From: Perez, Steven
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`Sent: 11/20/2019 1:32:10 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 79207107 - DEMENTIA DISCOVERY FUND - N/A -
`EXAMINER BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 79207107.doc
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`United States Patent and Trademark Office (USPTO)
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`U.S. Application Serial No. 79207107
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`Mark: DEMENTIA DISCOVERY FUND
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`Correspondence Address:
` ALEXANDER LAZOUSKI
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` LAZOUSKI IP LLC
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` 14726 BOWFIN TERRACE SUITE 1
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` LAKEWOOD RANCH, FL 34202
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`Applicant: SV Life Sciences Managers LLP
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`Reference/Docket No. N/A
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`Correspondence Email Address:
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` al@lzlawoffice.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`International Registration No. 1343604
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`The applicant appeals the examining attorney's final refusal to register the mark DEMENTIA
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`DISCOVERY FUND for the following goods and services:
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`“Pharmaceutical and medical preparations and substances for the prevention and treatment of
`dementia; sanitary preparations for medical purposes; pharmaceutical preparations, all for use
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`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, 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 Class 5.
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`“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
`Class 36.
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`“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 development of mobile device software applications;
`design and development of computer programs,” in Class 42.
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`“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 Class 44.
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`Registration was refused pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1),
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`because the applied-for mark merely describes a characteristic or purpose of applicant’s goods and/or
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`services. It is respectfully requested that this refusal be affirmed.
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`STATEMENT OF FACTS
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`On May 11, 2017, the applicant requested registration on the Principal Register under
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`Trademark Act Section 66 for the proposed mark DEMENTIA DISCOVERY FUND for “Pharmaceutical and
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`medical preparations and substances; pharmaceutical and medical preparations and substances related
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`to dementia; sanitary preparations for medical purposes; pharmaceutical preparations, all for use in the
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`treatment or prevention of brain diseases and degenerative dementia disorders; antiseptic
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`preparations; prescription pharmaceuticals for humans as well as other pharmaceutical products;
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`veterinary and sanitary products; dietary foods, dietary and health food supplements; vitamins; dietetic
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`substances adapted for medical use, food for babies, teens adults and elders; homeopathic preparations
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`and substances; medicated drinks; anti-diabetic drugs; hypertension medications; steroid hormones;
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`non-steroidal anti-inflammatory drugs; chemicals for use in medical research in dementia disorders, and
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`medical or veterinary diagnosis,” in Class 5; “Pharmaceutical and medical preparations and substances;
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`pharmaceutical and medical preparations and substances related to dementia; sanitary preparations for
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`medical purposes; pharmaceutical preparations, all for use in the treatment or prevention of brain
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`diseases and degenerative dementia disorders; antiseptic preparations; prescription pharmaceuticals for
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`humans as well as other pharmaceutical products; veterinary and sanitary products; dietary foods,
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`dietary and health food supplements; vitamins; dietetic substances adapted for medical use, food for
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`babies, teens adults and elders; homeopathic preparations and substances; medicated drinks; anti-
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`diabetic drugs; hypertension medications; steroid hormones; non-steroidal anti-inflammatory drugs;
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`chemicals for use in medical research in dementia disorders, and medical or veterinary diagnosis,” in
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`Class 36; “Scientific and technological services and research and design; scientific and technological
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`services and research and design relating to goods and services connected with dementia; industrial
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`analysis and research services; design and development of computer hardware and software; design and
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`development of computer hardware and software connected with dementia; laboratory analysis;
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`laboratory research; laboratory research services; laboratory testing services; medical research
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`laboratory services; research services in relation to the causes, symptoms, diagnosis, treatment and
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`prevention of dementia; genetic research concerning dementia; provision of research facilities; research
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`laboratories; research in relation to medicines and pharmaceuticals; medical research services; design
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`and development of mobile device applications; design and development of computer programmes,” in
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`Class 42; and “Scientific and technological services and research and design; scientific and technological
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`services and research and design relating to goods and services connected with dementia; industrial
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`analysis and research services; design and development of computer hardware and software; design and
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`development of computer hardware and software connected with dementia; laboratory analysis;
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`laboratory research; laboratory research services; laboratory testing services; medical research
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`laboratory services; research services in relation to the causes, symptoms, diagnosis, treatment and
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`prevention of dementia; genetic research concerning dementia; provision of research facilities; research
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`laboratories; research in relation to medicines and pharmaceuticals; medical research services; design
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`and development of mobile device applications; design and development of computer programmes,” in
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`Class 44.
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`On June 9, 2017, an Office action issued refusing the proposed mark as descriptive under
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`Trademark Act Sec. 2(e)(1), and also requiring applicant’s citizenship and clarification of the
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`identification of goods and services.
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`On December 11, 2017, applicant responded with arguments addressing the refusal under
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`Trademark Act Sec. 2(e)(1). Applicant also amended its identification of goods and services, clarified its
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`citizenship and entered a voluntary disclaimer of the words "DEMENTIA'' and "FUND".
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`On February 2, 2018, a subsequent Office action issued continuing the refusal under Trademark
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`Act Sec. 2(e)(1) and requiring clarification of certain goods in the amended identification for Class 5. The
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`examining attorney also advised applicant that the disclaimer of “DEMENTIA” and “FUND” was not
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`required could be withdrawn, given that the entire mark had been refused as descriptive. On August 2,
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`2018, applicant responded by restating its arguments in response to the descriptiveness refusal and
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`acceptably amending its identification for Class 5.
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`On September 5, 2018, the examining attorney issued a final Office action maintaining the Sec.
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`2(e)(1) refusal. Thereafter, a Notice of Abandonment issued on March 21, 2019, for failure to timely
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`respond to the final Office action. On May 21, 2019, applicant submitted a Petition to Revive the
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`abandoned application in conjunction with a Notice of Appeal and Request for Reconsideration.
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`Applicant’s petition was granted and a Notice of Revival issued June 19, 2019. On July 26, 2019, an
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`action denying applicant’s Request for Reconsideration issued and the present appeal followed.
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`ISSUE ON APPEAL:
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`WHETHER THE PROPOSED MARK “DEMENTIA DISCOVERY FUND”
`IS DESCRIPTIVE OF APPLICANT’S IDENTIFIED GOODS AND SERVICES
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`ARGUMENT
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`A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
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`feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re
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`TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl &
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`Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415
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`F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of
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`Patents, 252 U.S. 538, 543 (1920)).
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`Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a
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`descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly
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`infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d
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`811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free
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`to use descriptive language when describing their own goods and/or services to the public in advertising
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`and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
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`The determination of whether a mark is merely descriptive is made in relation to an applicant’s
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`goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
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`F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S.,
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`675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo
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`Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the
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`“documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary
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`definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-
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`DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the
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`relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating
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`system). “Whether consumers could guess what the product [or service] is from consideration of the
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`mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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`In this regard, “[a] mark may be merely descriptive even if it does not describe the ‘full scope
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`and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71
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`USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346,
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`57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one
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`significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297,
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`1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373
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`F.3d at 1173, 71 USPQ2d at 1371.
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`Moreover, a mark does not need to be merely descriptive of all the goods or services specified
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`in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217,
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`1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A
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`descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which
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`registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at
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`1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
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`A.
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`Applicant’s Proposed Composite Mark Is Merely Descriptive
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`The proposed mark DEMENTIA DISCOVERY FUND describes the nature, purpose or characteristic
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`of the identified goods/services and the entity through which they are provided.
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`Generally, if the individual components of a mark retain their descriptive meaning in relation to
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`the goods and/or services, the combination results in a composite mark that is itself descriptive and not
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`registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower
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`Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion
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`Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL
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`EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing
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`medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding
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`SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048,
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`1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box
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`springs, and pillows). Only where the combination of descriptive terms creates a unitary mark with a
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`unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is
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`the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384
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`(C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
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`In this case, both the individual components and the composite result are descriptive of
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`applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning
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`in relation to the goods and/or services. Each term within the proposed mark has significance within the
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`medical field. None of the terms alter the meaning of any other term within the proposed mark. No
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`novel spellings or unique juxtapositions are apparent in the mark to support a finding of a
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`nondescriptive or suggestive meaning. Moreover, the word combination does not diminish the
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`descriptiveness of the mark because each whole word is present in the mark and each term retains their
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`descriptive meaning in relation to the goods/services.
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`Specifically, the term “DEMENTIA” refers to “a chronic or persistent disorder of the mental
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`processes caused by brain disease or injury and marked by memory disorders, personality changes, and
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`impaired reasoning"1 or “loss of cognitive abilities, including memory, concentration, communication,
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`planning, and abstract thinking, resulting from brain injury or from a disease such as Alzheimer's disease
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`or Parkinson's disease.”2 “DISCOVERY” refers to “the process of learning something that was not known
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`before, or of finding someone or something that was missing or hidden”3 and “the act or process of
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`discovering,”4 i.e., “the act of finding or learning something for the first time”5. “FUND” refers to “a sum
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`of money saved or made available for a particular purpose”6 and an amount of money “available to be
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`spent, especially money that is given to an organization or person for a particular purpose”7.
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`Moreover, evidence of record discussed below demonstrates that the combined terms
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`“DISCOVERY FUND” possess particular meaning in the context of applicant’s goods/services in reference
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`to programs for the research, discovery, development, testing and clinical introduction of new drugs and
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`treatments administered through a dedicated fund.
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`Applicant has identified goods/services encompassing those which comprise or are provided
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`through a discovery fund program dedicated to the field of dementia. The focus on dementia is
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`specifically indicated in identifications for each of the four classes covered by the application.
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`Applicant’s goods in Class 5 encompass those for the treatment, prevention and diagnosis of dementia,
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`while identified Class 36 services encompass fundraising, sponsorship, financial management and
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`related services in the field of dementia research. Services described in Class 42 include numerous
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`1 Oxford English Dictionary (www.en.oxforddictionaries.com) – Final Office action of Sept. 5, 2018 at p. 27 (Page
`numbers reference the Trademark Status & Document Retrieval (TSDR) system).
`2 American Heritage Dictionary (www.ahdictionary.com) – Id at p. 31.
`3 MacMillan Dictionary (www.macmillan.com) – Id at p. 33.
`4 Merriam-Webster Dictionary (www.merriam-webster) – Id. at p. 43.
`5 Merriam-Webster Dictionary (www.merriam-webster) – Id. at p. 45.
`6 Oxford English Dictionary (www.en.oxforddictionaries.com) – Office action of May 28, 2017 at p. 13.
`7 Collins English Dictionary (www.collinsdictionary.com) - Final Office action of Sept. 5, 2018 at p. 53.
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`references to research relating to dementia, while applicant’s Class 44 identification encompasses a
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`variety of medical information and treatment services concerning dementia. This nature is further
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`confirmed in excerpts from applicant’s website describing goods/services centered around “a specialist
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`venture capital fund, aiming to discover and develop breakthrough treatments for dementia”8 and
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`operated by a team with “experience in discovery, preclinical and clinical development through to
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`commercialization”9.
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`Elsewhere, applicant describes itself as “the world’s largest venture capital fund focused entirely
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`on discovering and developing novel therapies for dementia, including Alzheimer’s disease”10 and states
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`that “[t]he DDF has been established to deliver new drug approaches for dementia by 2025 to diagnose
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`and intervene early to modify the course of the disease while improving symptoms and thereby laying
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`the foundations for effective therapies”11. Material obtained from applicant’s website is acceptable as
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`competent evidence. See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink,
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`78 USPQ2d 1301, 1302-03 (TTAB 2006); TBMP §1208.03; TMEP §710.01(b).
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`As such, the proposed mark DEMENTIA DISCOVERY FUND immediately conveys to potential
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`consumers a key characteristic of the identified goods and services, namely, their creation and provision
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`via a program for the discovery and funding of diagnostic and treatment advances in the field of
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`dementia. In this respect the proposed mark parallels other discovery fund programs dedicated to
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`research and development of new drugs and treatments in other medical areas, examples of which
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`include the following:
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`8 Office action of May 28, 2017 at p. 35.
`9 Id. at p. 39.
`10 Reconsideration letter of July 26, 2019 at p. 11.
`11 Id. at p. 6.
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`1. Cancer Discovery Fund at the Stanford University School of Medicine (Office action of May
`28, 2017 at p. 17.
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`2. National Down Syndrome Society Research Innovation & Discovery Fund (Id. at p. 27).
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`3. National Psoriasis Foundation Discovery Fund (Id. at p. 31).
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`4. Dr. Ira T. Fine Discovery Fund for the Johns Hopkins Division of Rheumatology (Office action
`of Feb. 2, 2018 at p. 12).
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`5. Orthopaedics Discovery Fund at University of California – San Diego (Id. at p. 66).
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`6. Keira Kilbane Cancer Discovery Fund (Id. at p. 72).
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`7. Seattle Children’s Research Discovery Fund at the MainVue Seattle Children’s Charity Home
`(Id. at p. 99).
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`8. Oral Cancer Discovery Fund at the University of British Columbia (Id. at p. 100).
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`9. Pancreatic Cancer Discovery Fund at the University of Michigan (Id. at p. 103).
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`10. Family Medicine and Community Health Discovery Fund at the University of Minnesota
`(Office action September 5, 2018 at p. 24).
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`As with such third-party programs, the applicant's mark DEMENTIA DISCOVERY FUND
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`immediately conveys to potential consumers a key characteristic of the identified goods/services or the
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`entity providing them, namely, their format/purpose and specific medical focus. As the applicant's mark
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`immediately indicates a feature or characteristic of the goods/services, the mark is merely descriptive
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`and refusal of registration is warranted.
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`B.
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`Applicant’s Arguments Are Unpersuasive
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`Applicant’s arguments in response to the descriptiveness refusal share a common flaw which
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`renders each unpersuasive. From its initial response to the appeal brief, applicant fails to consider the
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`descriptive significance of the proposed mark as a whole, suggesting instead that the voluntary
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`disclaimer of “DEMENTIA” and “FUND” necessarily narrows the focus of any analysis of registrability to
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`the word “DISCOVERY”. This is apparent in applicant’s assertion that “[t]he question presented in this
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`appeal is whether “DISCOVERY” is merely descriptive in connection with Applicant’s Services within the
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`meaning of Trademark Act Section 2(e)”12.
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`In fact, the issue at hand is whether the mark as a whole is descriptive under Trademark Act Sec.
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`2(e)(1). Consideration of descriptiveness “requires that a mark be ‘considered in its entirety’.” In re
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`Oppedahl & Larson LLP, 373 F.3d 1171, 1174, 71 USPQ2d 1370 (Fed. Cir. 2004))(citing Estate of P.D.
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`Beckwith, Inc., 252 U.S. at 546 (“The commercial impression of a trade-mark is derived from it as a
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`whole, not from its elements separated and considered in detail”)). When the proposed mark is
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`considered in this manner, the deficiencies of applicant’s arguments are clear.
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`Applicant first asserts that the term “DISCOVERY” has “numerous meanings, which preclude it
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`from immediately describing Applicant’s services.”13 Applicant explains over several paragraphs the
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`“mental gymnastics”14 it believes necessary to attach any specific known meaning to the term within the
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`12 Applicant’s Appeal Brief, p 2.
`13 Id at p. 6.
`14 Id. at p. 7.
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`context of “DEMENTIA DISCOVERY”. Alleged hurdles to understanding include the need to puzzle out
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`the “clever juxtaposition of two terms with opposite meanings”15 and the incongruity of “discovering”
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`an already well-known disorder. Applicant concludes that “DISCOVERY” is not descriptive because it
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`“cannot be defined by a single meaning.”16 Such arguments are without merit.
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`As to the multiple potential definitions of the word “DISCOVERY”, descriptiveness is considered
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`in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.,
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`695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in
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`different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB
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`2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well
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`settled that so long as any one of the meanings of a term is descriptive, the term may be considered to
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`be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In
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`re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). As such, applicant’s assertion that “DISCOVERY” is
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`not descriptive because it cannot be defined by a single meaning is unsupported.
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`Moreover, contrary to applicant’s arguments, the proposed mark is not “DISCOVERY” or
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`“DEMENTIA DISCOVERY”, but “DEMENTIA DISCOVERY FUND”. Applicant’s fragmentary analysis ignores
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`completely the impact of “FUND” on the connotation of other wording in the mark. As a result,
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`applicant fails to acknowledge, much less rebut, evidence that “DISCOVERY FUND” possesses particular
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`descriptive significance in the medical field. In the absence of arguments or evidence in response to this
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`evidence, it is reasonable to conclude that interpretation of the proposed mark by relevant consumers
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`will align with established use of “discovery fund” within the medical research and development field.
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`15 Id.
`16 Applicant’s brief, p. 7.
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`Even taken at face value, applicant’s arguments limited to a portion of the proposed mark fail to
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`demonstrate a distinctive nature. Evidence of record makes clear that “discovery” in the context of
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`known conditions such as dementia refers to research and development of new drugs and treatments,
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`as well as to the discovery of new insights into causes, prevention, diagnosis, etc. Evidence of such
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`descriptive usage, none of which has been addressed by the applicant, include the following (emphasis
`
`added):
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`1. Media release by applicant announcing that “The Dementia Discovery Fund (DDF), an
`innovative new global investment fund to support discovery and development of novel
`dementia treatments has launched.” (www.theddfund.com)17
`
`
`
`2. Media release announcing the opening of the “Eisai Center for Genetics Guided Dementia
`Discovery (“G2D2”), a new exploratory research facility located in Cambridge, Mass.”
`(www.esai.mediaroom.com)18
`
`
`3. Media release announcing that “TRIA to design new Dementia Discovery Center for Eisai Inc.”
`(www.prismpub.com)19
`
`
`
`4. Mission statement of the UK Dementia Research Institute as “To boost, connect and
`revolutionise dementia discovery science”. (www.ukdri.ac.uk)20
`
`
`
`5. Media announcement for the creation of a neuroscience center for the study of dementia:
`“The facilities for this work really matter and having this dedicated, multidisciplinary,
`collaborative space will greatly accelerate the speed of dementia discovery and translation”.
`(www.datesand.com)21
`
`
`6. Announcement that “UNC researchers awarded $1.3 million to put diabetes discovery into
`practice in the U.S.” (www.unchealthcare.org)22
`
`
`17 Reconsideration letter of July 26, 2019 at p. 5.
`18 Id. at p. 17.
`19 Id. at p. 19.
`20 Id. at p. 24.
`21 Id. at p. 42.
`22 Id. at p. 44.
`
`

`

`
`
`7. News segment announcing that “University of Calgary researchers make heart disease
`discovery”. (www.cbc.ca)23
`
`
`
`
`
`As such, whether the proposed mark is interpreted as referencing a “discovery fund” in the field
`
`of “dementia” or a “fund” in the field of “dementia discovery”, the result is descriptive of the
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`goods/services identified in the application. It is noted in this regard that determining the
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`descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in
`
`which the mark is being used, and the possible significance the mark would have to the average
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`purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the
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`U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft,
`
`488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a
`
`mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at
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`1831.
`
`
`
`Referenced evidence of applicant’s own use makes clear that its goods/services are directed to
`
`medical professionals, researchers, investors and others aware of the need, value and importance of
`
`discoveries in the field of dementia. Applicant has provided no credible arguments or evidence to
`
`support its conclusion that such knowledgeable consumers would be “somewhat puzzled” as to the
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`meaning of the proposed mark.24 In sum, 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.
`
`
`23 Id. at p. 65.
`24 Applicant’s brief at p. 7.
`
`

`

`
`
`Applicant next argues that registration is warranted due to the existence of third-party
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`registrations for marks containing the word “DISCOVERY” without a disclaimer in connection with
`
`medical and pharmaceutical research. However, the fact that third-party registrations exist for marks
`
`allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness. See In re Scholastic
`
`Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a). An applied-for mark that is
`
`merely descriptive does not become registrable simply because other seemingly similar marks appear
`
`on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a).
`
`
`
`It is well settled that each case must be decided on its own facts and the Trademark Trial and
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`Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc.,
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`236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330,
`
`1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely descriptive is
`
`determined based on the evidence of record at the time each registration is sought. In re theDot
`
`Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP §1209.03(a); see In re Nett Designs,
`
`Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.
`
`
`
`Moreover, the value of applicant’s third-party evidence is inva