Philip Shihua Li and Erik Melling

Trademark Trial and Appeal Board

Feb 17, 2009

No. 77143071 (T.T.A.B. Feb. 17, 2009)

Mailed: February 17, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Philip Shihua Li and Erik Melling
________

Serial No. 77143071
_______

Edwin D. Schindler, Esq. and Michael I. Kroll, Esq. for
Philip Shihua Li and Erik Melling

Esther A. Belenker, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney)
_______

Before Drost, Mermelstein and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Philip Shihua Li and Erik Melling (joint applicants)
have applied to register the mark WATERDROP in standard
character form on the Principal Register for “Implants
consisting of artificial materials; Ocular implants;
Surgical implants comprising artificial material” in
International Class 10.1

1 Application Serial No. 77143071 was filed on March 28, 2007,
based on Section 1(b) (bona fide intent to use the mark in
commerce).

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77143071
2
The Examining Attorney finally refused registration on
the ground that WATERDROP merely describes the identified
goods under Trademark Act Section 2(e)(1), 15 U.S.C. §
1052(e)(1). Applicant filed an appeal; both applicant and
the Examining Attorney then filed briefs.
A term is merely descriptive of goods 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. See, e.g.,
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicants’ goods in order to
be considered merely descriptive; it is enough that the
term describes one significant attribute or function of the
goods. See In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778 (Fed. Cir. 2003) (MONTANA SERIES and
PHILADELPHIA CARD held merely descriptive of credit card
services featuring credit cards depicting scenes or subject
matter of, or relating to the state of Montana or the city
of Philadelphia); In re Busch Entertainment Corp., 60
USPQ2d 1130 (TTAB 2000) (EGYPT held merely descriptive of
amusement park services; namely an area within an amusement
Serial No. 77143071
3
park). See generally In re H.U.D.D.L.E., 216 USPQ 358, 359
(TTAB 1982); and In re MBAssociates, 180 USPQ 338, 339
(TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
identified in the application, and the possible
significance that the term would have to the average
purchaser or user of the goods or services. In re Polo
International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The question whether a mark is merely descriptive is not
determined by asking whether one can guess from the mark
what the goods are, but rather by asking, when the mark is
seen on or in connection with the goods, whether it
immediately conveys information about their nature. See In
re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
The Examining Attorney argues that WATERDROP is merely
descriptive of applicants’ implants because it describes
the physical shape of the goods. Relying on applicant’s
own patent,2 she notes that applicant’s goods are “to be

2 U.S. Patent No. 7108718 (issued September 19, 2006), a copy of
patent was obtained from the website www.freepatentsonline.com
and attached to Office Action dated July 11, 2007.

Serial No. 77143071
4
inserted into the upper eyelids of people who have suffered
nerve damage, to allow them to open their eyes.” Brief,
(unnumbered) p. 4. She argues that the patent “describes
the advantage of the goods as its shape, which allows the
implant to conform to the shape of a person’s cornea and to
use gravity to close a person’s eyelid, without an
unattractive bulge under the eyelid.” Id. She further
highlights descriptive use of the terms “water drop” or
“waterdrop shape[d]” within applicant’s own patent in
connection with implants and concludes that “not only is
the applicant’s invention shaped like a waterdrop, but the
advantageous aspect or characteristic of the invention is
the waterdrop shape.” Brief, (unnumbered) p. 6. Also, in
support of the refusal, she attached a copy of an article
(or press release) describing applicants’ patent in
connection with their goods:
[applicants] have developed an eyelid implant for
implanting in an upper eyelid of a person having a
main body with a water-drop shape.

[U.S. Fed News, HT Media Ltd., September 21, 2006]3

The examining attorney also submitted a copy of the
definition for the term “drop,” defining the word as “the
smallest quantity of liquid heavy enough to fall in a

3 Obtained from Lexis/ Nexis database and attached to Office
Action dated July 11, 2007.
Serial No. 77143071
5
spherical mass” and “something shaped or hanging like a
drop.”4
Applicants, on the other hand, argue that their mark
is only suggestive of the identified goods. Applicants
contend that “one would certainly have to devote a
reasonable measure of thought, conjecture and speculation
in order to be able to offer an ‘educated guess’ as that
which is offered by [applicants] under [their] trademark.”
Brief, pp. 4-5. Applicants also cite to 35 U.S.C. section
103(a) and argue that even if their goods are water-drop
shaped, “the benefit of this shape...would not be obvious,
as evidenced by the issuance of [applicants’ patent].”
Brief, p. 5 (emphasis in original). Applicants also point
to the examining attorney’s failure to “uncover any
potentially conflicting registered mark” and concludes that
this “supports an inference that competitors do not use –
because they do not need to use! – [applicants’] mark.”
Brief, p. 6.
Based on the evidence of record, especially
applicants’ own descriptive usage of the term “water drop”
in their patent to describe the physical shape of their

4 The American Heritage Dictionary of the English Language,
Fourth Edition copyright (2000) by Houghton Mifflin Company.
Attached to Office Action dated February 5, 2008.
Serial No. 77143071
6
ocular implants, and the arguments presented, we conclude
that WATERDROP is merely descriptive of applicant’s
identified goods. Upon viewing applicant’s WATERDROP mark
in connection with applicant’s ocular implants, consumers
will be able to immediately perceive that the mark is
describing the shape of the implants. The record shows
that, by definition, the term “drop” may be used to
describe the shape of an object. Indeed, as repeatedly
demonstrated by applicants themselves in their own patent,
the identified goods can be described as “waterdrop”
shaped. A few examples are:
An eylelid implant comprising...and having in a cross
section a water-drop shape with an enlarged head

4. The eyelid implant as recited in Claim 1, wherein
said main body is formed substantially as an arced
water drop.

Another object of the present invention is to provide
a gold eyelid weight having an arcuate waterdrop-shape
in cross section designed to create a...

The various arguments put forth by applicants are
either falsely-premised or simply not persuasive. Their
suggestion that one would need “reasonable measure of
thought...to offer an ‘educated guess’ as that which is
offered by [applicants]” intimates that the test for
determining whether a mark is descriptive is whether the
consumer can guess the product based on the mark alone.
Serial No. 77143071
7
This is not the test; rather, as previously stated, the
mere descriptiveness of the mark must be determined in
reference to the identified goods, not in the abstract.
And, the mere fact that an applicant may be the first to
use a descriptive term in connection with its goods, does
not somehow confer source-identifying significance to the
term. In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant
may be the first to use a merely descriptive designation
does not “justify registration if the term projects only
merely descriptive significance.”) Applicants’ other
argument involving the “obvious” nature (lack thereof) of
applicant’s mark in connection with the goods is, as the
examining attorney pointed out, an issue involving the
patentability of products and is not relevant to the
trademark registrability of applicant’s proposed mark.
We are convinced that applicants’ mark will be
understood by consumers in the same manner that applicants
intended the readers of its patent to understand the term;
that is, it will immediately and directly tell consumers
that applicants’ implants are waterdrop-shaped.
Accordingly, we conclude that WATERDROP is merely
descriptive of “implants consisting of artificial
Serial No. 77143071
8
materials; ocular implants; surgical implants comprising
artificial material.”
Decision: We affirm the refusal under Trademark Act
Section 2(e)(1).