Health Science Funding, LLC

Trademark Trial and Appeal Board

Sep 19, 2012

No. 85255541 (T.T.A.B. Sep. 19, 2012)

Mailed: September 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Health Science Funding, LLC
________

Serial Nos. 85255510 and 852555411
_______

J. M. Pohl of Pharmaceutical Patent Attorneys, LLC for
Health Science Funding, LLC

Anne Madden, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney)
_______

Before Zervas, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Health Science Funding, LLC (applicant) has filed
applications to register PRASTERONE.ORG2 and THE PRASTERONE
COMPANY3 in standard characters on the Supplemental Register
for services ultimately identified as “providing a website

1 Upon motion by applicant, the Board consolidated these
proceedings for final disposition on February 21, 2012.

2 Application Serial No. 85255510, filed on March 2, 2011, under
Trademark Act Section 1(a), 15 U.S.C. § 1051(a), based on
allegations of first use and use in commerce on March 2, 2011.

3 Application Serial No. 85255541, filed on March 2, 2011, under
Trademark Act Section 1(a), 15 U.S.C. § 1051(a), based on
allegations of first use and use in commerce on March 2, 2011.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 85255510, 85255541
2
featuring scientific and clinical research information
about investigational medical foods, dietary supplements or
drugs, namely, prasterone or derivatives or analogs
thereof” in International Class 42.
The examining attorney has refused registration under
Section 23 of the Trademark Act, 15 U.S.C. § 1091, on the
ground that applicant’s proposed marks are generic and, as
such, incapable of distinguishing applicant’s services.
Applicant appealed the refusals in each application.
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re
Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir.
2009); In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987).
The critical issue is to determine whether the record
shows that members of the relevant public primarily use or
understand the term sought to be registered to refer to the
category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
Making this determination “involves a two-step inquiry:
Serial Nos. 85255510, 85255541
3
First, what is the genus of goods or services at issue?
Second, is the term sought to be registered ... understood
by the relevant public primarily to refer to that genus of
goods or services?” Ginn, 228 USPQ at 530. Evidence of
the public’s understanding of a term may be obtained from
any competent source, including testimony, surveys,
dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987), and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
The type of evidence that may satisfy the United
States Patent and Trademark Office’s (USPTO) burden varies
depending on the circumstances presented. In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed.
Cir. 1987) (SCREENWIPE held generic as applied to
premoistened antistatic cloths for cleaning computer and
television screens based on dictionary definitions of the
constituent parts and corroborated by applicant’s specimens
of use). See also Trademark Manual of Examining Procedure
(TMEP) § 1209.01(c)(i) (8th ed. 2011). Where marks are more
in the nature of a phrase, the USPTO must provide evidence
of the meaning of the composite mark as a whole. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832,
1837 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE
Serial Nos. 85255510, 85255541
4
not generic for association services in the field of
reproductive medicine based on lack of evidence showing
phrase used as a whole).
In the case of domain names, because top level domains
(TLD), such as .com or .org4 generally serve no source-
indicating function, their addition to an otherwise
unregistrable mark typically cannot render it registrable.
In re 1800MATTRESS.com IP LLC, 586 F.3d 1359, 92 USPQ2d
1682, 1685 (Fed. Cir. 2009) (MATTRESS.COM generic for
“online retail store services in the field of mattresses,
beds, and bedding,” and applicant “presented no evidence
that ‘.com’ evoked anything but a commercial internet
domain”); Hotels.com, L.P., 91 USPQ2d at 1535 (HOTELS.COM
generic for “providing information for others about
temporary lodging; [and] travel agency services, namely,
making reservations and bookings for temporary lodging for

4 We take judicial notice of the following definition of .ORG:

[A] suffix intended to indicate that a web or e-mail
address belongs to a non-profit organization (in any
country, but mostly the United States). Along with
.com, .edu, .gov, .int, .net, and .mil, this is one of
the original set of Internet top-level domains. Since
2000, .com, .net, and .org have been assigned almost
indiscriminately to organizations of all types.

Dictionary of Computer and Internet Terms (Barron’s 10th ed.
2009). The Board may take judicial notice of dictionary
definitions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB
2006). See also University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial Nos. 85255510, 85255541
5
others by means of telephone and the global computer
network”); In Reed Elsevier Properties Inc., 482 F.3d 1376,
82 USPQ2d 1378, 1381 (Fed. Cir. 2007) (LAWYERS.COM generic
for “providing an online interactive database featuring
information exchange in the fields of law, legal news and
legal services”); and In re CyberFinancial.Net, Inc., 65
USPQ2d 1789, 1791 (TTAB 2002) (BONDS.COM generic for
“providing information regarding financial products and
services via a global computer network and providing
electronic commerce services via a global computer network,
namely, investment research, subscription services, market
commentary, portfolio analysis, debt instrument
conversion…” “Because ‘bonds’ is the name of one of the
financial products which comprise the subject matter of
applicant’s services, the term is likewise a generic name
for the information services and electronic commerce
services themselves.”) But see In re Steelbuilding.com,
415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)
(STEELBUILDING.COM for “computerized on line retail
services in the field of pre-engineered metal buildings and
roofing systems” held highly descriptive, but not generic).
Finally, “[t]acking a company organizational
designation such as “Company,” or “Inc.” or “Partners”
cannot transform a generic name into a protectable
Serial Nos. 85255510, 85255541
6
trademark. Such company designations or their
abbreviations are themselves generic and have no trademark
significance. Thus, one cannot append a generic company
designation and magically transform a generic name for a
product or service into a trademark, thereby giving a right
to exclude others.” 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 12:39 (4th ed. updated
2012).
We begin by finding that the genus of services at
issue in this case is adequately defined by applicant’s
identification of services, namely, “providing a website
featuring scientific and clinical research information
about investigational medical foods, dietary supplements or
drugs, namely, prasterone or derivatives or analogs
thereof.” Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness
inquiry focuses on the description of [goods or] services
set forth in the [application or] certificate of
registration.”) This is corroborated by the excerpt
applicant submitted from its website shown below.
Serial Nos. 85255510, 85255541
7

Turning to the second inquiry, the public’s
understanding of the term, the relevant public consists of
the ordinary consumer interested in obtaining information
about prasterone or its derivatives or analogs.
As noted above, the evidentiary burden of establishing
that a term is generic rests with the USPTO and the showing
must be based on clear evidence. Merrill Lynch, 4 USPQ2d
at 1143. Based on this record, we find that there is clear
evidence to support a finding that the relevant public,
when they consider PRASTERONE.ORG and THE PRASTERONE
COMPANY in conjunction with the identified services, would
readily understand the term to refer to the category of
services at issue, namely, information services regarding,
inter alia, prasterone.
In support of her position that both PRASTERONE.ORG
and THE PRASTERONE COMPANY are generic for applicant’s
services, the examining attorney submitted, inter alia,
Serial Nos. 85255510, 85255541
8
excerpts from various third-party websites showing use of
the term PRASTERONE in providing general information on
PRASTERONE and on its efficacy in medical uses. A few
examples are reproduced below:
5

6

5 http://lupus.about.com, August 19, 2011 Office Action p. 11.
6 http://www.drugs.com, August 19, 2011 Office Action p. 15.

Serial Nos. 85255510, 85255541
9
7
Applicant concedes that the term PRASTERONE “is the
generic designation for ‘a type of synthetic DHEA.’” App.
Br. p. 3 quoting June 13, 2011 Office Action. See also
App. Br. p. 4 and printout from the United States National
Library of Medicine listing “prasterone” as the generic
name for a particular compound, retrieved from
http://chem.sis.nlm.nih.gov/chemidplus, attached to
September 19, 2011 App. Response. However, applicant
contends that it is a publisher and while merely
descriptive of the subject matter of its services, the
terms PRASTERONE.ORG and THE PRASTERONE COMPANY are not
generic terms for its services. 8

7 http://www.webmd.com, August 19, 2011 Office Action p. 27.

8 In its main brief, applicant refers to its services as
“publishing services” and then evolves in its reply brief to the
description “publishing/information services.” There is no
question that the identification is for a website that features
information about “prasterone or derivatives or analogs thereof”
as opposed to “publishing services” that involve “preparation of
the works for online publication, not providing the work itself.”
Serial Nos. 85255510, 85255541
10
Applicant argues that the examining attorney erred in
her analysis because she failed to read the marks as a
whole, specifically applicant contends that the examining
attorney “mutilate[ed] the mark[s] by disregarding” other
elements of the marks and arguing that the remaining
element PRASTERONE is generic. App. Br. p. 7. In
addition, applicant argues that its marks, even if
considered only as “PRASTERONE” are not generic for its
“publishing services.” App. Br. p. 7. We find no such
error in the examining attorney’s analysis. We further
find that the marks are generic for applicant’s identified
services.
First, because “prasterone” is the generic name of one
of the items that is the subject matter of applicant’s
services, it is likewise generic for the services
themselves. Cyberfinancial.Net, 65 USPQ2d at 1791 and
cases cited therein. Second, with regard to the examining
attorney’s analysis, no matter what the factual
circumstances (compound word, phrase, or domain name) in
the final analysis a proposed mark must be viewed in its
entirety. However, it is proper to look at the separate
parts of a mark and then determine if their combination

U.S. Acceptable Identification of Goods and Services Manual (10th
ed. 2012) (notes attached to online publishing identification).
Serial Nos. 85255510, 85255541
11
creates a meaning beyond the generic meaning. Whether or
not the type of evidence provided supports the ultimate
conclusion varies.
Citing American Fertility, applicant characterizes its
marks as phrases and thus the absence of evidence of use by
third parties of the entire “phrases” is fatal to the
examining attorney’s case. We find the circumstances of
these applications to be distinct from those in American
Fertility. PRASTERONE.ORG without question is not a
phrase. At most, it would be considered more in the nature
of a compound term as found in Gould. With regard to THE
PRASTERONE COMPANY, we also do not view this as a phrase in
the same manner that SOCIETY FOR REPRODUCTIVE MEDICINE is a
phrase. Rather, the addition of the word COMPANY cannot
“transform a generic name for a [service] into a
trademark.” 2 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition, § 12:39 (4th ed. updated 2012).
Moreover, the use of “THE” at the beginning does not
transform THE PRASTERONE COMPANY into a mark or a
designation that is capable of registration. See In re The
Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005); In re The
Weather Channel, Inc., 229 USPQ 854 (TTAB 1985). On this

See also TMEP § 1301.01(a)(ii) (8th ed. 2011) (collecting
information for one’s own periodical is not a service).
Serial Nos. 85255510, 85255541
12
record, THE PRASTERONE COMPANY has no other significance
within the context of these services other than to refer
generally to a provider of information on prasterone.
Applicant argues that it uses PRASTERONE.ORG not only
as a web address, but also as an identifier of source and
relies on In re Eilberg, 49 USPQ2d 1955 (TTAB 1998)
(WWW.EILBERG.COM fails to function as a mark based on
manner of use). In Eilberg, the manner of use was the
issue, not the underlying term itself. EILBERG is a
surname, and, as such, registrable upon a showing of
acquired distinctiveness. However, in this case PRASTERONE
is a generic term and, as such, unregistrable when used in
connection with the provision of information about
prasterone no matter that it is not used as a web address.
Similarly, applicant’s example of use of THE PRASTERONE
COMPANY is simply a generic term for information services
for prasterone.
Applicant argues that for “a term to be generic for
the recited service, the term must in fact have been
previously used in connection with that service.” Reply
Br. p. 6. More specifically, applicant argues that if “an
applicant is ‘the first and only user’ of a designation,
then that designation is not generic, it’s fanciful. If an
otherwise-generic designation has never been used in
Serial Nos. 85255510, 85255541
13
connection with the recited services, then that designation
may be arbitrary, or suggestive, or even descriptive of the
recited services, but the designation cannot be generic for
those services.” Reply Br. p. 7. Applicant relies on
1800Mattress.com, 92 USPQ2d 1682 for this proposition. In
that case, the Federal Circuit affirmed the Board’s
determination that MATTRESS.COM was generic for online
retail services featuring mattresses based on the
definitions of its constituent parts and that the
combination added no new meaning as shown by third-party
use of the term for other websites. The Federal Circuit
did not set forth a new standard that if an applicant is
the first and only user the proposed mark is not generic.
Rather, the Federal Circuit simply found that there was
substantial evidence to support the Board’s decision. The
reverse, however, does not apply. Such third-party use is
not required to establish that the combination of generic
parts does not add any meaning to an otherwise generic
designation. In fact, the Federal Circuit quotes a prior
case wherein the Federal Circuit made clear that dictionary
definitions of the constituent parts may be sufficient to
establish that the term as a whole is generic. Id. at 1684
quoting In re American Fertility Soc’y, 188 F.3d 1341, 51
USPQ2d 1832, (Fed. Cir. 1999) (“[I]f the compound word
Serial Nos. 85255510, 85255541
14
would plainly have no different meaning from its
constituent words, and dictionaries, or other evidentiary
sources, establish the meaning of those words to be
generic, then the compound word too has been proved
generic. No additional proof of the genericness of the
compound word is required.” emphasis added). This standard
has been in place since at least 1987 when the Federal
Circuit issued its decision in Gould Paper Corp., 5 USPQ2d
1110. The Federal Circuit explained that “to refuse
registration on the ground that an applicant seeks to
register the generic name of the goods, the PTO must show
that the word or expression inherently has such meaning in
ordinary language, or that the public uses it to identify
goods of other producers as well.” Id. at 1111 quoting In
re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 405 (CCPA
1982). The Federal Circuit held in Gould that “the PTO has
satisfied its evidentiary burden if, as it did in this
case, it produces evidence including dictionary definitions
that the separate words joined to form a compound have a
meaning identical to the meaning common usage would ascribe
to those words as a compound.” Id. at 1111-1112. Thus,
the fact that an applicant may be the first and only user
of a term does not justify registration if the only
significance conveyed by the term is that of the category
Serial Nos. 85255510, 85255541
15
of services. See In re Greenliant Systems Ltd., 97 USPQ2d
1078, 1084 (TTAB 2010).
Applicant also relies on the case Steelbuilding.com,
but that case is factually distinct from this one. In
Steelbuilding.com, the Federal Circuit first found that the
Board had not properly defined the genus and then found
that there was not substantial evidence to find the term
“STEELBUILDING” generic, stating that the “record does not
contain any examination of dictionary definitions or other
sources that might have indicated that joining the separate
words ‘steel’ and ‘building’ would create a word that, in
context, would be generic. The Board merely cited evidence
that showed that when customers or competitors talked about
a steel building, they used the phrase ‘steel building.’
That evidence shows that ‘steel building’ is generic, but
does not address directly the composite term
STEELBUILDING.” Id. at 1423. The Federal Circuit further
explained that in “this unusual case, the addition of the
TLD indicator expanded the meaning of the mark to include
goods and services beyond the mere sale of steel buildings.
Specifically, the TLD expanded the mark to include internet
services that include ‘building’ or designing steel
structures on the web site and then calculating an
appropriate price before ordering the unique structure.”
Serial Nos. 85255510, 85255541
16
Id. Here, we do not have a compound word attached to a
TLD, rather PRASTERONE is admittedly the generic word for a
pharmaceutical. Moreover, the genus is properly defined by
the identification. In addition, there is no evidence to
find this to be an exceptional circumstance in which a TLD
creates a descriptive rather than generic term.
Applicant also points to several third-party
registrations in support of its argument that the Office
has approved registration of similarly structured marks,
i.e., with .ORG, or THE and COMPANY. The examining
attorney has objected to certain of these registrations as
being untimely, in Application Serial No. 85255541. Citing
In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681
(Fed. Cir. 2010), applicant counters that the Board may
take judicial notice of third-party registrations. While
the Federal Circuit exercised its discretion to take
judicial notice of a third party’s registration in
Chippendales, it is well-established that the Board does
not take judicial notice of third-party registrations. See
Trademark Trial and Appeal Board Manual of Procedure (TBMP)
§ 704.12(a) (3d ed. rev. 2012) and cases cited therein. In
addition, applicant argues that the examining attorney
waived her objection because when it referenced a list of
third-party registrations in its response to the office
Serial Nos. 85255510, 85255541
17
action, she did not advise applicant that a list does not
make the registrations of record. Applicant is correct as
to the admissibility of the list. However, the waiver of
objection to the list does not open the door for applicant
to submit the registrations themselves with its brief.9 In
re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012). See
also TBMP § 1207 and cases cited therein. In view thereof,
we have considered the list and the information provided
during examination.10 We note that such registrations have
limited probative value inasmuch as we are not bound by
prior decisions and whether a proposed mark is generic must
be determined based on the evidence of record at the time
registration is sought. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001). We add that the
listed third-party registrations present different
circumstances on their face. For example Reg. No. 4027282
for the mark THE SAN FRANCISCO OLIVE OIL COMPANY includes a
geographic term which is registrable upon a showing of
acquired distinctiveness.11

9 We note that applicant did not attach the registrations.

10 Applicant first mentioned Reg. No. 4027282 in its brief, we
have, however, considered this example along with the other
previously mentioned registrations.

11 In connection with its third-party registration argument,
applicant grossly misrepresents Board orders issued in a
proceeding involving one of those registrations. Specifically,
Serial Nos. 85255510, 85255541
18
Applicant argues that the website provides information
about other types of pharmaceuticals and that “[t]he
relevant public does not understand PRASTERONE to primarily
refer to these numerous hormone derivatives discussed by
Applicant’s service.” App. Br. p. 15. However, when a
mark is generic as to part of the services applicant offers
under its mark, the mark is unregistrable. See In re
Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d
without pub. Op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir.
1989) (registration is properly refused if the subject
matter for registration is generic of any one of the goods
for which registration is sought).

applicant states that in the June 29, 2010 order in Opp. No.
91191016 the Board “held the recited use in the application was
not generic.” App. Br. p. 13. In fact, upon a motion to dismiss
a counterclaim, the Board found that because the applicant had
only referenced part of the marks it had not “alleged that the
marks, as a whole, are generic for the underlying goods and/or
services” and, thus, granted the motion to dismiss, allowing
applicant time to replead. Applicant continues in his
presentation of this case by stating that in the August 22, 2011
order, the Board “re-affirm[ed] that an applicant can register a
term which has a generic meaning, as long as the applicant does
not try to register that generic use.” Id. In fact, in that
case, the applicant filed an amended counterclaim of genericness
against the several pleaded marks and the Board stated that
“applicant has sufficiently pleaded his genericness claim”
against five of the pleaded registrations. The Board granted the
renewed motion to dismiss the genericness claim as to one of the
pleaded registrations because it contained a design element
combined with the wording. Suffice it to say, the Board did not
find that a particular term is not generic, rather the Board
granted a motion to dismiss a counterclaim for failure to state a
claim and allowed the party to replead its claim of genericness.
Upon repleading the Board accepted, in part, the renewed pleading
of genericness.
Serial Nos. 85255510, 85255541
19
Finally, applicant argues that because no one else can
obtain the domain prasterone.org, the examining attorney’s
argument that the term must be kept free for others to use
is misplaced. In 1800Mattress.com, the Federal Circuit
affirmed the Board’s finding that mattress.com is generic,
in part, because the record demonstrated others’ need to
use the term. In re 1800Mattress.com IP, LLC, 586 F.3d
1359, 92 USPQ2d 1682 (Fed. Cir. 2009). While this record
does not contain an example of another entity referring to
its information services as PRASTERONE.ORG or including
PRASTERONE.ORG as part of a domain name, the need to use
PRASTERONE.ORG is demonstrated by the evidence establishing
that PRASTERONE is used by others generically in the
provision of their information services.12
This record establishes that the relevant public would
understand PRASTERONE.ORG and THE PRASTERONE COMPANY to
refer to a company that provides information about
prasterone, and public understanding is critical.
1800Mattress.com, 92 USPQ2d at 1685. These terms are
incapable of identifying source for prasterone information
services because they are terms a purchaser would
understand and could use to refer to the type of company

12 Conceptually, the facts here present the same issue presented
in 1800Mattress.com, to the extent that others should be free to
Serial Nos. 85255510, 85255541
20
that provides information on prasterone, and must be left
available for use by other such companies providing
information on prasterone. As has been found in other
cases, marks may not equate to the literal name of the
goods or services for which registration is sought, but
still be deemed to be “generic.” See In re Wm. B. Coleman
Co., 93 USPQ2d 2019 (TTAB 2010) and cases cited therein.
Based on this record, the examining attorney clearly
established that PRASTERONE.ORG and THE PRASTERONE COMPANY
are generic for the identified services and are not
“capable of distinguishing the applicant’s services.” 15
U.S.C. § 1091(c).
Decision: The refusals to register are affirmed.

use the generic designation PRASTERONE.ORG as part of their
domain name, for example, MD-PRASTERONE.ORG.