viewing
the wording THERMAL MATRIX used in connection with
a “heat responsive and malleable liner,” that is marketed
and described as having a matrix design, will perceive the
wording in the mark for its descriptive meaning and not for
its source indicating significance; especially when the
wording is used to describe a feature of the goods within
various promotional materials.
14 TTABVUE 9.
The Examining Attorney also argues that “Applicant has not provided a sufficient
explanation on how the combination of the terms THERMAL and MATRIX creates a
unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in
relation to the goods,” id. at 8, and that Applicant “did not assert exactly what is the
meaning conveyed by combining THERMAL with MATRIX.” Id. at 9.
3. Analysis of Refusal
As discussed above, we assess the descriptiveness of each element of the proposed
mark singly and then in combination. Applicant all but admits that each word in the
proposed mark is individually descriptive of his identified goods. He concedes that
“the individual words ‘thermal’ and ‘matrix’ may be descriptive and unregisterable
[sic] in and of themselves,” 12 TTABVUE 4-5, and “admits that ‘thermal’ and ‘matrix’
have dictionary definitions and that he has disclaimed the descriptive word
‘thermal.’” Id. at 4. The disclaimed word “thermal” means “of, relating to, or caused
Serial No. 86882668
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by heat,”27 while the noun “matrix” means, inter alia, “something within or from
which something else originates, develops, or takes form,” and “something shaped
like a pattern of lines and spaces.”28 As shown in the webpages above, Applicant’s
“heat responsive and malleable liner” embodies “a pattern of lines and spaces”
through which the user can personalize the fit of the oral appliance through the
application of heat. We find that each word is highly descriptive of the goods.
We turn now to consideration of whether the proposed THERMAL MATRIX mark
as a whole is something more than merely the sum of its descriptive parts. The
advertising and promotional materials for Applicant’s oral appliance shown above
foreclose any such showing. Pages from Applicant’s website at snorerx.com promote
the oral appliance shown in Applicant’s specimen, which is sold under Applicant’s
registered mark SnoreRx, 12 TTABVUE 3, and state that “[m]edical professionals
recommend oral appliances be designed with a custom impression to prevent tooth
movement.”29 The website touts the product’s “Thermal Matrix Design,” which
“features a thermal matrix material that enables each user to personalize their device
with a custom impression” through “a simple step by step process that can be done in
the comfort of your home”:

27 May 6, 2018 Office Action at TSDR 3 (MERRIAM-WEBSTER DICTIONARY).
28 May 22, 2019 Office Action at TSDR 1 (MERRIAM-WEBSTER DICTIONARY).
29 Id. at TSDR 6.
Serial No. 86882668
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30
The webpage “simply uses the same two words as the mark” along with text “to
describe the relevant feature of” Applicant’s goods, N.C. Lottery, 123 USPQ2d at 1710,
namely, that through the application of heat to the “thermal matrix material,”
consumers can “personalize their device[s] with a custom impression.” The
“commercial context here demonstrates that a consumer would immediately
understand the intended meaning of [THERMAL MATRIX]. In other words, the
evidence shows that the mark is less an identifier of the source of goods . . . and more
a description of a feature of characteristics of those goods . . . .” Id. See also Abcor
Dev., 200 USPQ at 218 (“Evidence of the context in which a mark is used on labels,
packages, or in advertising material directed to the goods is probative of the reaction
of prospective purchasers to the mark.”); RxD Media, LLC v. IP Application Dev. LLC,
125 USPQ2d 1801, 1814 (TTAB 2018) (opposer’s own descriptive use of IPAD “directly
conveyed to consumers the purpose or function of [its] services”). Indeed, we find that
the text used on the snorerx.com website is the most compelling evidence of the mere

30 Id.
Serial No. 86882668
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descriptiveness of Applicant’s proposed mark as a whole because it explains that the
liner is made of a material in a matrix that is affected by heat and that enables each
user to personalize the fit of the appliance. Cf. Mecca Grade Growers, 125 USPQ2d at
1958 (an applicant’s own use of its mark on its website may be the most probative
and damaging evidence of the genericness of its claimed mark).
The third-party webpages shown above confirm that when Applicant’s goods are
advertised and promoted by others, the same descriptive message of the proposed
mark would be understood by consumers. The Amazon.com webpage reproduces
portions of the snorerx.com webpage materials, which highlight the product’s
“Thermal Matrix Design” that “features a thermal matrix material that enables each
user to personalize their device with a custom impression.”31 The
WellAwareSystems.com article touts the product’s “thermal matrix design” through
which “[y]ou can personalize the SnoreRx to fit exactly your mouth since you’ll be
making your own dental impression for a custom fit by heating up the mouthpiece
making it pliable.”32 The SnoreLab webpage reproduces Applicant’s marketing that
the product “boasts . . . a thermal matrix design for custom fitting, and precise 1mm
adjustments to get optimum comfort, fit and function.”33 Applicant’s and the third-
party webpages in the record establish the descriptiveness of the proposed mark as a
whole.

31 Id. at TSDR 5.
32 December 2, 2019 Final Office Action at TSDR 2.
33 May 22, 2019 Office Action at TSDR 3.
Serial No. 86882668
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In addition to the arguments summarized above, Applicant advances three other
arguments in support of his claim that the proposed mark is suggestive, not merely
descriptive. He argues that “there is nothing of record herein which would show or
suggest that the compound term THERMAL MATRIX is a commonly-used term of
art or would have any significance or meaning in the trade or business of applicant.”
12 TTABVUE 4. According to Applicant, the “concept of mere descriptiveness must
relate to general and readily recognizable word formulations and meanings, either in
a popular or technical usage context,” and “should not penalize coinage of hitherto
unused word combinations whose import would not be grasped without some measure
of imagination and mental pause,” id., and the “fact that there is no competitive need
to use the term ‘thermal matrix’ in describing the applicant’s heat responsive liner
for a dental appliance is a relevant indicator of a suggestive rather than a descriptive
mark.” Id. at 6-7.
Applicant’s arguments purport to impose non-existent obligations on the
Examining Attorney. “[T]here is no requirement that the Examining Attorney prove
that others have used the mark at issue or that they need to use it, although such
proof would be highly relevant to an analysis under Section 2(e)(1).” Fat Boys, 118
USPQ2d at 1514. “The fact that Applicant may be the first or only user of a term does
not render that term distinctive” if, as here, it has been shown to be merely
descriptive of the goods identified in the application. Id.; see also KP Permanent
Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838
(2004) (trademark law does not countenance someone obtaining “a complete
Serial No. 86882668
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monopoly on use of a descriptive term simply by grabbing it first”) (citation omitted);
Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (even
“novel way of describing” the product or service (COLOR BATH for hair coloring
product) can nonetheless be merely descriptive if “[t]he resultant expression is
nothing but the normal use of the English language.”) (emphasis added).
Applicant also argues that “the Examining Attorney has provided no evidence to
show that ‘thermal matrix’ would or could be understood by consumers to refer to a
liner for a dental appliance,” 12 TTABVUE 5, and that “there is absolutely no reason
why an average purchaser would understand that THERMAL MATRIX refers in any
way to a heat responsive and malleable liner on one hand or to a dental appliance on
the other.” Id. at 6. These arguments address the wrong inquiry. “[T]he question is
not whether someone presented only with the mark could guess the goods and
services listed in the identification. Rather, the question is whether someone who
knows what the goods and services are will understand the mark to convey
information about them.” Mecca Grade Growers, 125 USPQ2d at 1953 (citing
DuoProSS, 103 USPQ2d at 1757).
Finally, Applicant argues that in “the extreme case where THERMAL MATRIX
might not be considered entirely original and fanciful, at least some imagination,
thought or perception would be required before purchasers could understand a
feature or characteristic of the applicant’s liner as an integral component of an oral
dental appliance.” 12 TTABVUE 6. Applicant argues that if a purchaser “must
exercise mature thought or follow in a multi-stage reasoning process in order to
Serial No. 86882668
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determine what product or service characteristic the term indicates, then the term is
suggestive rather than merely descriptive.” Id. at 7. The latter argument correctly
states the law, but the former argument fails on the facts because Applicant’s own
promotional materials and the third-party webpages shown and discussed above
make it clear that “a consumer would immediately understand the intended meaning
of” the proposed THERMAL MATRIX mark as a descriptor of a key product feature,
N.C. Lottery, 123 USPQ2d at 1710, and eliminate the need for any “imagination,
thought or perception” to determine the term’s significance.
On the basis of the record as a whole, we find that the Examining Attorney
established that the proposed THERMAL MATRIX mark merely describes a feature
of Applicant’s “heat responsive and malleable liner that is an integral component of
an oral dental appliance used in the mouth and worn over the teeth of an individual
while sleeping to reduce the effects of snoring and sleep apnea,” namely (in the words
of the snorerx.com website), that the “thermal matrix material enables each user to
personalize their device with a custom impression.” See Fat Boys, 118 USPQ2d at
1513. Because Applicant did not successfully rebut that showing, we affirm the mere
descriptiveness refusal under Section 2(e)(1).
Decision: The refusal to register on the ground that the specimen does not show
the mark used in commerce in connection with the goods identified in the application
is affirmed.34

34 As noted above, we do not reach the failure-to-function refusal.
Serial No. 86882668
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The refusal to register based on the failure of the drawing to be a substantially
exact representation of the mark as used on the specimen of record is reversed.
The refusal to register on the ground that the mark is merely descriptive is
affirmed.