Xhale Assurance, Inc.

Trademark Trial and Appeal Board

Oct 27, 2015

No. 86078293 (T.T.A.B. Oct. 27, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: October 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Xhale Assurance, Inc.
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Serial No. 86078293
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Lori Herman, counsel for Xhale Assurance, Inc.

Leslie L. Richards, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Zervas, Kuczma and Goodman,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Xhale Assurance, Inc. (“Applicant”) seeks registration on the Principal Register
of the proposed mark RESPIRATORY OXIMETRY (in standard characters) for
Computer hardware and software, for use with medical
patient monitoring equipment, for receiving, processing,
transmitting and displaying data related to respiratory
rate, respiratory effort, or both in International Class 9;
and,
Serial No. 86078293
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Medical devices and apparatus for monitoring respiratory
rate, respiratory effort, or both in International Class 10.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the applied-for mark merely describes the purpose or function of
Applicant’s goods. After the refusal was made final, Applicant timely appealed and
filed a request for reconsideration which was denied. The appeal is fully briefed,
including Applicant’s Reply brief. For the reasons set forth below, the refusal to
register is affirmed.
Descriptiveness
A term is merely descriptive within the meaning of § 2(e)(1) if it immediately
conveys knowledge of a quality, characteristic, function, feature, purpose or use of
the goods with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) and In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Descriptiveness of a mark is not considered in the abstract. Rather, it is
considered 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. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,

1 Application Serial No. 86078293 was filed on September 30, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b).
Serial No. 86078293
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1831 (Fed. Cir. 2007); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978).
Marks comprising more than one element must be considered as a whole and
should not be dissected; however, a trademark examining attorney may consider the
significance of each element separately in the course of evaluating the mark as a
whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247,
103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012).
Looking first at the components of the mark, the Examining Attorney contends
the components are descriptive and retain their descriptive meanings when
combined. In support of this position, the Examining Attorney refers to the
definitions of “respiratory” and “oximetry.” “Respiratory” is defined as “relating to
the process of breathing air in and out.”2 Inasmuch as Applicant’s goods are used for
monitoring respiratory rate, respiratory effort, or both, the Examining Attorney
contends that the term RESPIRATORY is merely descriptive of a feature of the
goods.3
Next, the Examining Attorney cites the definition of “oximetry” as the “optical
measurement of the degree of oxygen saturation of the blood hemoglobin by
determining the variation in the color of the blood.”4 The Examining Attorney
argues that Applicant’s goods typically measure pulse oximetry via nasal, or

2 See attachments to January 21, 2014 Office Action, http://www.macmillandictionary.com
dictionary/american/respiratory 1/21/2014, TSDR p. 8 of 11.
3 Examining Attorney’s Brief, 10 TTABVUE 5.
4 See attachments to January 21, 2014 Office Action, http://encyclopedia2.thefree
dictionary.com/oximetry 01/21/2014, TSDR p. 6 of 11.
Serial No. 86078293
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respiratory means, noting language on Applicant’s website which states that “its
Assurance line of PPG/oximetry sensors are designed to monitor central blood flow
by placement on the nasal region ….” Based on such language, the Examining
Attorney finds that consumers are likely to believe that “oximetry” is descriptive
when used in connection with Applicant’s goods.5
The Examining Attorney contends that in this case, both the individual
components and the composite mark are descriptive of Applicant’s goods and do not
create a unique, incongruous, or nondescriptive meaning in relation to the goods.
Specifically, each term retains its descriptive meaning because Applicant’s goods
monitor the respiratory system and feature the use of oximetry.6
Applicant disagrees with the Examining Attorney’s application of the definitions,
providing the following explanation why its mark is not descriptive of its goods.
Pulse oximetry is the non-invasive measurement of the oxygen saturation in the
blood by measuring the amount of oxygen dissolved in blood based on the detection
of hemoglobin (oxygenated) vs. deoxyhemoglobin (deoxygenated) in the blood. The
relative amount of each can be determined optically because hemoglobin and
deoxyhemoglobin have different absorbance coefficients at particular wavelengths of
light. This technique, according to Applicant, is used in hospitals and other care
facilities to calculate arterial blood oxygen saturation.7

5 Examining Attorney’s Brief, 10 TTABVUE 5-6.
6 August 18, 2014 Final Office Action, TSDR p. 4 of 20.
7 Description of Pulse oximetry from Pulse Oximeter Fundamentals and Design by Santiago
Lopez, Freescale Semiconductor Application Note attached to July 21, 2014 Response to
Office Action, TSDR p. 16 of 78.
Serial No. 86078293
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The optical signal used to calculate oxygen saturation is referred to as a
photoplethysmograph (PPG) signal. The PPG signal is known to provide additional
information beyond oxygen saturation, as many physiological processes can affect
the volume of blood in the optical path, and thus, affect the absorbance.8 According
to Applicant, its “RESPIRATORY OXIMETRY” technology uses a PPG signal
obtained from a nasal sensor to monitor respiratory-related parameters such as
respiration rate.9 U.S. Patent No. 7,785,262, entitled Method and Apparatus for
Diagnosing Respiratory Disorders and Determining the Degree of Exacerbations,10
provides an example of how the PPG can be used to monitor respiration.11 Thus,
Applicant acknowledges that both respiratory and oximetry information are
obtained from the PPG signal.
Applicant’s proposed mark RESPIRATORY OXIMETRY is to be used in the field
of medical devices and apparatus for monitoring respiratory rate, respiratory
efforts, or both; and in the field of computer hardware and software, for use with
medical patient monitoring equipment, for receiving, processing, transmitting and
displaying data relating to the foregoing. Applicant contends that the average
consumers of its products are hospitals and other health care providers. Such

8 See July 21, 2014 Response to Office Action, TSDR p. 2 of 78; also see,
“Photoplethysmography: Beyond the Calculation of Arterial Oxygen Saturation and Heart
Rate” by Kirk H. Shelley, MD, PhD, Vol. 105, No. 6, December 2007, attached to July 21,
2014 Response to Office Action, TSDR pp. 53-58. This article describes some of the ways the
PPG signal is used to monitor physiological processes.
9 See printout from Xhale Assurance website, http://www.xhale.com/assurance/future
AssuranceProducts.asp, attached to July 21, 2014 Response to Office Action, p. 77 of 78.
10 U.S. Patent No. 7,785,262 dated August 31, 2010, attached to July 21, 2014 Response to
Office Action, pp. 59-75.
11 July 21, 2014 Response to Office Action, p. 8 of 78.
Serial No. 86078293
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consumers are familiar with oximeters and understand that the term “oximetry”
used alone refers to the measurement of oxygen levels in the blood. Because oxygen
is obtained by respiration, Applicant maintains its “average consumers” would find
the term “respiratory” in its RESPIRATORY OXIMETRY mark to mean something
beyond the fact that respiration provides the oxygen that is to be measured via
oximetry. Applicant submits that instead, the term RESPIRATORY OXIMETRY is
suggestive because the signal that provides oximetry measurements (the PPG
signal) can also be used to obtain respiratory parameters. However, Applicant
concludes that its proposed mark RESPIRATORY OXIMETRY is not descriptive
because the respiratory parameters are not obtained from the oximetry
measurements.12 While the oximetry measurements are not performed, Applicant
admits “the oximetry sensors can be used to generate PPG signals that can be used
to monitor respiration.”13
Applicant argues that the RESPIRATORY OXIMETRY mark is not merely
descriptive of the goods specified in the application. Oximetry measures oxygen
levels in the blood and does not monitor respiratory rate and/or respiratory effort.
According to Applicant, its goods use photoplethysmography (PPG) signals, alone or
in combination with other physiological signals, to monitor respiratory parameters
including respiratory rate and/or respiratory effort. While PPG signals are also used
in pulse oximetry, Applicant will use the RESPIRATORY OXIMETRY mark in
conjunction with the devices, apparatus, and computer hardware and software that

12 July 21, 2014 Response to Office Action, TSDR p. 2 of 78.
13 July 21, 2014 Response to Office Action, TSDR p. 2 of 78.
Serial No. 86078293
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use the PPG signals to monitor respiratory rate and/or respiratory effort, alone or in
combination with other respiratory parameters.14 Thus, Applicant contends it has
overcome the Examining Attorney’s concerns regarding the descriptive nature of the
term RESPIRATORY OXIMETRY because oximetry is not within the scope of its
goods.
A review of excerpts from several articles published on Applicant’s website over
the past couple of years provide information regarding Applicant’s products,
including the products to be covered by the RESPIRATORY OXIMETRY trademark:
1. Assurance® - Future Products15
We are applying our Assurance technology beyond conventional pulse
oximetry. Currently, we are developing additional applications of our
Assurance technology in order to improve and expand the use of
conventional pulse oximetry in hospitals and other clinical settings to
monitor critical patient parameters, as well as to increase the number
of parameters which can be measured.
. . .
Respiration-related parameters are not among the parameters
measured in standard pulse oximetry. Monitoring respiration-related
parameters is important because a low respiration rate may be
indicative of respiratory depression and a high respiration rate may be
indicative of patient distress, both of which are indicative of health
risks. …
Copyright © 2014 Xhale, Inc. All Rights Reserved.

2. Assurance® - Overview16

14 February 18, 2015 Request for Reconsideration after Final Action, TSDR p. 1 of 1.
15 July 21, 2014 Response to Office Action, TSDR p. 77 of 78, http://www.xhale.com
/assurance /futureAssuranceProducts.asp.

Serial No. 86078293
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Our Assurance® technology is a patient monitoring technology
designed to improve and expand the use of conventional pulse oximetry
used in hospitals and other clinical settings to monitor critical patient
parameters, as well as to increase the number of parameters which can
be measured. …
The Assurance® Alar Sensor is the next generation of pulse oximetry.
The sensor is attached to the nasal ala, the fleshy part of the side of
the nose, a unique monitoring site for pulse oximetry. …
Copyright © 2014 Xhale, Inc. All Rights Reserved.

3. Assurance® Alar One-Sense™ Pulse Oximetry Sensor to be
Presented in Two Clinical Abstracts and an Educational
Session at Society for Technology in Anesthesiology Meeting17
January 17, 2014/In Press Releases, Xhale Assurance
…
About Xhale Assurance, Inc.
… Its Assurance-line of PPG/oximetry sensors are designed to monitor
central blood flow by placement on the nasal ala, a region rich in
vasculature, fed by external and internal carotid arteries which also
supply the brain. The unique physiology of the site provides strong,
robust pulse oximetry signals. Measurement from this site will enable
monitoring a range of critical physiologic parameters which cannot be
monitored via conventional pulse oximetry.”

4. Xhale Assurance Issued U.S. Patent on Optimized Gas Supply
using Photoplethysmography18

16 August 18, 2014 Final Office Action, TSDR p. 13, http://www.xhale.com
/assurance/overview.asp 08/18/2014.
17 April 8, 2015 Request for Reconsideration Denied, TSDR p. 12-13,
http://xhale.com/assurance-alar-one-sensetm-pulse-oximetry-sensor-to-be-presented-in-two-
clinical-abstracts-and-an-educational-session-at-society-for-technology-in-anesthesiology-
meeting/.
18 April 8, 2015 Request for Reconsideration Denied, TSDR p. 10-11, http://xhale .com/
xhale-assurance-issued-u-s-patent-on-optimized-gas-supply-using-photoplethysmography/
04/08/2015.
Serial No. 86078293
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Gainesville, August 13, 2014 – Xhale, Inc.
…
About Xhale
Xhale, Inc. is a medical technology company … Through its Xhale
Assurance, Inc. subsidiary, Xhale is developing a patient monitoring
technology—the Assurance® platform—designed to improve and
expand the use of conventional pulse oximetry used in hospitals and
other clinical settings to monitor critical patient parameters, as well as
to increase the number of parameters which can be measured. Xhale’s
first product based on this technology, the Assurance® Alar One-
Sense™ pulse oximetry sensor, received marketing clearance in the
United States. The Assurance® Alar One-Sense™ pulse oximetry
sensor is a disposable sensor placed on a patient’s nasal ala which
transmits heart rate and blood oxygenation information to an oximetry
monitor.
5. Assurance® Alar One-Sense™ Pulse Oximetry Sensor to be
Presented in Two Clinical Abstracts and an Educational
Session at Society for Technology in Anesthesiology Meeting19

Xhale Assurance, Inc. is showcasing its Alar One-Sense™ Sensor at its
exhibit at the STA meeting. The Alar One-Sense Sensor detects blood
oxygen saturation and heart rate at the nasal ala, the fleshy lateral
part of the nostril. The rich vasculature at this site makes it attractive
for pulse oximetry measurement, providing earlier detection of
saturation changes than does a sensor placed at the extremities. …
Andrew E. Kersey, President of Xhale Assurance, Inc. stated … “[The
research provided at STA] also provides evidence that measurement at
the nasal ala can provide additional information to the clinician
including the presence of both obstructive and central apnea as well as
other abnormal breathing patterns that may provide early indication
of patient respiratory compromise. …”
“The single-point-of-contact Alar One-Sense™ Sensor provides
capabilities that are unmatched by traditional pulse oximetry. Our
continued innovation in monitoring at the nasal ala, supported by

19 April 8, 2015 Request for Reconsideration Denied, TSDR p. 12-13 of 19,
http://xhale.com/assurance-alar-one-sensetm-pulse-oximetry-sensor-to-be-presented-in-two-
clinical-abstracts-and-an-educational-session-at-society-for-technology-in-anesthesiology-
meeting.
Serial No. 86078293
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clinical research, will build upon the foundation we are developing in
measurement of blood oxygen saturation and additional physiological
parameters.” …
About Xhale Assurance, Inc.
… Its Assurance-line of PPG/oximetry sensors are designed to monitor
central blood flow by placement on the nasal ala, a region rich in
vasculature, fed by the external and internal carotid arteries which
also supply the brain. The unique physiology of the site provides
strong, robust pulse oximetry signals. Measurement from this site will
enable monitoring a range of critical physiologic parameters which
cannot be monitored via conventional pulse oximetry.
© 2015 Xhale, Inc. All Rights Reserved.

The question is not whether someone presented only with the proposed mark
RESPIRATORY OXIMETRY could guess what the goods are, but “whether someone
who knows what the goods are will understand the mark to convey information
about them.” DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 103
USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)); In re Swatch Group Management Services AG, 110 USPQ2d 1751, 1762 n.54
(TTAB 2014). If, on the other hand, RESPIRATORY OXIMETRY requires
imagination, thought, and perception to arrive at the qualities or characteristics of
the goods, then the mark is suggestive. In re MBNA America Bank N.A., 340 F.3d
1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re Franklin County Historical
Society, 104 USPQ2d 1085, 1087 (TTAB 2012).
Applicant contends that RESPIRATORY OXIMETRY is a suggestive mark.
Applicant explains that traditionally, oximetry measures oxygen levels in the blood
and does not monitor respiratory rate and/or respiratory effort. While the PPG
Serial No. 86078293
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signal that provides oximetry measurements can also be used to obtain respiratory
parameters, the respiratory parameters are not obtained from the oximetry
measurements.20 Applicant intends to use the RESPIRATORY OXIMETRY mark in
conjunction with the devices and computer hardware and software that use the PPG
signals to monitor respiratory rate and/or respiratory effort, alone or in combination
with other respiratory parameters.21
While arguing that the respiratory parameters provided by its RESPIRATORY
OXIMETRY goods are not obtained from oximetry measurements, as shown above,
Applicant has marketed itself as “developing patient monitoring technology” that is
“designed to improve and expand the use of conventional pulse oximetry used in
hospitals and other clinical settings to monitor critical patient parameters, as well
as to increase the number of parameters which can be measured.”22 Thus, Applicant
markets its goods, which include its RESPIRATORY OXIMETRY products, as an
improvement and expansion of pulse oximetry.
Respiratory information and oximetry information are both obtained from the
same PPG signal. Applicant’s proposed mark RESPIRATORY OXIMETRY is used
for a device that includes the processing/electronics for calculating respiratory
parameters. According to Applicant, it connects with the host monitor so that the
host monitor can display the respiratory parameters in addition to the oximetry and

20 July 21, 2014 Response to Office Action, TSDR p. 2 of 78.
21 February 18, 2015 Request for Reconsideration after Final Action, TSDR p. 1 of 6.
22 April 8, 2015 Request for Reconsideration Denied, TSDR p. 10 of 19.
Serial No. 86078293
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pulse rate data that are already being calculated by the host monitor.23 Below is an
example of Applicant’s marketing materials referring to its goods:
Assurance® – Future Products24
…
Respiratory Oximeter

To monitor a patient’s respiratory related parameters in addition to
the patient’s pulse rate and oxygen saturation, Assurance is developing
a Respiratory Oximeter. This product candidate consists of a
specialized adapter cable that contains all the electronics needed to
drive the host monitors, housed in a small pod on the cable. The
Assurance multi-sense sensor attaches at one end of the Respiratory
Oximeter cable, which in turn connects into the targeted host monitor.

Thus, although the RESPIRATORY OXIMETRY goods do not specifically perform
oximetry measurements, they connect to the host monitor which displays both
respiratory parameters and oximetry data.25
Generally, if the individual components of a mark retain their descriptive
meaning in relation to the goods, the combination results in a composite mark that
is itself descriptive and not registrable. In re Phoseon Tech., Inc., 103 USPQ2d 1822,
1823 (TTAB 2012). Only where the combination of descriptive terms creates a
unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in
relation to the goods and/or services is the combined mark registrable. See In re

23 July 21, 2014 Response to Office Action, TSDR p. 77 of 78; Applicant’s Reply Brief p. 3,
(11 TTABVUE 4).
24 July 21, 2014 Response to Office Action, TSDR p. 77 of 78, http://www.xhale.com
/assurance/futureAssuranceProducts.asp.
25 Applicant’s Reply Brief, p. 3 (11 TTABVUE 4).
Serial No. 86078293
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Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (CCPA 1968); In re
Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). Inasmuch as
Applicant’s proposed mark RESPIRATORY OXIMETRY describes features or
functions of the medical equipment that connects to the host monitor which displays
both respiratory parameters and oximetry data for a patient’s blood, it is merely
descriptive of Applicant’s goods. Moreover, Applicant itself has promoted its goods
that detect respiratory parameters as an improvement and expansion of pulse
oximetry.

Decision: The refusal to register Applicant’s proposed mark RESPIRATORY
OXIMETRY under § 2(e)(1) is affirmed.