SV Life Sciences Managers LLP

Trademark Trial and Appeal Board

Apr 1, 2020

79207107 (T.T.A.B. Apr. 1, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SV Life Sciences Managers LLP
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Serial No. 79207107
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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.
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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,
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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
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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.
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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.
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• 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.
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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
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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)).
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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
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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.
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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.
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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,”
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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.
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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
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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.
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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
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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).
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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.
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18
19

18 July 26, 2019 Denial of Request for Reconsideration at TSDR 11.
19 Id. at TSDR 2.
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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
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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).
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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.
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23
24

23 Id. at TSDR 22.
24 February 2, 2018 Office Action at TSDR 66.
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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.
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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.
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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.
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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
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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.