Brainlab SE

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: May 26, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Brainlab SE
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Serial No. 79371727
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Patrick Clunk and Francesca LaMontagne of Tucker Ellis LLP,
for Brainlab SE.
Brendan Smith, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____
Before Goodman, Allard, and Elgin,
Administrative Trademark Judges.
Opinion by Allard, Administrative Trademark Judge:
Brainlab SE (“Applicant”) seeks registration on the Principal Register of the
standard character mark EXACTRAC DYNAMIC SURFACE (SURFACE disclaimed)
for goods ultimately identified as:
• “Computers; downloadable and recorded planning software and downloadable
and recorded computer software programs for radiotherapeutic and
radiosurgical purposes; computer hardware and recorded software for image
guided patient positioning and monitoring, particularly based on optical and
thermal imaging modalities; prerecorded magnetic and electronic data carriers
featuring recorded software for radiotherapeutic and radiosurgical purposes,”
in International Class 9; and

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• “Electrical and electronic instruments and apparatus for medical purposes,
namely radiotherapeutic apparatus; electrical and electronic instruments and
apparatus for medical purposes for use in radiotherapy; image-processing and
image-presenting instruments and apparatus for medical and surgical
purposes and for image guided patient positioning and monitoring,
particularly based on optical and thermal imaging modalities for use in
radiotherapeutic procedures; intra-operative image guided localization
instruments and apparatus being radiotherapeutic devices and apparatus;
instruments and apparatus for software driven high precision treatments in
radiosurgery and radiotherapy, namely, radiotherapy apparatus; patient
immobilization devices and apparatus, namely, patient immobilization masks
for medical purposes,” in International Class 10.1
The Trademark Examining Attorney refused registration of the proposed mark
under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s
failure to comply with the requirement to disclaim both terms DYNAMIC SURFACE
on the ground that the terms are merely descriptive of Applicant’s identified goods
within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
and are thus an unregistrable component of the mark.
After the refusal was made final, Applicant concurrently filed a notice of appeal
and requested reconsideration.2 The Board suspended the proceeding and remanded
the application back to the Examining Attorney to act on the request for
1 Application Serial No. 79371727 was filed on April 25, 2023, as a request for extension of
protection of International Registration No. 1734584 under Section 66(a) of the Trademark
Act, 15 U.S.C. § 1141f(a).
2 1 TTABVUE; July 22, 2025 Request for Reconsideration after Final.
References to the briefs on appeal refer to TTABVUE, the Board’s online docketing system.
The number preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry.
Page references herein to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (“TSDR”) system.

Serial No. 79371727
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reconsideration.3 Before the Examining Attorney acted on it, however, Applicant and
the Examining Attorney fully briefed this matter.4 Only after this appeal was fully
briefed did it come to the attention of the Board that the request for reconsideration
had not been addressed. Accordingly, the Board remanded the application back to the
Examining Attorney, who subsequently denied the request.5 Because the request for
reconsideration did not involve a new refusal, new factual or legal issues, or any new
evidence, and the Examining Attorney denied it for reasons that were already fully
covered in the previously-filed appeal briefs, no supplemental briefing was
warranted.6 Proceedings then resumed.7
For the reasons discussed below, we affirm the refusal under Section 6(a).
I. Disclaimer Requirement – Applicable Law
In the absence of acquired distinctiveness, which Applicant does not allege here,
merely descriptive terms are unregistrable under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), and therefore are subject to disclaimer if the mark is
otherwise registrable. A “disclaimer” is a statement that an applicant does not claim
exclusive rights to an unregistrable component of a mark:
[A] disclaimer of a component of a composite mark amounts
merely to a statement that, in so far as that particular
registration is concerned, no rights are being asserted in
the disclaimed component standing alone, but rights are
3 2 TTABVUE.
4 Applicant’s brief appears at 4 TTABVUE, the Examining Attorney’s brief appears at 6
TTABVUE, and Applicant’s reply brief appears at 7 TTABVUE.
5 10, 11 TTABVUE.
6 12 TTABVUE.
7 12 TTABVUE.

Serial No. 79371727
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asserted in the composite; and the particular registration
represents only such rights as flow from the use of the
composite mark.
In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1338 (Fed. Cir. 2015) (Newman, Circuit
Judge, concurring).
An examining attorney may require an applicant to disclaim an unregistrable
component of an otherwise registrable mark. Trademark Act Section 6(a), 15 U.S.C.
§ 1056(a) (“The Director may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable.”). Failure to comply with a disclaimer
requirement is a basis for refusal. In re Stereotaxis, Inc., 429 F.3d 1039, 1041 (Fed.
Cir. 2005) (“[T]he 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.”); In re Korn Ferry, No. 90890949, 2024 TTAB LEXIS 224, at *5
(TTAB 2024) (“Failure to provide the required disclaimer constitutes a ground for
refusing registration.”) (quoting In re Lego Juris A/S, No. 88698784, 2022 TTAB
LEXIS 175, at *6 (TTAB 2022)).
II. Analysis
The Examining Attorney required Applicant to disclaim the terms DYNAMIC
SURFACE apart from the mark as a whole, asserting that in the context of
Applicant’s identified goods, DYNAMIC SURFACE merely describe a feature or
function of Applicant’s goods, namely, “the ability of the goods [to] constantly track a
patient’s body surface, and collect data and imaging thereof, to provide

Serial No. 79371727
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radiotherapeutic or radiosurgical treatment.”8 The Examining Attorney maintains
that the terms DYNAMIC SURFACE create “a merely descriptive commercial
impression that is distinct from the terms DYNAMIC and SURFACE on their own.”9
Because the entire phrase DYNAMIC SURFACE is merely descriptive, a disclaimer
of the entire phrase, not just the term SURFACE, is required.10
In support of his argument, the Examining Attorney made of record definitions of
each term from the MERRIAM-WEBSTER DICTIONARY:
• DYNAMIC is defined as “marked by usually continuous and productive
activity or change;”11 and
• SURFACE is defined as “the exterior or upper boundary of an object or
body,” i.e., “on the surface of the water” and “the earth’s surface.”12
8 6 TTABVUE 6.
We take judicial notice of the following dictionary definitions, all from the Merriam-Webster
Dictionary:
• “Radiotherapy” is defined as “the treatment of disease by means of radiation (as X-
rays); called also radiation therapy, radium therapy”. https://www.merriam-
webster.com/dictionary/radiotherapy.
• “Radiosurgery” is defined as “surgery by means of a radio knife.”
https://www.merriam-webster.com/dictionary/radiosurgery.
• “Radio” is defined as “(1) of, or relating to, or operated by radiant energy[;] (2) of or
relating to electric currents or phenomena (such as electromagnetic radiation) of
frequencies between about 3000 hertz and 300 gigahertz.” https://www.merriam-
webster.com/dictionary/radio.
Each definition was accessed on May 22, 2026. In re Tapio GmbH, No. 87941532, 2020 TTAB
LEXIS 483, at *19 n.22 (TTAB 2020) (“We take judicial notice of these dictionary
definitions.”).
9 6 TTABVUE 6.
10 6 TTABVUE 6.
11 June 12, 2024 Office Action at TSDR 4.
12 June 12, 2024, Office Action at TSDR 12.

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Applicant’s own website describes its product in a manner consistent with each
term’s dictionary definition. For example, Applicant’s website states:
• “ExacTrac Dynamic Surface®, with its thermal-surface camera, is a
surface guided radiation therapy (SGRT) patient tracking system
that offers streamlined workflows, enables department-wide
standardization and can always be upgraded to an ExacTrac Dynamic®
system to include X-Ray verification.”13
• “From the start of prepositioning to delivery of the last gray, the central
position of the thermal-surface camera provides real-time monitoring
and an unobstructed view of the patient. By augmenting the surface
grid with thermal information, highly accurate tracking of the
patient’s surface is maintained throughout the entire procedure.”14
• “Surface guided radiotherapy enables precise tracking of the patient’s
surface and breathing to consistently gate the beam so the tumor
is only irradiated when in the planned position.”15
• “300,000 3D surface points are acquired by two 3D cameras and matched
to the heat signal obtained by the thermal camera, creating another
dimension to track the patient’s position.”16
• “The combined use of these products leverages the surface and breathing
information of the patient to efficiently perform prepositioning
and monitoring and gate the beam automatically as needed.”17
• “[C]linical workflows can become more time efficient and optimized while
enabling accurate tracking of the patient’s surface and providing safe
radiation delivery.”18
• “This integration enables efficient tracking and automated beam hold
based on the thermal-surface and breathing of the patient.”19
13 June 12, 2024, Office Action at TSDR 31-32 (emphasis added).
14 June 12, 2024, Office Action at TSDR 32 (emphasis added).
15 June 12, 2024, Office Action at TSDR 33 (emphasis added).
16 June 12, 2024, Office Action at TSDR 36 (emphasis added).
17 June 12, 2024, Office Action at TSDR 36 (emphasis added).
18 June 12, 2024, Office Action at TSDR 36 (emphasis added).
19 June 12, 2024, Office Action at TSDR 36 (emphasis added).

Serial No. 79371727
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• “Monitor [the patient’s] surface during external imaging and constantly
track their thermal surface during beam delivery to maintain accuracy
and safety.”20
We agree with the Examining Attorney that other evidence of record consisting of
printouts from third-party websites shows that within the context of medical devices
and applications, particularly radiotherapy, the phrase DYNAMIC SURFACE
merely describe a feature or function of medical devices to continuously track a
patient’s body surface during a procedure through a range of patient movements,
consistent with applicant’s own description of the features, function, and purpose of
its identified goods:
• CLA published a paper titled, “Dynamic Surface Electromyography.”
“Affixed surface electrodes may be employed for real time assessment of
paraspinal muscle activity through ranges of motion. The author has
developed a protocol for the dynamic assessment of paraspinal muscle
activity in chiropractic practice.”21
• IEEE.com published an article titled “3D Body Surface Measurement and
Display in Radiotherapy Part II: Dynamic Surface Sensing and
Visualisation.” The phrase “dynamic surface” appears several times in the
article, the following of which is representative: “Data captured at video
frame rates provides the very first genuinely dynamic information across
the patient body surface during high energy radiation therapy...it is shown
that display of the dynamic surface data can be reduced to a mean surface
height map and a residual surface time series.”22
• IOPScience published a paper entitled “Real-Time Optical Measurement of
the Dynamic Body Surface for Use in Guided Radiotherapy,” which
includes the following: “Optical measurements are increasingly used in
radiotherapy. In this paper we present … the design and implementation
20 June 12, 2024, Office Action at TSDR 37 (emphasis added).
21 June 12, 2024 Office Action at TSDR 22-27 (emphasis added).
22 January 22, 2025 Final Action at TSDR 5-13 (emphasis added).

Serial No. 79371727
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of a multi-channel optical system optimized for fast, high spatial resolution,
dynamic body surface measurement in guided therapy.”23
• ACTA Press published a paper titled “Visualisation of Dynamic Surface
Data for a Patient Display to Reduce Movement during Radiotherapy.” It
recites, for example: “[W]e use an optical sensor system to gather real-time
positional data about the patient during radiotherapy. When the
mean-surface, calculated by taking optical data over a number of
breathing periods, is subtracted from each sequential surface in a dataset
the result is a simple flexing surface lamina.”24
• Science Direct published a paper on the topic of breast cancer radiotherapy,
which includes several references to “dynamic surface,” such as:
o “To limit the impact of a patient breathing on surface deformation,
dynamic surface captures and the use of corrected patient position
should be privileged.”25
o “Next, dynamic surface captures were acquired across the entire
breathing cycle....”26
o “Taking dynamic surface captures proved efficient in minimizing
such uncertainties with a systematic analysis at end exhale.”27
o “Nonetheless, the conservative approach introduced here to manage
patient breathing based on dynamic surface captures should allow
for good estimate of tissue swelling at the end exhale phase.”28
• National Library of Medicine published a paper titled “The Role of Optical
Surface Imaging Systems in Radiation Therapy.” It states: “SGRT
[Surface-Guided Radiation Therapy] enables a reduction of initial setup
variability, provides verification of immobilization continuously during
treatment including at noncoplanar linac gantry angles, and provides
dynamic surface information for use in gated and breath-hold treatment
23 January 22, 2025 Final Action at TSDR 14-34 (emphasis added).
24 January 22, 2025 Final Action at TSDR 35 (emphasis added).
25 January 22, 2025 Final Action at TSDR 38 (emphasis added).
26 January 22, 2025 Final Action at TSDR 41 (emphasis added).
27 January 22, 2025 Final Action at TSDR 45 (bold added, underlining in original).
28 January 22, 2025 Final Action at TSDR 46 (emphasis added).

Serial No. 79371727
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techniques, all of which can permit reduction in the margins required to
account for target localization uncertainty.”29
Here Applicant’s use of the phrase DYNAMIC SURFACE as evidenced by its
website is consistent with each term’s dictionary definition and with the third-party
website evidence of record discussed above, all of which shows that consumers will
understand the terms to mean the ability of the identified goods to continuously track
a patient’s body surface and collect data and imaging therefrom throughout the
duration of a treatment or procedure. In re N.C. Lottery, 866 F.3d 1363, 1367-69 (Fed.
Cir. 2017) (applicant’s own promotional materials helped evidence mere
descriptiveness). Indeed, an applicant’s own website and marketing materials may
be “the most damaging evidence” in indicating how the relevant purchasing public
perceives a term. In re Gould Paper Corp., 834 F.2d 1017, 1019 (Fed. Cir. 1987).
Applicant does not challenge or dispute the above-described evidence. Rather, it
argues that the term DYNAMIC must be considered on its own and that, on its own,
it is a suggestive term.30 We disagree and find that the evidence of record
demonstrates that DYNAMIC SURFACE is unitary because the phrase has a fairly
uniform and established meaning when used in connection with medical devices and
their applications, particularly those for use in the field of radiotherapy, where the
terms describe the ability to continuously monitor and collect data from the surface
of a patient’s body even while the patient is moving, such as from breathing. As shown
by the dictionary definitions and third-party website evidence of record, this meaning
29 January 22, 2025 Final Action at TSDR 51-53 (emphasis added).
30 4 TTABVUE 4.

Serial No. 79371727
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directly and immediately describes a feature, function or purpose of Applicant’s
identified goods in both classes, such as (1) “downloadable and recorded planning
software and downloadable and recorded computer software programs for
radiotherapeutic and radiosurgical purposes,” in International Class 9; and (2)
“instruments and apparatus for software driven high precision treatments in
radiosurgery and radiotherapy, namely, radiotherapy apparatus,” in International
Class 10. These goods inherently involve the collection of data from a continuously
moving patient. There is no multitude of connotations here that would require
imagination to connect the terms DYNAMIC SURFACE to the identified goods;
rather, the entire phrase is merely descriptive as explained in more detail below.
Applicant argues that the term DYNAMIC is suggestive because the term (1) “only
vaguely suggests a desirable characteristic of a ‘continuous and productive activity’
performed by a good or service”31 and (2) “does not directly convey a specific, concrete
aspect of the goods.”32 Because the term DYNAMIC “may carry a number of different
meanings, such as a product that is constantly changing, energetic, responsive, or
suitable for active environments,”33 Applicant contends that one must exercise some
imagination or thought to arrive at the proper understanding of the phrase in light
of the identified goods.34 Applicant also maintains that the phrase DYNAMIC
31 4 TTABVUE 5.
32 4 TTABVUE 6.
33 4 TTABVUE 6.
34 4 TTABVUE 6.

Serial No. 79371727
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SURFACE is suggestive.35 We disagree. “It is well settled that so long as any one of
the meanings of a term is descriptive, the term may be considered to be merely
descriptive.” In re Mueller Sports Med., Inc., No. 87209946, 2018 TTAB LEXIS 156,
at *18 (TTAB 2018) (quoting In re Chopper Indus., No. 73273140, 1984 TTAB LEXIS
118, at *5-6 (TTAB 1084)). “The fact that a term may have other meanings in different
contexts is not controlling.” In re Nursecon, LLC, No. 88052194, 2024 TTAB LEXIS
545, at *16 (TTAB 2024). See also In re Tokutake Indus. Co., No. 79018656, 2008
TTAB LEXIS 26, at *12 (TTAB 2008) (affirming refusal to register AYUMI and
Japanese-character equivalent as merely descriptive of footwear despite evidence of
multiple meanings of “ayumi,” including “walking,” “a step,” and “one’s pace”). Here,
and contrary to Applicant’s arguments, the dictionary definitions of the terms
DYNAMIC SURFACE set out above apply and describe a feature, function or purpose
of the identified goods, namely, the ability of the identified goods to continuously
monitor and collect data about the surface of a patient’s body even during movement,
without requiring any thought or imagination by the consumer.
Applicant argues that because it owns a registration for EXACTRAC DYNAMIC
“for nearly identical goods” (Reg. No. 5630026), the involved application should be
allowed to pass to publication because the “USPTO typically allows registration of [a]
subsequent application in the absence of a significant change in facts or law.”36 This
argument is unavailing. Applicant’s prior registration for a mark that does not
35 7 TTABVUE 3-6.
36 4 TTABVUE 3.

Serial No. 79371727
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include both of the terms at issue here, namely DYNAMIC SURFACE, is not
persuasive evidence that these terms should not be disclaimed in the involved
application. Moreover, it is well-settled that, when determining whether a mark is
eligible for registration, each application must be considered on its own record. In re
Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016) (“[The Federal Circuit], like
the Board, must evaluate the evidence in the present record to determine whether
there is sufficient evidence [to support a refusal]....”); In re Shinnecock Smoke Shop,
571 F.3d 1171, 1174 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar
marks are irrelevant because each application must be considered on its own
merits.”); In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001) (“Even if some
prior registrations had some characteristics similar to Nett Designs’ application, the
[US]PTO’s allowance of such prior registrations does not bind the Board or this
court.”).
Decision
The refusal based on Applicant’s failure to submit a disclaimer of DYNAMIC
SURFACE is affirmed. However, if Applicant submits a disclaimer of DYNAMIC
SURFACE within thirty (30) days from the mailing date of this decision, the
disclaimer requirement will have been met and the application will proceed to
publication. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g). The disclaimer
should read as follows: “No claim is made to the exclusive right to use DYNAMIC
SURFACE apart from the mark as shown.”