Medical Simulation Corporation

Trademark Trial and Appeal Board

Mar 31, 2008

No. 77000390 (T.T.A.B. Mar. 31, 2008)

Mailed: March 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Medical Simulation Corporation
________

Serial No. 77000387
Serial No. 77000390
_______

James L. Brown of Swanson & Bratschun, L.L.C. for Medical
Simulation Corporation.

Zhaleh Delaney, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Holtzman and Taylor, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Medical Simulation Corporation, has filed two
applications to register the standard character mark BEST PROGRAM
(PROGRAM disclaimed) for goods and services currently identified
as follows:
Computer hardware, computer software and one or more
simulation input devices for use in performing simulated
medical techniques for use in the training of medical
professionals in medical techniques used as part of a
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial Nos. 77000387 and 77000390
2
medical training program, and printed instructional material
sold as a unit therewith (in Class 9).1

Medical training and teaching services for medical
professionals; educational services for medical
professionals, namely, conducting classes, seminars,
conference and workshops in the medical field for healthcare
providers (in Class 41).2

The trademark examining attorney has refused registration on
the ground that the mark is merely descriptive of applicant's
goods and services under Section 2(e)(1) of the Trademark Act.
In addition, the examining attorney issued a requirement in each
application for an acceptable identification of goods and
services.
When the refusal and requirement were made final, applicant
appealed. Applicant and the examining attorney have filed
briefs.
Because the marks in both applications are the same and the
issues are essentially the same, the appeals are hereby
consolidated.
We turn first to the requirement for an acceptable
identification of goods and services. In the Class 41
application, the examining attorney issued a final requirement
for an amendment to change the word "conference" to

1 Serial No. 77000390, filed September 15, 2006, based on an allegation
of a bona fide intention to use the mark in commerce.

2 Serial No. 77000387, filed September 15, 2006, based on an allegation
of a bona fide intention to use the mark in commerce.

Serial Nos. 77000387 and 77000390
3
"conferences." Applicant agreed to this change in its brief and
the examining attorney accepted the amendment. The amendment is
accordingly entered.
As to the Class 9 application, the examining attorney issued
a final requirement for a more definite statement of the goods
identified as "input devices for use in performing simulated
medical techniques." In particular, the examining attorney
required applicant to indicate the common commercial name for
these devices.
Applicant, in its brief, offered to change the wording to
"input devices in the nature of catheters, probes, scopes, and
gantry controls, contrast manifolds and balloon inflation devices
for use in performing simulated medical techniques." However,
the examining attorney rejected the amendment out of hand on the
basis that it was not timely filed.
It is unclear why the examining attorney was willing to
accept the untimely amendment filed in one application but not in
the other. However, because she did, and because the applicant’s
submission of the amendment in its brief was clearly untimely,3
we treat the original wording, "input devices for use in
performing simulated medical techniques," as the operative

3 The proper procedure, if an applicant wishes to amend its application
after it has filed its notice of appeal, is to file a request for
remand.
Serial Nos. 77000387 and 77000390
4
identification.4 With respect to that identification, although
the examining attorney mentioned the final requirement for an
acceptable identification in her discussion of the procedural
history of the case, she did not specifically maintain the
requirement in her brief, nor did she address the requirement on
the merits. Under the circumstances, we consider the requirement
for an acceptable identification in the Class 9 application to be
withdrawn.
We turn then to the question of whether the mark BEST
PROGRAM is merely descriptive of applicant's goods and services.
A term is merely descriptive within the meaning of Section
2(e)(1) if it immediately conveys knowledge of a quality,
characteristic, function, feature, purpose or use of the goods or
services with which it is used or intended to be used. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Moreover,
the question of whether a particular term is merely descriptive
must be determined not in the abstract, but in relation to the
goods or services for which registration is sought. See In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
As the Federal Circuit has observed, "Marks that are merely
laudatory and descriptive of the alleged merit of a product are
also regarded as being descriptive.... Self-laudatory or puffing

4 With respect to the proposed amendment to the identification, we note
that the examining attorney stated the amendment would not effect the
refusal on descriptiveness grounds. We concur with that assessment.
Serial Nos. 77000387 and 77000390
5
marks are regarded as a condensed form of describing the
character or quality of the goods." In re Boston Beer Co. L.P.,
198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) quoting 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§11:17 (4th ed. 1996)).
We find that the term BEST PROGRAM is a laudatory
designation describing the superior quality of applicant's
medical training and educational services, as well as its
computer software used in medical training programs.
The examining attorney has introduced a number of
definitions of "program" from a variety of sources. We note, in
particular, the following:5

1. c. A course of academic study; a curriculum.
d. A plan or system of academic and related or ancillary
activities: a work-study program.
The American Heritage Dictionary of the English Language
(Third Edition 1992) (Electronic version.)

-noun
7. a prospectus or syllabus: a program of courses being
offered.
Dictionary.com Unabridged (V 1.1) based on the Random House
Dictionary Unabridged (2006) (from the website
www.dictionary.reference.com.)

5 As requested by the examining attorney, we take judicial notice of
the entries from Dictionary.com Unabridged and Wordnet 3.0 which were
attached to the examining attorney's brief. The Board may take
judicial notice of dictionaries, including online dictionaries which
exist in printed format or have regular fixed online editions. See In
re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (taking judicial
notice of, for example, Wordnet 2.0 which although not available as a
print publication, was determined to be the electronic equivalent of a
print publication).
Serial Nos. 77000387 and 77000390
6
noun
6. an integrated course of academic studies; "he was
admitted to a new program at the university" [syn: course of
study].
Wordnet 3.0 (Princeton University 2006) from the website
www.dictionary.reference.com.

We take judicial notice of the following additional
definitions of "program" (emphasis added):

a group of activities or things to be achieved
a training program
the university basketball program
a pilot recycling program
Cambridge Dictionary of American English (2008).

SET OF CLASSES a series of classes or lectures on something.
Microsoft Encarta College Dictionary (2001).

n. A sequence of instructions that can be executed by a
computer. The term can refer to the original source code or
to the executable (machine language) version. Also called:
software.
Microsoft Computer Dictionary (Fifth Edition 2002).

It is clear from the above definitions that the term PROGRAM
is a descriptive, if not generic, name for applicant's goods and
services. The training and classes, or set of classes, offered
by applicant constitute a PROGRAM. It can also be seen that
"program" is another word for "software." Thus, in relation to
applicant's goods, the term PROGRAM identifies the product
itself, namely, "computer software." Furthermore, the
Serial Nos. 77000387 and 77000390
7
identification of goods specifically states that the computer
software is used as part of a "medical training program."
The examining attorney has also submitted the following
definition which demonstrates the meaning of BEST as a laudatory
term:
"adjective. Superlative of good. 1. Surpassing all others
in excellence, achievement, or quality; most excellent; the
best performer; the best grade of ore. 2. Most
satisfactory, suitable, or useful; most desirable; the best
solution; the best time for planting." The American
Heritage Dictionary of the English Language (Third Edition
1992) (Electronic version.)

The laudatory meaning and significance of BEST is also shown
by the twelve third-party registrations that are of record for
marks containing the word BEST in a variety of fields. Each of
these registrations issued either on the Supplemental Register,
or on the Principal Register under Section 2(f) or with a
disclaimer of BEST. See, for example, Reg. No. 3014257 for the
mark AREA'S BEST HOMES for "real estate advertising services"
(Supplemental Register); Reg. No. 3070387 for the mark BEST
WINDOWS & DOORS and design for services including "retail outlets
featuring residential windows" (all wording disclaimed); Reg. No.
3150170 for the mark BEST SOURCE for "distributorships featuring
pharmaceuticals" (Supplemental Register); and Reg. No. 3109325
for the mark BEST PEST CONTROL for "pest control" (Section 2(f)).
Third-party registrations, while not evidence of actual use, "may
be given some weight to show the meaning of a mark in the same
Serial Nos. 77000387 and 77000390
8
way that dictionaries are used." Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976).
In an attempt to show that "best" is not descriptive,
applicant submitted (in the Class 41 application) seven third-
party registrations for BEST combined with other wording for
various services in that class, arguing that these marks are "are
registered on the Principal Register without a showing of
acquired distinctiveness."6 However, as the examining attorney
points out, in two of those registrations (Reg. Nos. 2935396 and
2126880), the word BEST is disclaimed. We also note that one
other registration (Reg. No. 2436836) has been cancelled, and it
is therefore of no probative value. As to the remaining four
registrations, the combination of BEST with other wording results
in marks which are, in their entirety, nondescriptive terms that
simply have no direct meaning in relation to the services
identified in the registrations. For example, in Reg. No.
3018012, the mark BEST LIFE conveys no clear meaning in the
context of "online magazines in the field of health." See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.

6 Although this evidence is untimely, having been submitted for the
first time with applicant's brief, because the examining attorney did
not object to this evidence and moreover has treated it on the merits,
we have considered it as properly of record. We note that applicant
also attached seven different third-party registrations to its brief in
the Class 9 application. Inasmuch as the examining attorney did object
to the untimeliness of this evidence, we have not considered it. We
add, however, that even if we had considered the evidence, it would not
change our decision in this case.
Serial Nos. 77000387 and 77000390
9
2001), observing that a term "may tilt toward suggestiveness or
descriptiveness depending on context and any other factor
affecting public perception."
In any event, it is well settled that each case must be
decided on its own facts, based on the particular mark, the
particular goods or services, and the particular record in each
application. See In re Nett Designs, supra. Even to the extent
the marks in these prior registrations have some characteristics
similar to applicant’s application, as our primary reviewing
court stated in Nett Designs at 1566, "the PTO’s allowance of
such prior registrations does not bind the Board or this court."
It is clear from the dictionary definitions and other
evidence of record that the term BEST is a nondistinctive,
laudatory term which when combined with PROGRAM, does nothing
more than tout the superior or excellent quality of applicant's
medical training and educational services, as well as applicant's
computer software and materials used for a training program.
Applicant makes various arguments as to why BEST PROGRAM is
not descriptive of its goods and services. However, none of the
arguments is persuasive.
Applicant argues, pointing to printouts of pages from its
website, www.medsimulation.com,7 that BEST PROGRAM is not used to

7 This website material was attached to the briefs in both
applications. However, the examining attorney did not object to this
Serial Nos. 77000387 and 77000390
10
identify a "traditional 'program'" or a "simple training program
or curriculum," but instead is used to identify "complex hands-on
medical training services" provided with a medical simulation
apparatus.
Whether the training services are "traditional" or "complex"
is simply irrelevant. The dictionary definitions of "program"
make no such distinctions. Applicant's services, as identified,
fall squarely within the plain dictionary meaning of a "program."
In fact, applicant even has a listing for "Education Programs" on
its website, and the subject matter is identified as
"technologies," "physicians," and "Custom Courses."
Applicant further argues that BEST PROGRAM is used to
identify complex medical training apparatus; and that while the
apparatus includes software elements, it is "far more than a mere
computer program." Applicant maintains that BEST PROGRAM cannot
possibly convey an immediate idea of applicant's medical training
apparatus, since the apparatus is not a "program."
While obviously the apparatus is not a "program," the fact
remains that one of the products for which applicant is seeking
registration is a "computer program." Registration must be
refused if a mark is merely descriptive of any of the goods for

evidence in the Class 41 application and her objection to the late-
filed evidence in the Class 9 application was directed solely to the
third-party registrations in that application. Accordingly, we have
considered this evidence on the merits.
Serial Nos. 77000387 and 77000390
11
which registration is sought. See In re Quik-Print Copy Shop,
Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980).
Applicant contends that the software program "runs invisibly
in the background when Applicant's goods are used ... the way one
or more computer programs run in the background of a modern
automobile, cell phone, or even a digital coffee maker."
It is not clear what point applicant is trying to make here.
We presume that applicant has a bona fide intent to use the mark
on the computer programs, and that the computer programs will in
fact be goods in trade.8 Therefore, the purchasers of
applicant's computer program, if not the users of the program,
will certainly be aware of the mark on the program and they will
clearly understand the meaning of BEST PROGRAM in relation to
those goods.
Finally, while admitting that BEST has a laudatory meaning,
applicant argues that the word is not "only" descriptive because
it has another meaning as an acronym for "Basic Endovascular
Systems Training." Applicant maintains that the acronym meaning
will be readily apparent to the medical professionals seeking
such training assistance who are the customers for its services.

8 If this is not the case, and if applicant is arguing that its
computer software is merely incidental to the services such that the
software is only used by applicant to render its training services, and
it is not a good in trade, applicant would not be entitled to a
registration for the mark on these goods.

Serial Nos. 77000387 and 77000390
12
Apart from the fact that the alleged underlying meaning
may itself be descriptive, there is nothing in the record - not
in the mark, applicant's company name, or the website materials -
to indicate that BEST has that other meaning or to indicate that
the word would be understood by applicant's customers as an
acronym standing for those other words.
There is no question that purchasers of applicant's training
services as well as its computer programs for use in a training
program would, without any guesswork or the exercise of any
imagination, immediately understand the descriptive and laudatory
meaning of BEST PROGRAM as applied to those goods and services.
Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act as to both applications is affirmed.