Light Sciences Oncology, Inc.

Trademark Trial and Appeal Board

Dec 19, 2007

No. 78775491 (T.T.A.B. Dec. 19, 2007)

Mailed: December 19, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Light Sciences Oncology, Inc.
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Serial No. 78775491
_______

Lorraine Linford of Seed IP Law Group PLLC for Light
Sciences Oncology, Inc.

Joanna Dukovcic, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Hohein and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Light Sciences Oncology, Inc., applicant, has filed an
application to register the mark VASCULAR RECONDITIONING
(in standard character form) on the Principal Register for
“pharmaceuticals, namely, energy-activated compounds used
for treatment of cardiovascular systems” in International
Class 5 and “catheters” in International Class 10.1

1 Application Serial No. 78775491, filed on December 16, 2005,
under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b),
alleging a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B
Serial No. 78775491
2
The examining attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its goods. After the examining attorney
made the descriptiveness refusal final, applicant filed a
request for reconsideration. Upon the examining attorney’s
denial of the request for reconsideration, applicant filed
this appeal. Both applicant and the examining attorney
have filed briefs. We affirm the refusal to register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a significant
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used, or intended to be used. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
Serial No. 78775491
3
necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient,
quality, characteristic, function, feature, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which the mark is
used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978).
Finally, while a combination of descriptive terms may
be registrable if the composite creates a unitary mark with
a separate, nondescriptive meaning, In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968), the mere
combination of descriptive words does not necessarily
create a nondescriptive word or phrase. In re Associated
Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If
each component retains its descriptive significance in
relation to the goods or services, the combination results
Serial No. 78775491
4
in a composite that is itself descriptive. In re Oppedahl
& Larson LLP, supra.
It is the examining attorney’s position that “when the
proposed mark is applied to the applicant’s goods, the user
is immediately informed that the purpose of both the
pharmaceuticals and the catheters is for VASCULAR
RECONDITIONING, or restoring parts of the cardiovascular
system to good condition.” Br. p. 5. In support of her
position, the examining attorney submitted the following
definitions for the words “recondition” and
“reconditioning” from Bartleby.com and dictionary.com:
Recondition - To restore to good condition,
especially by repairing, renovating, or
rebuilding.

Reconditioning – To restore to good condition,
especially by repairing, renovating or
rebuilding.

We further take judicial notice of the following
dictionary definition from The American Heritage Dictionary
of the English Language (4th ed. 2006) of the word
“vascular”:2
Vascular adj. Of, characterized by, or containing
vessels that carry or circulate fluids, such as
blood, lymph, or sap, through the body of an
animal or plant.

2 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Serial No. 78775491
5
In addition, she submitted printouts of webpages from
various websites retrieved from the Internet where the
words “reconditioning” and “vascular” are used by third
parties in various medical contexts, including the
cardiovascular field. A few examples are highlighted
below:
Cardiac Rehabilitation includes exercise classes
for re-conditioning after a cardiac event,
pulmonary reconditioning and reconditioning for
patients with peripheral vascular disease.
www.dmcares.com;

This figure does not include sepsis related to
peripheral vascular or pulmonary artery
catheters. It is, therefore, not surprising that
vascular catheters are a major source of
nosocomial sepsis and contribute to the majority
of nosocomial cases of septicemia due to ...
www.meditheses.com;

Gastroenterology ... The division conducts basic
research in the following areas ... Splanchnic
blood flow, tissue ischemia, reconditioning, and
regulation of blood flow. www.intmed.vcu.edu;
and

A new method for ex vivo evaluation, with the
potential for reconditioning of marginal and
nonacceptable lungs, has been developed.
Ats.stsnetjournals.org.

In addition, the examining attorney submitted an
excerpt from applicant’s website:
Vascular Reconditioning, Inc. ... Vascular
Reconditioning (VRI) is developing a new coronary
atherosclerosis treatment for interventional
cardiologists to treat vulnerable plaque, the
underlying cause of heart attacks ... VRI is
preparing to compete the extensive preclinical
Serial No. 78775491
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evaluation of the cardiovascular properties of
Litx already undertaken with the objective of
initiating clinical trials of Litx as an
interventional vascular reconditioning procedure
to treat vulnerable plaque in patients with
coronary artery disease. www.lightsciences.com.

Applicant describes its goods as follows:
Applicant’s catheters and energy-activated
compounds are highly specialized products used in
a unique surgical procedure in which catheters
are used to activate a compound through the use
of a light emitting diode array. The purpose of
the procedure is to prevent restenosis following
intervention in the superficial femoral artery in
patients with Peripheral Artery Disease (PAD) and
to stabilize the formation of vulnerable plaque
in patients with coronary artery disease at risk
from acute coronary syndromes. This proprietary
procedure is enabled by a photoreactive drug that
has an affinity with atherosclerotic plaque and
sites of vascular injury caused during
endovascular intervention. A significant feature
of the procedure is that it allows for regional
endovascular intervention treatment, whereas
prior technology, such as angioplasty and
stenting, is more focused. Br. pp. 2-3.

The record in this case clearly supports a finding of
mere descriptiveness of the phrase VASCULAR RECONDITIONING.
As noted above, we determine the descriptiveness of a term
in the context of the goods or services at issue, not in
the abstract. In re Chopper Industries, 222 USPQ 258 (TTAB
1984); In re Bright-Crest, Ltd., supra.
Applicant does not dispute that its catheters are
vascular catheters. Applicant also has not disputed the
descriptive significance of the word “vascular” in
Serial No. 78775491
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connection with its goods. In the same manner that the
word VASCULAR informs the consumer that the purpose of the
goods is for use with blood vessels, the word
RECONDITIONING informs the consumer that the goods are
designed to recondition or repair the blood vessels.
Clearly, these terms separately have a descriptive
significance in relation to applicant’s goods. The
question remains whether combined they present a unique or
incongruous combination.
It is applicant’s position that:
The term VASCULAR RECONDITIONING does not
immediately convey with any “degree of
particularity” significant features, qualities or
characteristics of applicant’s goods (e.g.
catheters having a diode array or compounds
having an affinity with atherosclerotic plaque)
or the purpose for which such goods are used
(i.e. to prevent restenosis following
intervention in the superficial femoral artery
and to stabilize the formation of vulnerable
plaque). The term VASCULAR RECONDITIONING is
simply too vague to describe applicant’s highly
specialized goods with any “degree of
particularity” and therefore fails to be merely
descriptive.

Br. p. 3.
In particular, applicant asserts that the examining
attorney’s evidence does not support the refusal, noting
that the evidence shows the word “reconditioning” being
used in a general sense to describe repairing the
conditions of various body parts and that evidence of
Serial No. 78775491
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general use of the term reconditioning is insufficient to
show that the mark as a whole, VASCULAR RECONDITIONING, is
merely descriptive of its goods. However, while
“reconditioning” may have a more general meaning when used
alone, in applicant’s mark it is modified by the term
VASCULAR, thus, the mark as a whole immediately tells the
consumer what body part the goods recondition.
In addition, applicant argues that “[i]f the term
VASCULAR RECONIDTIONING were in fact merely descriptive as
applied to Applicant’s goods or competitors’ similar goods,
we would expect to see more numerous and more clearly
descriptive uses of VASCULAR RECONDITIONING in the press
and literature. The lack of evidence showing third-party
use of VASCULAR RECONDITIONING to describe any vascular
procedure supports the conclusion that VASCULAR
RECONDITIONING is not merely descriptive of applicant’s
goods.” Br. p. 4. However, it is well established that
the fact that applicant may be the first and only user of a
merely descriptive designation does not justify
registration if the only significance conveyed by the term
is merely descriptive. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983). We further
note that applicant has indicated that its goods are used
Serial No. 78775491
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in a proprietary procedure, which would serve to explain
why the phrase is not more widely used.
We find that when combined the terms VASCULAR and
RECONDITIONING do not lose their descriptive significance
and, in fact, make clear that applicant’s goods recondition
the vascular system. Thus, we are persuaded by the
evidence of record that the words VASCULAR and
RECONDITIONING are merely descriptive of applicant’s
identified goods and that when combined do not present a
unique or incongruous meaning. In re Tower Tech, Inc., 64
USPQ2d 1314 (TTAB 2002).
Applicant relies on In re Harrington, 219 USPQ 854
(TTAB 1983), in support of its position that VASCULAR
RECONDITIONING is at most suggestive of its goods. In
Harrington, the Board found the phrase COLLEGE ACADEMY to
be suggestive inasmuch as it could have a variety of
possible meanings. This is different from the case before
us, where the phrase VASCULAR RECONDITIONING used in
connection with applicant’s goods has only one meaning,
specifically, that of vascular repair or reconditioning.
Looking at the average or ordinary prospective
customers of applicant’s goods, as we must, In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987), the average consumer of applicant’s goods would
Serial No. 78775491
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certainly know and be familiar with the terms vascular and
reconditioning as used in the medical and cardiovascular
fields. Nor would it take any speculation or mental leap
to understand that VASCULAR RECONDITIONING describes goods
that would recondition a patient’s vascular system.
Viewing VASCULAR RECONDITIONING as a whole, we find
the evidence of record sets forth a prima facie case that
such phrase is merely descriptive. Thus, we are persuaded
that when applied to applicant’s goods, VASCULAR
RECONDITIONING immediately describes, without need for
conjecture or speculation, a significant feature or
function of applicant’s goods. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for prospective
consumers of applicant’s goods to perceive readily the
merely descriptive significance of VASCULAR RECONDITIONING
as it pertains to applicant’s goods.
Decision: The refusal to register under Section
2(e)(1) is affirmed.