The U.S. Court of Appeals for the Federal Circuit affirmed a U.S. Patent and Trademark Office (USPTO) decision requiring the disclaimer of the term "stereotaxis" apart from the mark as shown, in connection with an application for the mark STEREOTAXIS for medical goods, including "medical imaging apparatus." In re Stereotaxis, Inc. 2005 U.S. App. LEXIS 23264 (Fed. Cir. Oct. 27, 2005) (Friedman, J.).
The applicant based its challenge of the Board of Patent Appeals and Interferences’ (the Board) disclaimer requirement on two main grounds: the Board was required, but failed to specify, the exact, particular products and services that the term "stereotaxis" "merely described"; and there was not substantial evidence that "stereotaxis" was descriptive of any of those products and services.
The applicant’s challenge with respect to the second ground of refusal did not involve any novel question of law or USPTO procedure. The Court found substantial evidence that supported the Board’s finding that, as applied to the applicant’s goods, the term "stereotaxis" was merely descriptive of a feature or characteristic. However, with respect to the first ground of refusal, the applicant advanced an uncommon, if not novel, argument.
According to the Trademark Act, the USPTO "may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." 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." The applicant contended the Board failed to specify with particularity the exact goods to which the disclaimer requirement applied, and, thus, the disclaimer requirement was not proper. The statute empowers the USPTO to require a disclaimer as a condition of registration if the term is merely descriptive of at least one of the products or services involved. As the Court commented, "[w]e 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."
Practice Note
As a practical matter, the "specificity" of a disclaimer would not ordinarily be an issue appealed to the Board. In issuing office actions, examining attorneys ordinarily identify the specific goods and/or services to which a disclaimer requirement applies, especially when an applicant initially refuses to comply with the requirement.
The Federal Circuit's decision in this case confirms that any argument imposing requirements on the USPTO beyond those specifically in the statutes or procedures is rarely successful.
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