## 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 St ates Patent and Trademark Office, of Arlington, Vi rginia, 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 Un ited States Patent and Trademark Office (“Board”) conditioning registration of the tradem ark “stereotaxis” and design for medical goods and services on disclaiming the word “ster eotaxis” 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 navigati ng 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 A pplications,” “Magnetic Medical Devices,” “Magnets and Electromagnets for Medical A pplications,” and “Medical Imaging Apparatus.”The Trademark Examining Attorney c oncluded that under the Applicant’s proposed uses of the mark, the word “stereot axis” was merely descriptive and had to be disclaimed before the mark coul d be registered. She explained that “[a] disclaimer does not remove the disclaimed matter from the ma rk. It is simply a statement that the applicant does not claim exclusive rights in t he 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 in formation 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 requir ed, but failed, to specify t he particular products and

05-1059 2services that the term “stereotaxis” “mere ly described;” and (B) that there is not substantial evidence that “ste reotaxis” 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, “w hen 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 Pa tent 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 t he 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 requi re 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 r equirement in the trademark stat utes or elsewhere that the Board must make the additional analysis the App licant 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 de scribes, without conjecture or speculation, significant in formation concerning the nature, purpose or function of at l east some, if not most, of applicant’s goods, namely, that t hey are stereotaxis medical or surgical devices.

05-1059 3Stereotaxis , No. 7810867. If this finding is supported by substantial evidence – and as we now show, it is – it suffices to support the Board’s determi nation that, as used with the Applicant’s products and services, the term “stereotax is” 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 unle ss 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 dicti onaries, 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 descr iptive consisted of dictionary definitions and a press release by one of the Applicant’s in vestors about the Applicant’s products and services. Stereotaxis , No. 7810867, slip op. at 4-7. One of these dictionar y definitions, from the Encarta World English Dictionary (North American ed. 2004), described “stereot axis” 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 s pecific area” to “the relev ant area” since the Board’s decision in July 2004. That change does not alter our analysis.) Another dictionary, MedTerms.com Medical Dictionary (2005), defines “stereotax is” as the “[u]se of a

05-1059 4computer and scanning devices to create three-di mensional 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 Device s,” “Magnets and Electromagnets for Medical Applications,” and “Medical Imaging Apparatus.” The Applicant contends that the Board fail ed to consider dictionary definitions that are more “reflective of the purchas ing public’s understanding of the term.” The Applicant argues that the Boar d erred by not limiting its def inition of “stereotaxis” to products and services that utilize an exter nal 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 Applican t, however, does not show that an external reference frame, a computer and a scanning dev ice are essential elements, rather than simply a common methodology, of stereotaxis. The issue before us is whether substant ial 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 al so 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 pur chasing public's understand ing 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 5prevent the owner of a mark from inhibiting competition in the sa le of particular goods; and (2) to maintain freedom of the pub lic to use the language involved, thus avoiding the possibility of harassing infringem ent suits by the regi strant against others who use the mark when advertising or describing their own products.”). The Applicant has not made that showi ng. Accordingly, the fact that the Applicant’s products may use magnets and m agnetic imagery rather than an external frame of reference and computer generat ed imagery is not enough to invalidate the finding that the Applicant’s proposed use of t he 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 capita l to expand the clinical development of its proprietary Magnetic Navigation System (MNS) . The system is designed to integrate magnetics, computers and thr ee-dimensional medical im aging to help clinicians navigate and control catheters and other surg ical instruments throughout the body.” Although, as the Applicant poi nts out, the press release wa s neither made on behalf of the Applicant nor contem poraneous with the trademark app lication, the release nevertheless is relevant bec ause 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 6Substantial evidence supports the Boar d’s finding that as applied to the Applicant’s products and services, “stereotaxis” is merely descriptive. CONCLUSION The decision of the Tradem ark Trial and Appeal Board, affirming the disclaimer of the term “stereotax is,” is AFFIRMED

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