Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE INTELLIGENT MEDICAL SYSTEMS, INC.
Serial No. 567,867
October 7, 1987
Michael H. Jester, Freling E. Baker, Lawrence A. Maxham and Edward W. Callan for applicant
G. T. Glynn
Trademark Examining Attorney
Law Office 3
(Myra K. Kurzbard, Managing Attorney)
Before Rice, Rooney and Hanak
Applicant applied to register the mark INTELLIGENT MEDICAL SYSTEMS in block letters for 'electronic thermometers for measuring human body temperature.' [FN1] Registration was refused under Section 2(e)(1) of the Lanham Trademark Act on the ground that the term sought to be registered was 'merely descriptive' of applicant's goods. Applicant and the Examining Attorney have filed briefs. No oral hearing was requested.
At the request of the Examining Attorney, the applicant submitted literature and a copy of U.S. Patent No. 4,602,642 owned by the applicant describing with great specificity the type of electronic thermometer for which registration of the term INTELLIGENT MEDICAL SYSTEMS was sought. In an Office Action dated September 8, 1986, the Examining Attorney noted that the aforementioned material reflects 'the presence of a microcomputer or electronic microprocessor within applicant's merchandise' and went on to state that INTELLIGENT 'is a generic computer/ADP trade term today.' On this basis, the Examining Attorney refused registration pursuant to Section 2(e)(1).
Applicant readily concedes that its electronic thermometer contains an electronic processor. However, applicant denies that its electronic thermometer is "intelligent." The applicant has noted that its "thermometer merely calculates body temperature using calibration data. Applicant's product does not function like a personal or general purpose computer." (Applicant's brief page 5). Continuing, applicant notes that "the word INTELLIGENT does not have any special significance or meaning in the medical products industry." (Applicant's brief page 5). The Examining Attorney does not take issue with the foregoing statements by applicant.
A term is merely descriptive pursuant to Section 2(e)(1) if, when applied to the relevant goods, it immediately imparts information concerning those goods to an average prospective purchaser of the goods. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). Therefore, the issue is whether the mark INTELLIGENT MEDICAL SYSTEMS conveys an immediate idea of the ingredients, qualities, functions, uses or characteristics of electronic thermometers to average prospective purchasers of said electronic thermometers.
To begin with, as noted, the Examining Attorney has not disputed applicant's point that the word 'intelligent' has no special significance or meaning in the medical products field. Hence, the facts of record in this case differ from those of Hayes Microcomputer Products, Inc. v. Business Computer Corp., 219 USPQ 634, 637 (TTAB 1984) where the Board--in sustaining an opposition to the registration of INTELLIGENT MODEM for data processing and data communications equipment--noted that the 'opposer has established that those in the data processing and data communication field know that intelligent modem means an advanced modem with sophisticated features.' [FN2]
*2 While the Examining Attorney has made of record evidence indicating that 'intelligent' is descriptive of computers including microprocessors, no evidence has been made of record indicating that 'intelligent' is descriptive of any medical devices, specifically including 'electronic thermometers for measuring human body temperature.' In short, there is no evidence in this record demonstrating that INTELLIGENT MEDICAL SYSTEMS or the word 'intelligent' per se 'forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the [relevant] goods.' In re Abcor Development Corp., supra 200 USPQ at 218.
The fact that the word 'intelligent' is, for the sake of argument, descriptive of a component within applicant's electronic thermometers (i.e. the electronic processor) does not automatically mean that this word is 'merely descriptive' of the electronic thermometers themselves. [FN3] For example, as applied to an electronic thermometer, the word 'intelligent' could suggest that selecting said thermometer represents an intelligent choice because, as noted in applicant's literature, the thermometer is quicker and easier to use. The word 'merely' in Section 2(e)(1) 'means that if the mark clearly does not tell the potential customer only what the goods are, their function, characteristics, use or ingredients, then the mark is not 'merely descriptive." 1 McCarthy, Trademarks and Unfair Competition, § 11:18 at p. 481 (2d ed. 1984). While the word 'intelligent' when applied to computers may immediately impart information about computers to average prospective purchasers of computers, the word 'intelligent' when applied to electronic thermometers does not, insofar as the record herein shows, immediately impart with any 'degree of particularity' [FN4] information about electronic thermometers to average prospective purchasers of electronic thermometers. In short, it cannot be said that INTELLIGENT MEDICAL SYSTEMS as applied to an electronic thermometer only serves to inform prospective purchasers of an ingredient within the electronic thermometer, namely a computer or microprocessor.
This Board has noted on a number of occasions that 'there is a thin line between a suggestive and a merely descriptive designation, and where reasonable men may differ, it is the Board's practice to resolve the doubt in applicant's favor and publish the mark for opposition.' In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981). See also In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972) and In re The Gracious Lady Service, Inc., 175 USPQ 380, 382 (TTAB 1972).
Based on the present record before us--with particular reference to the absence of any evidence even suggesting that INTELLIGENT MEDICAL SYSTEMS or simply 'intelligent' has any meaning when applied to electronic thermometers or indeed any medical devices--we cannot say that the mark in question is 'merely descriptive' of applicant's goods.
*3 Decision: The refusal to register is reversed.
J. E. Rice
L. E. Rooney
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Serial No. 567,867 filed November 12, 1985 claiming first use on October 4, 1985. Applicant has disclaimed exclusive rights to 'medical systems' apart from the mark as a whole.
FN2. We have distinguished Hayes Microcomputer, supra because it was discussed at length by applicant in its main and reply briefs. However, as a result of a stipulation filed by the parties in Hayes Microcomputer settling the case and requesting that the opposition be dismissed (which stipulation crossed in the mail with the Board's decision), this Board vacated its decision in Hayes Microcomputer. Hence, said decision is not precedent.
FN3. There is nothing in the record to indicate that applicant is using INTELLIGENT MEDICAL SYSTEMS to describe the electronic processor within its electronic thermometer. The facts here are dissimilar from those in In re Chicago Pneumatic Tool Co., 160 USPQ 628, 629-630 (TTAB 1968) where this Board--in affirming a refusal to register EVEN-TORK pursuant to Section 2(e)(1)--noted as follows: 'While applicant has described its goods as 'power operated screwdrivers,' the specimens of record and a descriptive leaflet submitted by applicant . . . show that the mark is used to identify a clutch which is a component part of a power operated screwdriver sold by applicant under the mark 'TOUCH-TITE' . . . It is our opinion that the unitary term 'EVEN-TORK' immediately indicates that the clutch component provides an even twisting or driving force . . .'
FN4. Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 952 (TTAB 1981); In re TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978); In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986).