SV Life Sciences Managers LLPDownload PDFTrademark Trial and Appeal BoardApr 1, 202079207107 (T.T.A.B. Apr. 1, 2020) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: April 1, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re SV Life Sciences Managers LLP _____ Serial No. 79207107 _____ Alexander Lazouski of Lazouski IP LLC, for SV Life Sciences Managers LLP. Steven M. Perez, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. _____ Before Taylor, Larkin, and Johnson, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: SV Life Sciences Managers LLP (“Applicant”) seeks registration on the Principal Register, through extension of the protection of International Registration No. 1343604 to the United States, of the wording DEMENTIA DISCOVERY FUND (in standard characters and with DEMENTIA and FUND disclaimed) for the following goods and services: • “Pharmaceutical and medical preparations and substances for the prevention and treatment of dementia; sanitary preparations for medical purposes; pharmaceutical preparations, all for use in the treatment or prevention of brain diseases and degenerative dementia disorders; antiseptic preparations; prescription pharmaceuticals for humans for the prevention and treatment of dementia; veterinary and sanitary products, Serial No. 79207107 - 2 - namely, antibiotics; dietary food supplements; health food supplements; vitamins; dietetic substances adapted for medical use, namely, sugar substitutes; food for babies; foods for medical purposes, namely, food for enteral feeding for teens adults and elders; homeopathic pharmaceuticals for use in the treatment of dementia; medicinal drinks; anti-diabetic drugs; hypertension medications; steroid hormones; non-steroidal anti- inflammatory drugs; chemicals in the nature of medical diagnostic reagents for use in medical and veterinary diagnosis of dementia disorders,” in International Class 5; • “Insurance, namely, insurance brokerage; financial affairs, namely, financial information, management and analysis services; monetary affairs, namely, monetary exchange and monetary strategic consultation and research; real estate affairs, namely, leasing of real estate, real estate brokerage and real estate appraisal services; financing services in relation to medical research; humanitarian aid and development, namely, charitable fundraising and financial support services for research in dementia; charitable fundraising for dementia research; charitable fundraising for the purchase of food, clothing and medical items for those in need; financial sponsorship of medical research in the field of dementia; financial management and administration of charitable funds for dementia research; distribution and allocation of charitable funds, namely, accepting and administering monetary charitable contributions to fund medical research; credit card and charge card payment processing services; providing of financial information regarding corporate donations and payroll donations by employees; financial information, advisory, and consultancy services in relation to the aforesaid services,” in International Class 36; • “Scientific and technological services, namely, research and design in the field of pharmaceutical development; scientific and technological services, namely, medical research and product development in the field of dementia; industrial analysis and research services in the field of computer hardware; design and development of computer hardware and software; design and development of computer hardware and software connected with dementia; Laboratory analysis in the field of pharmaceuticals and clinical trials in the pharmaceutical, biotechnology and medical device fields; laboratory research in the field of pharmaceuticals and clinical trials in the pharmaceutical, biotechnology and medical device fields; laboratory testing services in the field of pharmaceutical product testing; medical research laboratory services; medical research services in relation to the causes, symptoms, diagnosis, treatment and prevention of dementia; scientific genetic research in the field of dementia; provision of scientific research facilities in the nature of laboratories; medical research in relation to medicines and pharmaceuticals; medical research services; design and Serial No. 79207107 - 3 - development of mobile device software applications; design and development of computer programs,” in International Class 42; and • “Medical services; the provision of medical information, online via the Internet, on the subject of all aspects of dementia diseases and the prevention of all types dementia diseases; medical services relating to the science of nutrition and the use of medical and pharmaceutical preparations and substances; medical services in relation to the recommendation and prescribing of medicaments and medical products of all kinds; medical services concerning dementia, namely physician, nursing, midwifery and hospital services; diagnostic and laboratory services, namely, medical testing for diagnostic or treatment purposes; hygienic and beauty care for human beings; agricultural services, namely, agricultural advice; dentistry services; medical analysis for the diagnosis and treatment of individuals and groups of people with dementia including x-ray examinations and taking blood samples; pharmaceutical advice; medical clinic services; medical treatment services; medical analysis services; medical information services; nursing services; information, advisory and consultancy services relating to all the aforesaid, including information provided on-line from a computer database, intranets, extranets and the Internet,” in International Class 44.1 The Examining Attorney refused registration of Applicant’s proposed mark in all four classes under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that DEMENTIA DISCOVERY FUND is merely descriptive of a characteristic or purpose of one or more of the goods and services in each class. When the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration, which was denied. Applicant and the Examining Attorney have filed briefs.2 We affirm the refusal to register. 1 Application Serial No. 79207107 was filed on July 14, 2016 under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), on the basis of International Registration No. 1343604. 2 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page number(s) of the docket entry where the cited materials appear. Serial No. 79207107 - 4 - I. Record on Appeal3 The record on appeal includes the following: • Dictionary definitions of “dementia,” “discover,” “discovery,” and “fund,” made of record by the Examining Attorney,4 and dictionary definitions of “discovery,” made of record by Applicant;5 • Webpages of medical schools, colleges and universities, and other entities, and related materials, displaying the terms “Discovery Fund(s),” “Dementia Discovery,” or “discovery” in proximity to “dementia,” in connection with medical or scientific research, made of record by the Examining Attorney;6 • Pages from Applicant’s website at theddfund.com, made of record by the Examining Attorney;7 3 Citations in this opinion to the application record, and the request for reconsideration and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”). 4 May 28, 2017 Office Action at TSDR 2-16; September 5, 2018 at TSDR 27-58. 5 December 11, 2017 Response to Office Action at TSDR 8-22. 6 May 28, 2017 Office Action at TSDR 17-33; February 2, 2018 Office Action at TSDR 2-99, 102-103; September 5, 2018 Final Office Action at TSDR 2-26; July 26, 2019 Denial of Request for Reconsideration at TSDR 17-43. The “Discovery Fund” webpages include pages from the website of the University of British Columbia in Vancouver, Canada, February 2, 2018 Office Action at TSDR 100-101, as well as pages referring to the Centre for Addiction and Mental Health in Toronto, Canada. September 5, 2018 Final Office Action at TSDR 2-5, 59-60, while some of the “Dementia Discovery” webpages are from the website of the UK Dementia Research Institute. July 26, 2019 Denial of Request for Reconsideration at TSDR 24-31, 35-43. The webpages pertaining to the Centre for Addiction and Mental Health are on the website of a United States publication, September 5, 2018 Final Office Action at 2-5, but in the absence of evidence of exposure of the University of British Columbia and UK Dementia Research Institute websites to consumers in the United States, we have given them no consideration. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1491 n.92 (TTAB 2017). 7 May 28, 2017 Office Action at TSDR 33-38; July 26, 2019 Denial of Request for Reconsideration at TSDR 2-16. Serial No. 79207107 - 5 - • Webpages from the European Union Intellectual Property Office website regarding Applicant’s European Union Registration No. 1343604 for the mark DEMENTIA DISCOVERY FUND, made of record by Applicant;8 and • Third-party registrations of DISCOVERY-formative marks for goods and services in the medical and pharmaceutical research fields in which DIISCOVERY has not been disclaimed, made of record by Applicant.9 II. Mere Descriptiveness Refusal A. Applicable Law Section 2(e)(1) of the Trademark Act prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the goods [or services] of the applicant is merely descriptive . . . of them,” unless the mark has been shown to have acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).10 A mark is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 8 December 11, 2017 Response to Office Action at TSDR 23-28. 9 August 2, 2018 Response to Office Action at TSDR 19-77. Applicant attached the registrations and dictionary definitions of “discovery” to its appeal brief. 13 TTABVUE 24- 97. “Parties to Board cases occasionally seem to be under the impression that attaching previously-filed evidence to a brief and citing to the attachments, rather than to the original submission is a courtesy or a convenience to the Board. It is neither.” In re Michalko, 110 USPQ2d 1949, 1950 (TTAB 2014). Citation to the record is sufficient, as it obviates the need to determine whether materials attached to briefs are properly of record. Id. at 1950-51. 10 Applicant does not claim that if the proposed mark is found to be merely descriptive, it is registrable because it has acquired distinctiveness. Serial No. 79207107 - 6 - 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark need not immediately convey an idea of each and every specific feature of the goods [or services] in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the goods [or services].” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987)). “It is well established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.” In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001). See also In re Omaha Nat’l Bank, 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (rejecting argument that mere descriptiveness should be limited to a quality or characteristic of the goods or services themselves and holding that it includes a designation that is merely descriptive of the provider of the goods or services). A mark that describes the provider of the subject goods and service need not also separately describe a feature or characteristics of the goods or services to be found merely descriptive, although it may do so. Major League Umpires, 60 USPQ2d at 1060. Whether a mark is merely descriptive is “evaluated ‘in relation to the particular goods [or services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use,’” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting Bayer, 82 USPQ2d at 1831), and “not in the abstract or on the basis of Serial No. 79207107 - 7 - guesswork.” Fat Boys, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). We ask “whether someone who knows what the goods and services are will understand the mark to convey information about them.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018) (quoting DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (internal quotation omitted)).11 A mark is suggestive, and not merely descriptive, if it requires imagination, thought, and perception on the part of someone who knows what the goods or services are to reach a conclusion about their nature from the mark. See, e.g., Fat Boys, 118 USPQ2d at 1515. Applicant’s proposed mark consists of the words DEMENTIA, DISCOVERY, and FUND. We “must consider the commercial impression of a mark as a whole.” Real Foods, 128 USPQ2d at 1374 (quoting DuoProSS, 103 USPQ2d at 1757 (citation omitted)). “In considering [a] mark as a whole, [we] ‘may not dissect the mark into isolated elements,’ without ‘consider[ing] . . . the entire mark,’” id. (quoting DuoProSS, 103 USPQ2d at 1757), but we “may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.” Id. (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 11 There are numerous goods and services identified in each of the four classes in the application. The refusal to register may be affirmed as to each class in its entirety if the proposed mark “immediately conveys information about one feature or characteristic of at least one of the designated [goods or] services within” that class. Chamber of Commerce of the U.S., 102 USPQ2d at 1220 (citing In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)). Serial No. 79207107 - 8 - 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)). Indeed, we are “required to examine the meaning of each component individually, and then determine whether the mark as a whole is merely descriptive.” DuoProSS, 103 USPQ2d at 1758. If the words in the proposed mark are individually descriptive of the identified goods and services, we must then determine whether their combination “conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.” Fat Boys, 118 USPQ2d at 1515-16 (quoting Oppedahl & Larson, 71 USPQ2d at 1372). If each word instead “retains its merely descriptive significance in relation to the goods [and services], the combination results in a composite that is itself merely descriptive.” Id. at 1516 (citing In re Tower Tech., Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)); see also In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953-55 (TTAB 2018). “Evidence of the public’s understanding of [a] term . . . may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers[,] and other publications.” Real Foods, 128 USPQ2d at 1374 (quoting Royal Crown Co. v. The Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites, publications and use ‘in labels, packages, or in advertising material directed to the goods [or services].’” N.C. Lottery, 123 USPQ2d at 1710 (quoting Abcor Dev., 200 USPQ at 218). “It is the Examining Attorney’s burden to show, prima facie, that a mark is merely descriptive of an applicant’s goods or services.” Fat Boys, 118 USPQ2d at 1513 (citing Serial No. 79207107 - 9 - Gyulay, 3 USPQ2d at 1010). “If such a showing is made, the burden of rebuttal shifts to the applicant.” Id. (citing In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003)). “The Board resolves doubts as to the mere descriptiveness of a mark in favor of the applicant.” Id. B. Summary of Arguments We summarize below the primary arguments of Applicant and the Examining Attorney. We address some of their specific arguments in our analysis of the refusal. 1. Applicant’s Arguments Applicant notes that during prosecution it disclaimed the exclusive right to use the words DEMENTIA and FUND apart from the proposed mark as shown, and argues that the “question presented in this appeal is whether ‘DISCOVERY’ is merely descriptive in connection with Applicant’s Services within the meaning of Trademark Act Section 2(e).” 13 TTABVUE 3. Applicant argues that DISCOVERY is not merely descriptive, id. at 7, because the word “has numerous meanings, which preclude it from immediately describing Applicant’s services.” Id. Applicant posits that “a prospective customer may be somewhat puzzled of what DEMENTIA DISCOVERY in DEMENTIA DISCOVERY FUND actually means.” Id. at 8. Applicant argues that “[c]lever juxtaposition of two antonyms ‘DEMENTIA’ (suggesting losing person’s mechanisms of acquiring information) and ‘DISCOVERY’ (suggesting owning person’s mechanisms of acquiring information) shows that “DISCOVERY” cannot have the readily apparent, single meaning required for the term to be merely descriptive, and removes the term from the merely descriptive category.” Id. Serial No. 79207107 - 10 - Applicant also argues “that on numerous previous occasions, the Office has granted registration of marks containing the word ‘DISCOVERY’ without the disclaimer in connection with [the] medical and pharmaceuticals research field.” Id. at 9. Applicant cites multiple Principal Register registrations of such marks. Id. at 9- 22. Applicant argues that these registrations show that the word DISCOVERY “is not necessarily a descriptive term in the medical field.” Id. at 22. Finally, Applicant argues that doubt as to the descriptiveness of the mark must be resolved in its favor. Id. 2. The Examining Attorney’s Arguments The Examining Attorney’s core argument is that “the proposed mark DEMENTIA DISCOVERY FUND describes the nature, purpose or characteristic of the identified goods/services and the entity through which they are provided.” 15 TTABVUE 9. He argues that [i]n this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Each term within the proposed mark has significance within the medical field. None of the terms alter the meaning of any other term within the proposed mark. No novel spellings or unique juxtapositions are apparent in the mark to support a finding of a nondescriptive or suggestive meaning. Moreover, the word combination does not diminish the descriptiveness of the mark because each whole word is present in the mark and each term retains their [sic] descriptive meaning in relation to the goods/services. Id. Serial No. 79207107 - 11 - The Examining Attorney claims that the record shows “that the combined terms ‘DISCOVERY FUND’ possess particular meaning in the context of applicant’s goods/services in reference to programs for the research, discovery, development, testing and clinical introduction of new drugs and treatments administered through a dedicated fund.” Id. With respect to specific goods and services in the application, the Examining Attorney argues that the focus on dementia is specifically indicated in identifications for each of the four classes covered by the application. Applicant’s goods in Class 5 encompass those for the treatment, prevention and diagnosis of dementia, while identified Class 36 services encompass fundraising, sponsorship, financial management and related services in the field of dementia research. Services described in Class 42 include numerous references to research relating to dementia, while applicant’s Class 44 identification encompasses a variety of medical information and treatment services concerning dementia. Id. at 10-11. He concludes, based on statements made on Applicant’s website and third-party websites, id. at 11-12, that the proposed mark DEMENTIA DISCOVERY FUND immediately conveys to potential consumers a key characteristic of the identified goods and services, namely, their creation and provision via a program for the discovery and funding of diagnostic and treatment advances in the field of dementia. In this respect the proposed mark parallels other discovery fund programs dedicated to research and development of new drugs and treatments in other medical areas . . . . Id. at 11. The Examining Attorney also argues that “Applicant’s arguments in response to the descriptiveness refusal share a common flaw which renders each unpersuasive,” Serial No. 79207107 - 12 - id. at 13, because Applicant “fails to consider the descriptive significance of the proposed mark as a whole, suggesting instead that the voluntary disclaimer of ‘DEMENTIA’ and ‘FUND’ necessarily narrows the focus of any analysis of registrability to the word ‘DISCOVERY’.” Id. The Examining Attorney argues in the alternative that “[e]ven taken at face value, applicant’s arguments limited to a portion of the proposed mark fail to demonstrate a distinctive nature. Evidence of record makes clear that ‘discovery’ in the context of known conditions such as dementia refers to research and development of new drugs and treatments, as well as to the discovery of new insights into causes, prevention, diagnosis, etc.” Id. at 15. He concludes that Applicant’s “primary arguments are unpersuasive because they do not consider the mark as a whole, do not address evidence of significance and rely on unsupported alternate interpretations of the mark’s wording which are not controlling in the determination of descriptiveness.” Id. at 16. With respect to Applicant’s third-party registration evidence, the Examining Attorney argues that “each case must be decided on its own facts,” id. at 17, and that Applicant’s “third-party evidence is invalidated by its sole focus on the word ‘DISCOVERY’.” Id. C. Analysis of Refusal As discussed above, we must “examine the meaning of each component [of the mark] individually, and then determine whether the mark as a whole is merely descriptive.” DuoProSS, 103 USPQ2d at 1758. We begin with the word DEMENTIA. Serial No. 79207107 - 13 - Applicant states that dementia is a “chronic or persistent disorder which describes a wide range of symptoms associated with a decline in memory or other thinking skills severe enough to reduce a person’s ability to perform everyday activities and is well-documented in the medical field.” 13 TTABVUE 7.12 Applicant disclaimed the exclusive right to use DEMENTIA, without limitation to any particular classes, or any particular goods or services, thus conceding that it is merely descriptive of one or more of the goods and services identified in each class in the application. In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988). See TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1213 (Oct. 2018) (“A disclaimer may be limited to pertain to only certain classes, or only to certain goods or services.”). Consistent with the disclaimer, Applicant uses “dementia” to specify the subject matter of multiple goods and services in each class: • “Pharmaceutical and medical preparations and substances for the prevention and treatment of dementia,” “prescription pharmaceuticals for humans for the prevention and treatment of dementia,” “homeopathic pharmaceuticals for use in the treatment of dementia,” and “chemicals in the nature of medical diagnostic reagents for use in medical and veterinary diagnosis of dementia disorders,” in Class 5; • “Fundraising and financial support services for research in dementia,” “charitable fundraising for dementia research,” “financial sponsorship of medical research in the field of dementia,” and “financial management and administration of charitable funds for dementia research,” in Class 36; • “Scientific and technological services, namely, medical research and product development in the field of dementia,” “design and development of computer hardware and software connected with dementia,” “medical research services in relation to the causes, symptoms, diagnosis, treatment 12 “Dementia” is defined as a “chronic or persistent disorder of the mental processes caused by brain disease or injury and marked by memory disorders, personality changes, and impaired reasoning.” May 28, 2017 Office Action at TSDR 2 (OXFORD LIVING DICTIONARIES). Serial No. 79207107 - 14 - and prevention of dementia,” and “scientific genetic research in the field of dementia,” in Class 42; and • “The provision of medical information, online via the Internet, on the subject of all aspects of dementia diseases and the prevention of all types dementia diseases,” “medical services concerning dementia, namely physician, nursing, midwifery and hospital services,” and “medical analysis for the diagnosis and treatment of individuals and groups of people with dementia including x-ray examinations and taking blood samples,” in Class 44. We find that the word DEMENTIA is merely descriptive of characteristics or purposes of these goods and services. The next word in the proposed mark is DISCOVERY. As noted above, Applicant devotes the bulk of its appeal brief to that word, 13 TTABVUE 7-22, arguing that it has “numerous meanings, which preclude it from immediately describing Applicant’s services.” Id. at 7.13 Applicant couples DISCOVERY with DEMENTIA in its argument, criticizing the Examining Attorney for “amending DEMENTIA DISCOVERY to ‘discovery in the field of dementia,” id., which Applicant claims “requires certain levels of imagination and ‘mental pause’ which strongly suggests suggestiveness, not descriptiveness.” Id. at 8. Applicant describes the words DEMENTIA and DISCOVERY as “antonyms” in its proposed mark, arguing that “DEMENTIA DISCOVERY is a combination of two allegedly descriptive terms but used in a way which creates juxtaposition, is inventive and evokes a unique commercial impression.” Id. Applicant asks rhetorically: “Does DEMENTIA 13 Applicant lists the following “vastly different definitions” of “discovery”: “(1) the act of discovering something; (2) disclosure; (3) exploration, (4) anything discovered, (5) act of revealing, [and] (6) a productive insight.” 13 TTABVUE 7. Serial No. 79207107 - 15 - DISCOVERY mean that Applicant offers services for discovering dementia in patients? Or does it mean that Applicant offers dementia patients tools to ‘self- discover’ on how to cope with dementia on an everyday basis?” Id. Applicant is correct that the word “discovery” has multiple dictionary meanings, but we must assess whether the proposed mark is descriptive “not in the abstract or on the basis of guesswork,” Fat Boys, 118 USPQ2d at 1513, but rather “in relation to the particular goods [and services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [and services] because of the manner of its use or intended use.” Chamber of Commerce of the U.S., 102 USPQ2d at 1219. Although Applicant focuses on the meaning of DISCOVERY combined with DEMENTIA, we find that DISCOVERY derives its meaning in the proposed mark largely from its combination with FUND to form the term of art “discovery fund,” which the record shows is frequently used in various fields of medical and scientific research, and that the word DEMENTIA identifies the particular field of research of Applicant’s “discovery fund.” Contrary to Applicant’s argument that “‘DISCOVERY in DEMENTIA DISCOVERY FUND cannot be defined by a single meaning as suggested by the Examining Attorney when it comes to applicant’s services,” 13 TTABVUE 8, the record shows that DISCOVERY has a clear descriptive meaning in the context of the various dementia-related goods and services identified in the application. We may consider Applicant’s website and publications, N.C. Lottery, 123 USPQ2d at 1709-10, to determine “the possible significance that [the mark] would have to the Serial No. 79207107 - 16 - average purchaser of the goods [and services] because of the manner of its use or intended use.’” Chamber of Commerce of the U.S., 102 USPQ2d at 1219. We reproduce below a portion of Applicant’s press release announcing the launch of the “Dementia Discovery Fund”: 14 We reproduce below portions of Applicant’s website: 14 July 26, 2019 Denial of Request for Reconsideration at TSDR 5 (highlighting supplied by the Examining Attorney). Serial No. 79207107 - 17 - 15 16 17 15 May 28, 2017 Office Action at TSDR 33. 16 Id. at TSDR 34. Applicant’s website also states that “our team has experience in discovery, preclinical and clinical development through commercialization based on decades of experience in global pharmaceuticals, biotechnology, contract research organisations (CRO) and academia.” Id. at TSDR 38. 17 Id. at TSDR 37. Serial No. 79207107 - 18 - 18 19 18 July 26, 2019 Denial of Request for Reconsideration at TSDR 11. 19 Id. at TSDR 2. Serial No. 79207107 - 19 - Applicant’s argument that the phrase DEMENTIA DISCOVERY is “a clever juxtaposition of two terms with opposite meanings,” 13 TTABVUE 8, like the marks SOLAR QUARTZ in In re Econoheat, Inc., 218 USPQ 381 (TTAB 1983) and SNO- RAKE in In re Shutts, 217 USPQ 363 (TTAB 1983), cases cited by Applicant, 13 TTABVUE 6, 8, is belied by Applicant’s own uses of DEMENTIA DISCOVERY FUND and the word “discovery” in the materials shown above. Applicant’s uses make clear that when DISCOVERY is used in the proposed mark, the word unambiguously means “the act of discovering something,” the first of the meanings of the word listed by Applicant. Id. at 7. When modified by the word DEMENTIA, and followed by the word FUND, the word DISCOVERY refers to what Applicant’s website calls the Dementia Discovery Fund’s purpose, the discovery of “novel dementia treatments,” “effective treatments for dementia,” and “breakthrough treatments for dementia,” including “drug discovery.” The word DISCOVERY describes the objective of the “fundraising and financial support services for research in dementia” and “charitable fundraising for dementia research” services in Class 36, and the “medical research and product development in the field of dementia” services identified in Class 42 in the application, namely, discovery of the “pharmaceutical and medical preparations and substances for the prevention and treatment of dementia,” “prescription pharmaceuticals for humans for the prevention and treatment of dementia,” and “homeopathic pharmaceuticals for use in the treatment of dementia” identified in Class 5 in the application. The word DISCOVERY also describes a portion of the subject matter of the “provision of medical information, online via the Internet, on Serial No. 79207107 - 20 - the subject of all aspects of dementia diseases and the prevention of all types dementia diseases” identified in Class 44 in the application. No “mental leap between ‘DISCOVERY’ and the [goods’] and services[’] attributes,” id. at 8, is required to understand the intended meaning of DISCOVERY in the proposed mark. See N.C. Lottery, 123 USPQ2d at 1710 (the text in applicant’s specimen “demonstrate[d] that a consumer would immediately understand the intended meaning” of the applicant’s mark FIRST TUESDAY). The fact that the word “discovery” “may have other meanings in different contexts is not controlling,” In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1597 (TTAB 2018), and, “[i]n any event, ‘[i]t is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered as merely descriptive.’” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (RECOIL found to “immediately convey information regarding the ability of [medical and athletic cohesive tape] to rebound or return to its original length or close to it” even though record contained six dictionary definitions of the word) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). We find that DISCOVERY has a descriptive meaning in Applicant’s proposed mark. We turn finally to FUND, the last word in Applicant’s proposed mark. A “fund” is a “sum of money saved or made available for a particular purposes,”20 and “an amount of money that is collected or saved for a particular purpose.”21 Applicant admitted the 20 May 28, 2017 Office Action at TSDR 13 (OXFORD LIVING DICTIONARIES). 21 September 5, 2018 Office Action at TSDR 53 (COLLINS DICTIONARY). Serial No. 79207107 - 21 - descriptiveness of FUND by disclaiming it, and the record shows that “fund” is often combined with “discovery” in various fields of medical and scientific research to form the term of art “discovery fund,” which confirms that when FUND is combined with DISCOVERY in the proposed mark, FUND has a clear descriptive meaning in the context of the dementia-related goods and services identified in the application. The Examining Attorney made of record numerous webpages for “discovery funds” directed to medical and scientific research, including research in particular fields of medicine. We reproduce four examples below: 22 22 May 28, 2017 Office Action at TSDR 17. Serial No. 79207107 - 22 - 23 24 23 Id. at TSDR 22. 24 February 2, 2018 Office Action at TSDR 66. Serial No. 79207107 - 23 - 25 These uses of “discovery fund” are consistent with the statements on Applicant’s website that when it is combined with DISCOVERY, the word FUND in the proposed mark DEMENTIA DISCOVERY FUND refers to the entity that collects, uses, and disburses a “sum of money saved or made available for a particular purposes” and “an amount of money that is collected or saved for a particular purpose,” namely, the discovery of drugs, treatments, and therapies for dementia. The word FUND in the proposed mark thus describes the entity that is engaged in the “fundraising and financial support services for research in dementia” and “charitable fundraising for dementia research” services in Class 36, and that supports the “medical research and product development in the field of dementia” services identified in Class 42 in the application, which are directed to the discovery of the dementia-related goods identified in Class 5 and the rendition of the dementia-related services identified in 25 September 5, 2018 Final Office Action at TSDR 24. Serial No. 79207107 - 24 - Class 44. We find that FUND has a descriptive meaning in connection with the dementia-related goods and services in the application. Each of the words in the proposed mark has a descriptive meaning with respect to the dementia-related goods and services identified in the application. We turn now to the question of whether their combination in the proposed mark “conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.” Fat Boys, 118 USPQ2d at 1515-16 (quotation omitted). Applicant’s website states that its “Dementia Discovery Fund” is “a venture capital fund created to facilitate the development of effective treatments for dementia” and “the world’s largest venture fund focused entirely on discovering and developing novel therapies for dementia, including Alzheimer’s disease.”26 “The commercial context here demonstrates that a consumer would immediately understand the intended meaning” of the proposed mark DEMENTIA DISCOVERY FUND, N.C. Lottery, 123 USPQ2d at 1710, which is nothing more than the sum of its descriptive parts DEMENTIA (which describes the medical disorder on which the fund is “focused entirely”), DISCOVERY (which describes the process of “discovering and developing novel therapies for dementia”), and FUND (which describes the entity that raises money for the particular purpose of “facilitat[ing] the development of effective treatments for dementia”). Like the Cancer Discovery Fund, the Orthopaedics Discovery Fund, and the Family Medicine and Community Health Discovery Fund examples shown above, the proposed mark DEMENTIA 26 July 26, 2019 Denial of Request for Reconsideration at TSDR 2, 11. Serial No. 79207107 - 25 - DISCOVERY FUND identifies the provider of the dementia-related goods and services in the application, namely, a “venture capital fund created to facilitate the development of effective treatments for dementia.”27 Major League Umpires, 60 USPQ2d at 1060. “[T]he evidence shows that the mark is less an identifier of the source of goods or services and more a description of” the “discovery fund” entity that provides them. N.C. Lottery, 123 USPQ2d at 1710. The proposed mark is thus merely descriptive of the Class 5 “pharmaceutical and medical preparations and substances for the prevention and treatment of dementia,” “prescription pharmaceuticals for humans for the prevention and treatment of dementia,” and “homeopathic pharmaceuticals for use in the treatment of dementia” (which comprise “novel therapies for dementia”); the Class 36 “fundraising and financial support services for research in dementia” and “charitable fundraising for dementia research” (which generate the funds “to facilitate the development of effective treatments for dementia”); the Class 42 services of “medical research and product development in the field of dementia” (which “discover[ ] and develop[ ] novel therapies for dementia”); and the Class 44 services of the “provision of medical information, online via the Internet, on the subject of all aspects of dementia diseases and the prevention of all types dementia diseases,” and the “medical services concerning dementia, namely physician, nursing, midwifery and hospital services” (which promulgate and deliver those therapies). 27 Id. at TSDR 2. Serial No. 79207107 - 26 - Applicant’s merely descriptive mark is not made registrable on the Principal Register because of the existence of prior “registrations of marks containing the term ‘DISCOVERY’ without the disclaimer in connection with [the] medical and pharmaceuticals research fields.” 13 TTABVUE 9. It is true, as Applicant claims, that the USPTO “has already determined, on numerous previous occasions, that ‘DISCOVERY’ is not necessarily a descriptive term for medical research, id. at 10, but we agree with the Examining Attorney that “[i]t does not follow . . . that the term is never descriptive. . . .” 15 TTABVUE 18. In any event, the USPTO “is required to examine all trademark applications for compliance with each and every eligibility requirement,” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016), and “must assess each mark on the record of public perception submitted with the application.” In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). In Nett Designs, the Federal Circuit held that “[e]ven if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the Board or this court.” Id. The issue here, of course, is not the descriptiveness of DISCOVERY alone, but rather the descriptiveness of the wording DEMENTIA DISCOVERY FUND in its entirety. For the reasons discussed above, we agree with the Examining Attorney that “[a]s employed in the proposed mark DEMENTIA DISCOVERY FUND in the context of a ‘fund focused entirely on discovering and developing novel therapies for dementia’, the term ‘DISCOVERY’ and Serial No. 79207107 - 27 - the mark as a whole must be regarded as descriptive” of the dementia-related goods and services in each class in the application. 15 TTABVUE 18. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation