Lance Armstrong Foundation

Trademark Trial and Appeal Board

Aug 15, 2012

No. 85018297 (T.T.A.B. Aug. 15, 2012)

Mailed: August 15, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re Lance Armstrong Foundation
________

Serial No. 85018297
Filed April 20, 2010
_______

Heather A. Dunn, DLA Piper LLP, for applicant.

Jason Paul Blair, Law Office 104, Chris Doninger, Managing
Attorney.
_______

Before Mermelstein, Ritchie, and Shaw, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

The Lance Armstrong Foundation seeks registration of
TEAM LIVESTRONG (in standard characters) for:
Organization of sports events in the field of running,
walking, cycling, and swimming; organizing community
sporting events; conducting charity sporting events
and tournaments,

in International Class 41.1
Applicant appeals from the examining attorney’s final
requirement to disclaim the exclusive right to use “TEAM”
apart from the mark as shown.
We affirm.

1 Based on first use and use in commerce as of February 2009.
Applicant claimed ownership of three prior registrations, all for
the mark LIVESTRONG for various goods and services.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85018297

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I. Disclaimers
“The Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”
Trademark Act Section 6(a); 15 U.S.C. § 1056(a). Merely
descriptive or generic terms are unregistrable under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and
therefore are subject to a disclaimer requirement if the
mark is otherwise registrable. Failure to comply with a
disclaimer requirement is a ground for refusal of
registration. See In re Omaha Nat’l Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987); In re Box Solutions Corp.,
79 USPQ2d 1953, 1954 (TTAB 2006).
The examining attorney alleges that “TEAM” is merely
descriptive of applicant’s goods and services. A term is
merely descriptive if it immediately conveys knowledge of a
significant quality, characteristic, function, feature or
purpose of the goods with which it is used. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987).
Whether a particular term is merely descriptive is
determined in relation to the products for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
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other words, the issue is whether someone who knows what
the products are will understand the mark to convey
information about them. In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002); In re Patent & Trademark Servs.
Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In
re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “On
the other hand, if one must exercise mature thought or
follow a multi-stage reasoning process in order to
determine what product or service characteristics the term
indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also In re Shutts, 217 USPQ 363,
364-65 (TTAB 1983); In re Universal Water Sys., Inc., 209
USPQ 165, 166 (TTAB 1980).
II. Discussion
The examining attorney’s argument for a disclaimer is
essentially as follows:
Applicant must disclaim the descriptive wording
“TEAM” apart from the mark as shown ... because
it merely describes a feature of applicant’s
services. See 15 U.S.C. § 1056(a); TMEP §§ 1213,
1213.03(a)....

[T]he term “TEAM” means “a number of persons
forming one of the sides in a game or contest.”
Because applicant’s sporting contests involve
people competing in contests, the term “TEAM” is
merely descriptive of applicant’s International
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Class 41 services.

...

And in addition to the term “TEAM” being used in
a sporting context, the word also means “a number
of persons associated in some joint action.” ...
Because applicant’s services involve people
associating for a joint charity action, the term
“TEAM” is also descriptive of applicant’s
services in that context.

Final Ofc. Action (Dec. 21, 2010) (citations revised). In
support of his argument, the examining attorney relied upon
a dictionary definition of “team,” supporting both senses
of the term:
1. A number of persons forming one of the sides
in a game or contest: a football team.

2. A number of persons associated in some joint
action: a team of advisors.

DICTIONARY.COM UNABRIDGED (http://dictionary.reference.com
/browse/team?qsrc-4059 (Dec. 21, 2010)). Applicant does
not take issue with these common definitions of “team,”
instead arguing primarily that the term does not describe
its services, App. Br. at 4-6, 9-10, that it is too vague
to be descriptive, id. at 10-13, and that doubt on the
matter should be resolved in its favor, id. at 13.
As for the first sense of “team,” that of “[a] number
of persons forming one of the sides in a game or contest,”
we note again that applicant’s services are identified as
“[1] Organization of sports events in the field of running,
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walking, cycling, and swimming; [2] organizing community
sporting events; [3] conducting charity sporting events and
tournaments.” To state the obvious, it seems undeniable
that the sports events applicant organizes and conducts
include “team” sporting events, i.e., those in which groups
of people constitute “sides in a game or contest.”
Nonetheless, applicant argues that it doesn’t do any such
thing:
In fact, forming one of the sides of a game or
contest has nothing to do with Appellant's
services, and such services are not included in
Appellant's services description. Appellant's
services are focused on the facilitation and
organization of events, and not on the formation
of groups or sides for a game or contest.
Appellant's services include offering logistical
support, scheduling volunteers and staff to
support the events, making event arrangements,
and encouraging participation by the community.
These services do not fall under the Examining
Attorney's definition of TEAM.

... Appellant's primary function is to
coordinate events to raise money for charity. As
forming a side of a game or contest is not a
function, attribute or property of Appellant's
services, let alone a significant function of
such, Appellant's use of the term TEAM is not
merely descriptive of Appellant's services.

App. Br. at 4-5.
The problem with applicant’s argument is that we are
constrained to consider its application for registration on
the basis of the goods or services for which registration
is sought. “Logistical support, scheduling volunteers, ...
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encouraging participation,” and the like are not set out in
applicant’s recitation of services. Those activities may
well be within the scope of “organizing” and “conducting”
the sports events which applicant has identified (an issue
we need not decide), but they certainly do not limit the
scope of the services for which applicant seeks
registration. The question we must answer is not whether
TEAM is descriptive of an activity in which applicant is
actually engaged, but whether it is descriptive of any of
the activities within the scope of applicant’s recitation
of services. Again, we think it is obvious that
applicant’s services — as recited — in the subject
application could include organizing and conducting TEAM
sports,2 whether or not applicant actually does so, and
could in fact encompass “forming one of the sides of a game
or contest” (although we do not think the latter would be
necessary to a finding that TEAM is descriptive of
applicant’s services). Applicant’s identified services do
not exclude TEAM sports explicitly or implicitly, and they

2 For instance, applicant’s services include “organization of
sports events in the field of ... cycling....” Applicant can
hardly deny that cycling can be organized as a team sport.
Applicants’ founder, Lance Armstrong, App. Br. at 1, is famous
for having ridden to a record seven victories in the Tour de
France while a member of the U.S. Postal Service team, the
Discovery Channel team, and Team Radio Shack.
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must therefore be considered as included within the scope
of such services.
With regard to the second sense of the word TEAM cited
by the examining attorney — “[a] number of persons
associated in some joint action” — it is the examining
attorney’s position that applicant’s services of organizing
and conducting various sports events are accomplished
jointly by a number of persons, i.e., by a TEAM, and that
the term is thus descriptive of how the services are
carried out or who does so. Applicant and the examining
attorney quibble over whether a team is required to perform
the identified services (and whether applicant has
“admitted” this), Ex. Att. Br. at 3-4 (unnumbered); Reply
Br. at 1-2, but the dispute is beside the point.
We fully accept the notion that a sports event such
those identified by applicant could be organized or
conducted by a single person. But applicant does not
dispute — and we think it is undeniable — that those same
activities could likewise be performed by “[a] number of
persons associated in some joint action,” i.e., a TEAM.
Again, applicant’s recitation of services is not limited in
this regard, and we must construe it to cover such services
organized and conducted by both individuals and by teams.
The examining attorney need not demonstrate that such
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services are usually, always, or required to be performed
by a team, or that applicant itself actually does so. A
mark is properly refused registration if it describes any
of the services within the ambit of the recitation of
services, and applicant’s recitation of services neither
explicitly nor implicitly excludes services performed by a
TEAM.
Applicant argues that TEAM (in either sense) is not
descriptive of its services because it does not itself
identify with particularity what the services are:
In order to find mere descriptiveness, one must
be able to glean from the mark itself
specifically what the services under the mark
are.... A consumer would not see the word TEAM
and immediately understand Appellant is offering
services to organize sporting events and conduct
sporting events benefitting charity.

App. Br. at 6 (citing Tennis in the Round, Inc., 199 USPQ
at 498).
Applicant’s statement of the law is incorrect, and
misconstrues our Tennis in the Round decision. That case
reversed a descriptiveness refusal because the mark was
found to be incongruous and not descriptive given the
likely public perception of “in-the-round” (a phrase
familiar to the public because of its descriptive use in
“theater-in-the-round”). Applicant does not argue here
that its mark is incongruous or that it is contrary to the
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likely understanding by relevant consumers of the word TEAM
in this context.
The Tennis in the Round panel stated the issue as
follows:
The question of whether a particular term is
merely descriptive within the meaning of Section
2(e)(1) of the Act must be determined not in the
abstract but in relation to the goods or services
for which registration is sought, the context in
which it is used, and the significance it is
likely to have to the average purchaser as he
encounters the goods or services in the
marketplace. See Roselux Chem. Co. v. Parsons
Ammonia Co., 299 F.2d 855, 132 USPQ 627 (CCPA
1962); Q- Tips, Inc. v. Johnson & Johnson, 108 F.
Supp. 845, 95 USPQ 264 (D.N.J. 1952); In re
Chicago Pneumatic Tool Co., 160 USPQ 628 (TTAB
1968).

Tennis in the Round, 199 USPQ at 498 (citations revised).
Contrary to applicant’s apparent contention that
Tennis in the Round required that “one must be able to
glean from the mark itself specifically what the services
under the mark are” (emphasis added), the case merely
repeats the well-worn prescription that descriptiveness
must be judged “in relation to the goods or services for
which registration is sought.” Id. (emphasis added). See
also In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB
2002). It has been repeatedly held that “[t]he question is
not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
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is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
Tower Tech, 64 USPQ2d at 1316-17. See also Coach Svcs.
Inc. v. Triumph Learning LLC, 101 USPQ2d 1713 (Fed. Cir.
2012) (“[D]escriptiveness of a mark is not considered in
the abstract. Instead, the mark must be considered in
relation to the particular goods for which registration is
sought....” (citations and internal quotation marks
omitted)). In light of the services recited in the
application, the relevant public would clearly understand
that applicant’s services relate to “team” sports or are
provided by applicant’s “team” — or both.
Applicant also argues that TEAM is too “vague” to be
descriptive, App. Br. at 10-13, pointing out that many
services can be rendered by “a number of persons associated
in some joint action,” concluding that “[t]he term TEAM
cannot, therefore, be said to be merely and directly
descriptive of such activities.” Id. at 10. Applicant
does not explain how it reaches this conclusion, and it is
not at all obvious to us. The test of descriptiveness is
not whether the mark uniquely and completely describes
applicant’s services and no others; rather, a mark is
unregistrable if it gives the consumer information about a
feature, function, or characteristic of the goods or
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service. Neither the fact that a given term may be used by
many others in a broad range of endeavors nor that it does
not describe exactly and thoroughly applicant’s goods or
services is a defense to descriptiveness.
We agree that TEAM (in the second sense) is widely
applicable to many services. In common parlance, service
providers might tout the advantages of having one’s car
maintained by the speedy “team” at an automobile dealer’s
service department, trusting one’s tax preparation to the
“team” of experienced tax preparers at an accounting firm,
or having complex surgery performed by the highly trained
“team” of surgeons and nurses at a hospital. Although
these examples all involve very different services, the
term “team” in this sense is used to describe the same
thing, i.e., that the services are performed by “[a] number
of persons associated in some joint action.” Such terms
should not be considered the exclusive property of any one
competitor, and the fact that they are used by a broad
range of service providers presents, if anything, even more
reason to prevent their registration by any single entity.
“[F]or policy reasons, descriptive words must be left free
for public use.” In re Colonial Stores, Inc., 394 F.2d
549, 157 USPQ 382, 383 (CCPA 1968). See also Estate of
P.D. Beckwith, Inc. v. Comm’r Pats., 252 U.S. 538, 543
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(1920) (“Other like goods, equal to them in all respects,
may be manufactured or dealt in by others, who, with equal
truth, may use, and must be left free to use, the same
language of description in placing their goods before the
public.” (referring to the 1905 Trademark Act)).3
We also agree with applicant that TEAM (again in the
second sense) would not inform the relevant public
“specifically what the services under the mark are.” App.
Br. at 6 (emphasis added). But again, there is no
requirement that a descriptive term must describe the
recited services with particularity or describe every
aspect of them; if this were the standard, very few marks
would be held descriptive. It is well-established that
[a] proposed mark is considered merely
descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Lanham Act, if
it immediately describes an ingredient, quality,
characteristic or feature thereof, or if it
directly conveys information regarding the
nature, function, purpose or use of the goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987), In re Abcor Dev.

3 To be clear, although “competitor need” is part of the policy
underlying the statutory prohibition against registering
descriptive marks, it should not be confused with the test for
descriptiveness as the Board and our reviewing courts have long
applied it. In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009)
(distinguishing No Nonsense Fashions Inc. v. Consol. Foods Corp.,
226 USPQ 502 (TTAB 1985)). Thus, the examining attorney is not
required to prove that others need to use the term in question
(or that others actually do use it) in order to hold a mark
descriptive. Id.
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Corp., 588 F.2d 811, 200 USPQ 215, 217-218 (CCPA
1978). It is not necessary that a term describe
all of the properties or functions of the goods
or services in order for it to be merely
descriptive thereof; rather, it is sufficient if
the term describes a significant attribute or
idea about them. In re Venture Lending Assoc.,
226 USPQ 285, 286 (TTAB 1985). Also, a mark need
not describe all of the goods or services for
which registration is sought; registration must
be refused if the mark is merely descriptive of
any of the goods or services for which
registration is sought. See In re Quik-Print
Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980); In re Patent & Trademark Svcs. Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998).

In re Venture Lending Assocs., 226 USPQ 285, 286 (TTAB
1985) (citations revised).
Applicant submitted several third-party registrations
during examination, and argues that these records are
probative of the meaning of the term TEAM in its mark.
Each of the registrations submitted by applicant comprise
the term TEAM, yet were registered without a disclaimer.
App. Br. at 7-9 (“Consumers are accustomed to seeing the
term TEAM used in such a manner, including in connection
with the organization of sporting events and conduct of
sporting events for charity.”).
While we agree with the examining attorney that each
application must be considered on its own merits, Ex. Att.
Br. at 6 (unnumbered), applicant is also correct that
third-party registrations have some probative value in
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determining the meaning of a mark. See Reply Br. at 5
(citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915,
189 USPQ 693, 694-95 (CCPA 1976) (“third-party
registrations ... may be given some weight to show the
meaning of a mark in the same way that dictionaries are
used” (emphasis added; citation omitted))).
Although applicant argues that seven third-party
registrations are relevant here, App. Br. at 8, we find the
number to be two,4 at best: TEAM GOLF PLAY FORE A CAUSE (and
design) for “organizing and conducting golf events with the
proceeds donated to charity,” and TEAM PREVENT GESUND UND
SICHER ARBEITEN GMBH (and design) for a variety of services
including “organizing community sporting and cultural
events.”5
While we do not ignore these registrations, we are
unable to draw any conclusion as to the descriptiveness of
TEAM from two (or even seven) registrations. These
registrations feature different marks (which may have been

4 The services recited in the other five registrations are
considerably different than those at issue here, as none of them
appear to be related to the organization or conduct of sporting
events for charity or other purposes.
5 The TEAM PREVENT... mark was registered pursuant to Trademark
Act Section 66, and not use in commerce, and there is no evidence
that the mark is actually in use in the United States. Therefore
this registration does not support applicant’s argument that
“[c]onsumers are accustomed to seeing ... TEAM used” as a source
identifier. See App. Br. at 7.
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seen to engender different meanings), and we are not privy
to the evidence of record regarding whether TEAM is
descriptive in them, and if so, whether a disclaimer would
have been appropriate. We find that the small number of
third-party registrations cited by applicant do not
outweigh the examining attorney’s evidence of
descriptiveness.
Further, while consistency in examination is clearly
an important goal for the USPTO, we are not bound by the
prior decisions of examining attorneys; those matters are
not before us. In re Boulevard Entm’t Inc., 334 F.3d 1336,
67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (“the PTO must decide
each application on its own merits, and decisions regarding
other registrations do not bind either the agency or this
court” (citing In re Nett Designs, 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001))). See In re Omega SA, 494
F.2d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (examining
attorney’s requirement, although inconsistent with past
practice, was “was within the PTO’s discretionary
authority.”).
III. Conclusion
We have carefully considered all of the evidence and
argument properly presented, including any which we have
not specifically discussed. We conclude that the term TEAM
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is merely descriptive of applicant’s identified services,
and that it must be disclaimed pursuant to Trademark Act
Section 6(a).

Decision: The refusal to register in the absence of a
disclaimer of TEAM is AFFIRMED.
However, this decision will be set aside if, within
thirty days of the mailing date of this order, applicant
submits to the Board a proper disclaimer of “TEAM.” See
Trademark Rule 2.142(g); TBMP § 1218 (3d ed. rev. 2012).
The disclaimer should be worded as follows: “No claim is
made to the exclusive right to use TEAM apart from the mark
as shown.” TMEP § 1213.08(a)(i).