The evidence showed that applicant's goods are used for "diagnostic mammography," and that mammography is "radiography of the mammary gland." Radiography is the production of "a photographic image produced by the action of x-rays or nuclear radiation." Applicant Fischer, in a response to a request for information, stated that it intended to use the mark in connection with medical equipment used in breast imaging and biopsy procedures, employing computerized tomography.
Examining Attorney Brendan McCauley maintained that the mark describes a feature, characteristic, or purpose of the goods: namely, CAT or computer axial tomography apparatus and equipment used in breast biopsies.
Dictionary definitions established that "mammo" is a "combining form denoting relationship to the breast, or to a mammary gland." CAT is, of course, an abbreviation for "computerized axial tomography," a radial imaging technique that produces images of tissue density in slices through the patient's body. The question was whether the combination of the terms "CAT" and "mammo" evokes a new and unique commercial impression, or whether the two descriptive components merely provide a composite meaning that is itself merely descriptive.
The Board found that MAMMOCAT, when used in connection with the identified goods, means a mammographic cat scan. Each term retains its original descriptive meaning.
Applicant argued that dissecting the mark into two words is not the only way the term could be parsed [MAMM O'CAT? - ed.], and in any case the terms MAMMO and CAT have multiple meanings. Consumers would have to exercise logic and reasoning to understand the nature of its products. The Board pointed out, however, that the meaning of a mark must be determined in relation to the identified goods, not in a vacuum.
Applicant pointed to third-party registrations for ORTHCAT and pedCAT, but the Board shrugged them off, observing once again that it is not bound by prior actions of the PTO in other cases.
Finally, applicant pointed to a CCPA decision deeming BIASTEEL to be not merely descriptive of tires. There, the court noted that "prior decisions in this area are not very helpful in deciding the issue of descriptiveness. The final determination is many times quite subjective." Here, although there was no evidence that third-parties use MAMMO and CAT together, the evidence was sufficient to show that MAMMOCAT is descriptive. There was nothing in the record to suggest that MAMMOCAT has any other meaning than, or would be perceived as referring to anything other than, a mammography CAT scan. And even if applicant is the first and only user of MAMMOCAT, it may still be descriptive of the goods.
And so the Board affirmed the Section 2(e)(1) refusal.
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TTABlog note: Do you think this is a WYHA? Or does the third-party evidence and prior CCPA decision keep it out of that category?
Text Copyright John L. Welch 2013.
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