Sunday, May 2, 2010

Brand Name Suffers Heart Failure at U.S. Trademark Trial and Appeal Board

The Trademark Trial and Appeal Board (the “Board”) has laid down the law again – this time against Cardiac Pacemakers, Inc. (the “Applicant”) on the issue of whether its selected trademark RYTHMIQ for a feature of an implantable heart pacemaker or implantable cardiac defibrillator that eliminates unnecessary ventricular pacing is legally protectable. 

The issue on appeal was whether the applied-for mark, RYTHMIQ, describes a function, feature, characteristic, purpose or use of a feature of an implantable heart pacemaker or implantable cardiac defibrillator that eliminates unnecessary ventricular pacing.

As for the issue of whether the applied-for mark RYTHMIQ and term RHYTHMIC are legal equivalents for purposes of trademark descriptiveness, the Board noted – as it has many times before – that novel spellings of otherwise descriptive terms does not convert them into suggestive trademarks eligible for protection upon first use. For example, novel spellings of the term “cleaner,” including “kleener,” for cleaning preparations are not legally protectable. Based upon that well-settled trademark principle, and one that trademark attorneys worth their salt should know, the Board held that the terms RYTHMIQ and RHYTHMIC are legally equivalent for purposes of trademark descriptiveness.

In support of the examining attorney’s position that the term RYTHMIQ merely describes an aspect of Applicant’s goods, she submitted dictionary definitions for the terms rhythmic, rhythm, and pacemaker as well as articles that evidence use of the term “rhythmic” in connection with pacemakers and defibrillators. Those articles included the following excerpts:

A defibrillator is a medical device used to stop the heart in hope that [the] heart will start again with rhythmic contra[c]tions…. The electric shock is used to induce the heart to return [to] rhythmic contractions using its own natural pacemaker cells….

The pulse generator of the artificial pacemaker corrects for a defective sinus node or conduction pathway by emitting rhythmic electrical impulses similar to those of the sinus node. … Artificial pacemaker - corrects for a defective sinus node (see “sinus node” entry) or conduction pathway by emitting a series of rhythmic electrical discharges to control the heartbeat….

My review of the Internet found the following definitions for the terms “rhythmic” and “pacemaker”:

Rhythmic: Of, relating to, or having rhythm.

Pacemaker: an electrical device for stimulating or steadying the heartbeat or reestablishing the rhythm of an arrested heart called also pacer.

Sure looks like the purpose of electrical pacemakers is to create a “rhythmic” heartbeat or reestablish a heart’s “rhythm.” Am I missing something here?

Applicant still, however, ignored the evidence and pushed ahead anyway making some feeble arguments. In support of Applicant’s position that its mark is suggestive and not merely descriptive of its goods, it offered a declaration signed by its Marketing Manager - not one signed by users of its device! No, of course not! Do you think the Board found that self-serving!? That declaration included the following statement:

Applicant has developed a feature permitting the device to vary operating modalities in response to a patient’s conduction patterns to eliminate unnecessary ventricular pacing. This is the feature applicant intends to offer under the RYTHMIQ mark. This feature permits the physician to elect a form of pacing referred to as AAI pacing with VVI pacing as a backup.

Interestingly, it seems that “ventricular pacing” may also be referred to as “ventricular paced rhythm. Also seems to me that the purpose of “pacing” is to provide or restore rhythmic pacing of the heart.

Applicant further argued that (i) the evidence of record failed to show that the term RYTHMIQ describes the feature of Applicant’s goods, which eliminates unnecessary ventricular pacing, (ii) its competitors don’t use the term RYTHMIQ, (iii) the term RYTHIMIC has other meanings in relation to other goods and (iv) intended consumers of Applicant’s goods would perceive the term RYTHMIQ as a trademark and not as a descriptor for its goods.

With respect to the first argument, the Board noted that to find a mark merely descriptive of certain goods it’s not necessary that it describe every aspect of the goods. The Board pointed to Applicant’s own declaration where it stated that “the feature of applicant’s goods…[is] to provide pacing pulses to the atrium of the heart with ventricular pacing as a backup as needed.” The Board then noted that the “purpose of such pacing is to provide or restore rhythmic pacing to the heart.” And that was that.

Moving onto Applicant’s next argument, the Board simply pushed it aside, since evidence that competitors don’t use an applied-for mark does not somehow render a non-distinctive term into a distinctive one.

The Board was not persuaded by Applicant’s argument that the term “rhythmic” has other meanings in relation to other goods, since the issue of descriptiveness is determined in relation to the goods or services at issue and not in the abstract.

Lastly, the Board wasn’t persuaded by the opinion of Applicant’s Marketing Manager regarding the perceptions of the intended consumers. Because there wasn’t any evidence of record evidencing intended customers’ perceptions as to the meaning of the applied-for mark, the Board found that the declarant’s statement had no probative value.

Based upon the evidence of record, the Board held that the term RYTHMIQ immediately describes, without conjecture or speculation, a significant characteristic or feature of Applicant’s goods – namely that they stimulate or reset a normal, rhythmic heartbeat. Accordingly, the Board affirmed the refusal to register the “mark.”

This is another case of a brand owner selecting a non-distinctive term as a “trademark.” Companies that offer brand name selection services – and attorneys that clear marks – should make clear to their clients of the risks associated with adopting non-distinctive terms as "marks.” They should also try to dissuade clients from adopting non-distinctive terms  – even if clients want to push ahead. 

For tips on brand name selection considerations, check out my posts on The Four D’s of Brand Name Selection and Ten Essential Rules for Internet Brand Names.

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