   United States Court of Appeals for the Federal Circuit


                                           05-1059
                                   (Serial No. 78/108,674)




                                 IN RE STEREOTAXIS, INC.




       Bryan K. Wheelock, Harness, Dickey & Pierce, PLC, of St. Louis, Missouri, argued for
appellant.

       Nancy C. Slutter, Associate Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Arlington, Virginia, argued for the Director of the Patent and Trademark
Office. With her on the brief were John M. Whealan, Solicitor, and Linda Moncys Isacson,
Associate Solicitor.


Appealed from: United States Patent and Trademark Office,
               Trademark Trial and Appeal Board
 United States Court of Appeals for the Federal Circuit
                                        05-1059

                              IN RE STEREOTAXIS, INC.

                         ______________________________

                          DECIDED: October 27, 2005
                         ______________________________



Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and DYK, Circuit
Judge.

FRIEDMAN, Senior Circuit Judge.

      The appellant Stereotaxis, Inc. (“the Applicant”) challenges the decision of the

Trademark Trial and Appeal Boardof the United States Patent and Trademark Office

(“Board”) conditioning registration of the trademark “stereotaxis” and design for medical

goods and services on disclaiming the word “stereotaxis” because, as thus used, it is

merely descriptive. We affirm.

                                            I

      The Applicant makes and sells magnetic surgery equipment, including magnetic

systems that create a navigating magnetic field in the body, and medical devices that

respond to such fields. The Applicant sought to register the trademark shown below for

twelve specified goods and services.       The twelve goods and services included

“Magnetic Navigation Systems for Medical Applications,” “Magnetic Medical Devices,”

“Magnets and Electromagnets for Medical Applications,” and “Medical Imaging

Apparatus.”
       The Trademark Examining Attorney concluded that under the Applicant’s

proposed uses of the mark, the word “stereotaxis” was merely descriptive and had to be

disclaimed before the mark could be registered. She explained that “[a] disclaimer does

not remove the disclaimed matter from the mark. It is simply a statement that the

applicant does not claim exclusive rights in the disclaimed wording or design apart from

the mark as shown in the drawing.”

       After the Patent and Trademark Office (“Trademark Office”) continued the refusal

to register, the Applicant appealed the disclaimer requirement to the Board, which

affirmed. The Board stated that “[i]t is well settled that a term is considered to be merely

descriptive of goods or services . . . if it forthwith conveys an immediate idea of any

ingredient, quality, characteristic, feature, function, purpose or use of the goods or

services.” In re Stereotaxis, Inc., No. 7810867 (TTAB July 20, 2004) (slip op.). It noted

“that registration must be denied if a term is merely descriptive of any of the goods or

services for which registration is sought.”       It concluded that the term “stereotaxis”

“immediately describes . . . significant information concerning the nature, purpose or

function of at least some, if not most, of the applicant’s goods,” and therefore must be

disclaimed.

                                             II

       The Applicant challenges the Board’s disclaimer requirement on two grounds:

(A) that the Board was required, but failed, to specify the particular products and


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services that the term “stereotaxis” “merely described;” and (B) that there is not

substantial evidence that “stereotaxis” is descriptive of any of those products and

services.

      A. The Director of the Trademark Office “may require the applicant to disclaim

an unregistrable component of a mark otherwise registrable.” 15 U.S.C. § 1056(a).        A

mark or component is unregistrable if, “when used on or in connection with the goods of

the applicant,” it is “merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). Our

predecessor court, the Court of Customs and Patent Appeals, whose decisions bind us

(South Corp. v. United States, 690 F.2d 1368, 1371 (Fed. Cir. 1982) (en banc)), has

stated that “registration should be refused if the mark is descriptive of any of the goods

for which registration is sought.” Application of Richardson Ink Co., 511 F.2d 559, 561

(CCPA 1975). See In re Am. Soc’y Clinical Pathologists, Inc., 442 F.2d 1404, 1407

(CCPA 1971); Quik-Print Copy Shop, 616 F.2d 523, 525 (CCPA. 1980); 2 J. Thomas

McCarthy, Trademarks and Unfair Competition § 11.18 (2d ed. 1984).

      Thus, the Trademark Office may require a disclaimer as a condition of

registration if the mark is merely descriptive for at least one of the products or services

involved. We know of no requirement in the trademark statutes or elsewhere that the

Board must make the additional analysis the Applicant seeks in order to determine that

a proposed mark is merely descriptive as applied to the Applicant’s products and

services. Here the Board “f[ou]nd” that

             when used in connection with applicant’s goods, the term
             “STEREOTAXIS” immediately describes, without conjecture
             or speculation, significant information concerning the nature,
             purpose or function of at least some, if not most, of
             applicant’s goods, namely, that they are stereotaxis medical
             or surgical devices.



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Stereotaxis, No. 7810867.

       If this finding is supported by substantial evidence – and as we now show, it is –

it suffices to support the Board’s determination that, as used with the Applicant’s

products and services, the term “stereotaxis” is merely descriptive, without the

additional particularization that the Applicant would require.

       B. “The Board's determination that a mark is merely descriptive is a factual

finding, which this court upholds unless unsupported by substantial evidence.” In re

MBNA Am. Bank N.A., 340 F.3d 1328, 1332 (Fed. Cir. 2003); see In re Nett Designs,

236 F.3d 1339, 1341 (Fed. Cir. 2001).

       “Evidence [that a term is merely descriptive] may be obtained from any

competent source, such as dictionaries, newspapers, or surveys.”            In re Bed &

Breakfast Registry, 791 F.2d 157, 160 (Fed. Cir. 1985); see In re Northland Aluminum

Prods, Inc., 777 F.2d 1556, 1559 (Fed. Cir. 1985). Here, the evidence the Board relied

on to show that “stereotaxis” is merely descriptive consisted of dictionary definitions and

a press release by one of the Applicant’s investors about the Applicant’s products and

services. Stereotaxis, No. 7810867, slip op. at 4-7.

       One of these dictionary definitions, from the Encarta World English Dictionary

(North American ed. 2004), described “stereotaxis” as a “technique in brain surgery:

neurological surgery involving the insertion of delicate instruments that are guided to a

specific area by the use of three-dimensional scanning techniques.”          (Encarta has

changed the definition from “a specific area” to “the relevant area” since the Board’s

decision in July 2004. That change does not alter our analysis.) Another dictionary,

MedTerms.com Medical Dictionary (2005), defines “stereotaxis” as the “[u]se of a




05-1059                                      4
computer and scanning devices to create three-dimensional pictures.” These definitions

describe several of the uses the Applicant ascribed to its products and services in its

trademark registration application, including “Magnetic Navigation Systems for Medical

Applications,” “Magnetic Medical Devices,” “Magnets and Electromagnets for Medical

Applications,” and “Medical Imaging Apparatus.”

      The Applicant contends that the Board failed to consider dictionary definitions

that are more “reflective of the purchasing public’s understanding of the term.” The

Applicant argues that the Board erred by not limiting its definition of “stereotaxis” to

products and services that utilize an external reference frame, a computer and a

scanning device, which the Applicant’s products do not use. An external reference

frame is a system in which points outside the body are used in coordination to pinpoint a

specific point inside the body. The Applicant, however, does not show that an external

reference frame, a computer and a scanning device are essential elements, rather than

simply a common methodology, of stereotaxis.

      The issue before us is whether substantial evidence supports the Board’s finding

that, as applied to the Applicant’s products and services, “stereotaxis” is merely

descriptive, and not whether there is also evidence that would support another

classification of that mark. See In re Nett Designs, 236 F.3d at 1341 (“Any competent

source suffices to show the relevant purchasing public's understanding of a contested

term or phrase.”). To prevail in its claim, the Applicant must show that its proposed

definition would be understood by the relevant public – here the medical profession – to

be the only meaning of the term. See In re Abcor Dev. Corp., 588 F.2d 811, 813 (CCPA

1978) (“The major reasons for not protecting such [merely descriptive] marks are: (1) to




05-1059                                    5
prevent the owner of a mark from inhibiting competition in the sale of particular goods;

and (2) to maintain freedom of the public to use the language involved, thus

avoiding the possibility of harassing infringement suits by the registrant against others

who use the mark when advertising or describing their own products.”).

       The Applicant has not made that showing.         Accordingly, the fact that the

Applicant’s products may use magnets and magnetic imagery rather than an external

frame of reference and computer generated imagery is not enough to invalidate the

finding that the Applicant’s proposed use of the term “stereotaxis” is merely descriptive

of its products and services.

       The Board’s finding that the Applicant’s proposed use of the mark is merely

descriptive is further supported by a press release by Advent International announcing

that it had been a co-lender of a $25.5 million investment in the Applicant. The release

stated: “Stereotaxis will use the new capital to expand the clinical development of its

proprietary Magnetic Navigation System (MNS). The system is designed to integrate

magnetics, computers and three-dimensional medical imaging to help clinicians

navigate and control catheters and other surgical instruments throughout the body.”

Although, as the Applicant points out, the press release was neither made on behalf of

the Applicant nor contemporaneous with the trademark application, the release

nevertheless is relevant because it is evidence of the public’s perception of the

applicant’s products and services.    Whether a mark is merely descriptive or not is

“determined from the viewpoint of the relevant purchasing public.” Bed & Breakfast

Registry, 791 F.2d at 160.




05-1059                                    6
       Substantial evidence supports the Board’s finding that as applied to the

Applicant’s products and services, “stereotaxis” is merely descriptive.

                                         CONCLUSION

       The decision of the Trademark Trial and Appeal Board, affirming the disclaimer

of the term “stereotaxis,” is

                                          AFFIRMED.




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