OSET, Inc.

Trademark Trial and Appeal Board

Jun 13, 2019

87412185 (T.T.A.B. Jun. 13, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re OSET, Inc.
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Serial No. 87412185
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John S. Hale of Gipple & Hale, for OSET, Inc.

Andrea Hack, Trademark Examining Attorney, Law Office 108,
Megan Askew, Managing Attorney.
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Before Wolfson, Coggins, and Dunn,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
OSET, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
depicted below:

Serial No. 87412185
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for “educational services, namely, providing national educational conferences and
educational meetings in the field of orthopaedics and sports medicine,” in
International Class 41.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Sections 2(e)(1) and 6(a) of the Trademark Act, 15 U.S.C. §§ 1052(e)(1) and
1056(a), on the ground that the wording “ORTHOPAEDIC SUMMIT EVOLVING
TECHNIQUES” in Applicant’s mark is merely descriptive of a feature of educational
conferences and meetings in the field of orthopaedics and sports medicine.
Applicant has agreed to disclaim the wording “ORTHOPEDIC” and “EVOLVING
TECHNIQUES,” but argues that the term “SUMMIT” is not merely descriptive of the
recited services and has a number of meanings, “thus negating the arbitrary meaning
selection given by the Examining Attorney.” 7 TTABVUE 8. After the Trademark
Examining Attorney made the refusal final, Applicant appealed the disclaimer
requirement to this Board. We affirm.
I. Applicable Law
The Director of the USPTO “may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.” Trademark Act Section

1 Application Serial No. 87412185 was filed on April 14, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use of the mark
and first use in commerce on August 4, 2014. The description of the mark reads: “The mark
consists of the words ‘ORTHOPAEDIC SUMMIT’ to the right of a mountain design with the
word ‘OSET’ in an oval at the base of the mountain design. The words ‘EVOLVING
TECHNIQUES’ are beneath a horizontal line spanning the entire width of the design.” Color
is not claimed as a feature of the mark.

Serial No. 87412185
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6(a), 15 U.S.C. § 1056(a). A mark or component is unregistrable if, “when used on or
in connection with the goods [or services] of the applicant,” it is “merely descriptive
. . . of them.” Trademark Act Section 1052(e)(1), 15 U.S.C. § 1052(e)(1). A term is
“merely descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys
information concerning a feature, quality, or characteristic of the goods or services
for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906
F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866
F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)); see also In re Stereotaxis Inc.,
429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (affirming Board’s disclaimer
requirement of “stereotaxis,” finding term merely descriptive of stereotaxis medical
or surgical devices).
“’Evidence [that a term is merely descriptive] may be obtained from ‘any
competent source, such as … dictionaries, newspapers and other publications.’”) In re
Virtual Indep. Paralegals, 2019 USPQ2d 111512, *2 (TTAB 2019) (quoting Princeton
Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed.
Cir. 2015)); In re Stereotaxis, 77 USPQ2d at 1089. Here, the Examining Attorney
relies on dictionary definitions, Internet print-outs showing Applicant’s and third-
party usage, and third-party registrations wherein the term “SUMMIT” is
disclaimed. The Examining Attorney contends that this evidence shows that
consumers will immediately understand “that applicant is providing conferences and
meetings.” 9 TTABVUE 10.
Serial No. 87412185
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II. Disclaimer Requirement
A. Dictionary Definitions
Applicant submitted print-outs from five online dictionaries, defining the term
“summit” as a noun, adjective, and verb. It has several meanings that are aptly shown
by the entries in THE AMERICAN HERITAGE COLLEGE DICTIONARY:
2
The above definition refers to “summit” as a noun. As its use in the phrase
“summit conference” shows, it is also recognized as part of a composite term referring
to a meeting of high-ranking diplomatic or other governmental officials. The website
WordReference.com refers to “summit” not just as a noun, but also as an adjective
(“adj. of or pertaining to a summit meeting: summit talks”) and as a verb (“v.i. to take
part in a summit meeting, to reach a summit”), Applicant’s January 10, 2018
Response, TSDR 10. Likewise, the website Dictionary.com defines “summit” as a
noun (e.g., “the highest point or part”), as an adjective (“of or relating to a summit
meeting”) and as a verb used without object (“to take part in a summit meeting”), id.
at TSDR 19.

2 From Applicant’s January 10, 2018 Response, TSDR 17. Citations to the application file
record in this opinion are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
Serial No. 87412185
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B. Applicant’s Specimen and Third-Party Use
The evidence shows that third parties use the term “summit” to refer to meetings
or conferences among persons other than government leaders. To illustrate, the
following three websites specifically use the term to describe educational conferences
in the field of medicine:
1. Brandeis Global Youth Summit: advertising the “Global
Youth Summit on the Future of Medicine” at
http://www.brandeisleaders.org;3
2. Southern Medical Association: advertising the “Medical
Summit and Annual Scientific Assembly CME Conference”
at https://sma.org/education-sma/events/medical-summit;4
3. Forbes: advertising the “Forbes Healthcare Summit” at
https://www.forbes.com/forbes-live/event/healthcare-
summit.”5
Applicant also uses “summit” to describe its conferences. For example, Applicant’s
specimen advertised its 2017 educational conference as the “Orthopaedic Summit
2017: Evolving Techniques,” touting it as “the premier gathering of [specialists] from
across the globe.”
The 3.5 day, CME-accredited Orthopaedic Summit 2017,
will include cutting-edge, industry-sponsored, cadaveric
and live surgical demonstrations (non-CME), lunch time
symposia, rapid-fire debates, small group discussions all
with an international perspective on the latest techniques
in arthroplasty and arthroscopy, as well as sports
medicine….

3 Attached to Examining Attorney’s Priority Action dated July 10, 2017 at TSDR 8.
4 Id. at TSDR 11.
5 Id. at TSDR 19-20.
Serial No. 87412185
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In this context, “summit” clearly describes an educational conference in the field
of orthopeadics and sports medicine. The Examining Attorney has further provided
print-outs from Applicant’s website listing the activities at the summit, wherein the
term “summit” is used descriptively to identify some of the offerings, as in: “Advanced
Practitioner Sports Medicine Summit” and “3rd Annual Fellow & Resident Summit.”6
Applicant also uses “summit” to indicate its conference in an informational section
titled “Who Should Attend the Orthopaedic Summit?”7 Use of the term “summit” by
Applicant and by unrelated third parties supports a finding that “summit” is merely
descriptive with respect to the services.
C. Third-Party Registrations
The record also contains multiple third-party registrations of marks for the
educational services of providing conferences or meetings in the field of medicine in
which the exclusive right to use the word “summit” has been disclaimed, or the mark
as a whole registered on the Supplemental Register in recognition of its
descriptiveness.8 These registrations are probative of the non-source identifying
meaning of “summit” with respect to the services. See, e.g., In re Box Sols. Corp., 79
USPQ2d 1953, 1955 (TTAB 2006) (“As shown by the examining attorney’s evidence,
the term ‘SOLUTIONS’ has been regarded as merely descriptive in a number of third-

6 January 29, 2018 Office Action at TSDR 2.
7 Id. at TSDR 3.
8 July 10, 2017 Examiners Amendment Priority Action at TSDR 50-113; see also Examining
Attorney’s Brief, 9 TTABVUE 12-16, summarizing all 63 third-party registrations submitted
by both parties. Applicant’s evidence is discussed more fully infra.
Serial No. 87412185
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party marks, the registrations of which include disclaimers of the term
‘SOLUTIONS.’”).
III. Applicant’s Arguments
Applicant argues that “the word SUMMIT does not immediately import any
degree of particular information about Applicant’s educational services”9 and that a
multi-stage reasoning process is required to discern “what information if any would
be immediately conveyed to prospective purchasers of the services.”10 Because the
term “summit” has several non-descriptive meanings, Applicant argues, consumers
will not construe it as relating to educational services.
We agree that the dictionary definitions are inconclusive on the issue, because
they refer to “summit meetings” as conferences of leaders and not to educational
meetings in general. Nonetheless, the definitions corroborate the use by Applicant
and third parties that demonstrate “summit” will be immediately perceived in the
context of Applicant’s mark as describing a conference or meeting related to the field
of orthopaedics and sports medicine.
Applicant’s argument that because “summit” has many different meanings, it
cannot import any particular information about Applicant’s services, is misplaced. It
is well-established that whether a mark is merely descriptive is determined “in
relation to the particular [services] for which registration is sought, the context in
which it is being used, and the possible significance that the term would have to the

9 7 TTABVUE 20.
10 Id. at 21. Emphasis provided by Applicant.
Serial No. 87412185
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average purchaser of the [services] because of the manner of its use or intended use.”
In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1882, 1831 (Fed. Cir.
2007)); see also DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247,
103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002). Here, the term “summit” in Applicant’s mark immediately
conveys that Applicant provides educational meetings and conferences. While the
sense of “the highest level or degree” is also conveyed by the term, this additional
nuance furthers the term’s descriptiveness; the impression given is that Applicant’s
conferences are conducted at the highest level or geared to specialists or experts, i.e.,
leaders in the field. Thus, even if, as Applicant asserts, SUMMIT will be seen as a
reference “to the mountain design which forms part of the mark,” 4 TTABVUE 8, the
reference reinforces the term’s descriptive nature.
Applicant also argues that the Examining Attorney improperly dissected the
mark, but for purposes of determining whether “summit” in the mark is merely
descriptive and must be disclaimed, there is nothing improper in looking to the
meaning of “summit” alone, as long as it is determined to retain its descriptive quality
when the mark is viewed as a whole. This the Examining Attorney did, and in viewing
the mark as a whole, properly determined that “summit” is a merely descriptive and
thus unregistrable component of the mark absent a disclaimer.
Applicant submitted 28 registrations including the term SUMMIT in the mark
without a disclaimer thereof, and “conference(s)” in the recitation of services, and
Serial No. 87412185
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argues that “when the word ‘summit’ is incorporated in the body of a composite word
mark and is not positioned at the end of the mark, the word ‘summit’ is not required
to be disclaimed as it is not descriptive….” 7 TTABVUE 8-9. We see nothing in the
treatment of the marks (including those that were submitted by the Examining
Attorney) to support this assertion. We note that 18 of the marks submitted by
Applicant were registered on the Supplemental Register or with a provision claiming
acquired distinctiveness of the mark under Trademark Act § 2(f), 15 U.S.C. § 1052(f).
Registration on the Supplemental Register “may be considered to establish prima
facie that, at least at the time of registration, the registered mark possessed a merely
descriptive significance.” Perma Ceram Enters. Inc. v. Preco Indus. Ltd., 23 USPQ2d
1134, 1137 & n.11 (TTAB 1992); see also In re Chippendales USA Inc., 622 F.3d 1346,
96 USPQ2d 1681, 1686, n.9 (Fed. Cir. 2010) (“A descriptive term lacking secondary
meaning may not appear on the Principal Register, but may appear on the
Supplemental Register.”). And a Section 2(f) claim of acquired distinctiveness is a
concession that the mark is not inherently distinctive and therefore not registrable
on the Principal Register without a sufficient showing of acquired distinctiveness.
Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d
1626, 1629 (Fed. Cir. 2009) (“where an applicant seeks registration on the basis of
Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on
Section 2(f) during prosecution presumes that the mark is descriptive.”); Yamaha Int’l
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir.
1988) (“Where, as here, an applicant seeks a registration based on acquired
Serial No. 87412185
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distinctiveness under Section 2(f), the statute accepts a lack of inherent
distinctiveness as an established fact.”). Accordingly, these registrations do not
support Applicant’s contention that SUMMIT is inherently distinctive.
Of the ten registrations that issued on the Principal Register without a claim
under Section 2(f), two of them are for unrelated services and thus have no bearing
on the issue of whether the term is merely descriptive for the recited services. Two
others of them have been cancelled and thus are irrelevant.11 The remaining six
include Reg. Nos. 4402592 and 4513638 for the marks ISUMMIT and iSUMMIT12 (no
disclaimer would be required as these marks are unitary); Reg. No. 4222347 for the
mark REACHING THE SUMMIT13 (here, the term “summit” is part of a double
entendre and thus not merely descriptive); and Reg. No. 5220193 for the mark
SUMMIT EDUCATION ENTERPRISE14 (here, the term “summit” is used to describe
“education enterprise” and thus is not merely descriptive of providing conferences or
meetings). Although Reg. No. 4391341 for the mark GLOBAL SUMMIT OF
WOMEN15 and Reg. No. 5298029 for the mark THE 80/20 SUMMIT16 support
Applicant’s position, two registrations are simply too few in number to show that

11 An additional registration was provided in a separate exhibit; that mark too has been
cancelled. 5 TTABVUE 81. See Black & Decker Corp. v. Emerson Elec. Co., 84 USPQ2d 1482,
1487 n.9 (TTAB 2007) (cancelled registrations have no probative value).
12 5 TTABVUE 58 and 66.
13 5 TTABVUE 56.
14 5 TTABVUE 76.
15 5 TTABVUE 68.
16 5 TTABVUE 28.
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SUMMIT is not merely descriptive for providing educational conferences and
meetings.
IV. Summary
On the basis of the record as a whole, including Applicant’s own uses of “summit”
and that of third-party users and registrants, we find that SUMMIT describes “a
feature, quality, or characteristic of the [services] . . . for which registration is sought,”
N.C. Lottery, 123 USPQ2d at 1709.

Decision: The refusal to register Applicant’s mark
is affirmed in the absence of a disclaimer of SUMMIT. However, if Applicant submits
the required disclaimer of ORTHOPAEDIC SUMMIT EVOLVING TECHNIQUES
within thirty days, this decision will be set aside.17 See Trademark Rule 2.142(g), 37
C.F.R. § 2.142.

17 Because the phrase ORTHOPAEDIC SUMMIT EVOLVING TECHNIQUES is not
grammatically or otherwise a unitary whole with a single descriptive significance, the entire
phrase need not be disclaimed as a single expression. “The issue is whether the components
form a grammatically or otherwise unitary expression, not whether they are contiguous.” In
re Grass GmbH, 79 USPQ2d 1600, 1602 (TTAB 2006) (SNAP ON 3000 not a unitary
descriptive expression that needs to be disclaimed in its entirety); cf. In re Wanstrath, 7
USPQ2d 1412, 1413 (Comm’r Pats. 1987) (GLASS TECHNOLOGY is a unitary descriptive
phrase as applied to automobile windshield repair kits and must be disclaimed as a
composite, not as separate words); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1213.08(b) (Oct. 2018). The standardized printing format for the required disclaimer text is
as follows: “No claim is made to the exclusive right to use ORTHOPAEDIC SUMMIT and
EVOLVING TECHNIQUES apart from the mark as shown.” TMEP § 1213.08(a)(i).