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
`
`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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`Serial No. 79207107
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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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`

`Serial No. 79207107
`
`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
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`“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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`Serial No. 79207107
`
`• Webpages from the European Union Intellectual Property Office website
`
`regarding Applicant’s European Union Registration No. 1343604 for the
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`mark DEMENTIA DISCOVERY FUND, made of record by Applicant;8 and
`
`• Third-party registrations of DISCOVERY-formative marks for goods and
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`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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`Serial No. 79207107
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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,
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`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
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`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
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`Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
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`2012) (quoting Bayer, 82 USPQ2d at 1831), and “not in the abstract or on the basis of
`
`
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`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
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`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
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`goods or services are to reach a conclusion about their nature from the mark. See, e.g.,
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`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
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`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
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`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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`Serial No. 79207107
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`71 USPQ2d 1370, 1372 (Fed. Cir. 2004)). Indeed, we are “required to examine the
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`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
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`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,
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`1953-55 (TTAB 2018).
`
`“Evidence of the public’s understanding of [a] term . . . may be obtained from any
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`competent source, such as purchaser testimony, consumer surveys, listings in
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`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,
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`publications and use ‘in labels, packages, or in advertising material directed to the
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`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
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`descriptive of an applicant’s goods or services.” Fat Boys, 118 USPQ2d at 1513 (citing
`
`
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`

`Serial No. 79207107
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`Gyulay, 3 USPQ2d at 1010). “If such a showing is made, the burden of rebuttal shifts
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`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
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`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
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`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
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`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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`Serial No. 79207107
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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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`Serial No. 79207107
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`The Examining Attorney claims that the record shows “that the combined terms
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`‘DISCOVERY FUND’ possess particular meaning in the context of applicant’s
`
`goods/services in reference to programs for the research, discovery, development,
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`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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`Serial No. 79207107
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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
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`‘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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`Serial No. 79207107
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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).
`
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`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
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`services.” Id. at 7.13 Applicant couples DISCOVERY with DEMENTIA in its
`
`argument, criticizing the Examining Attorney
`
`for “amending DEMENTIA
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`DISCOVERY to ‘discovery in the field of dementia,” id., which Applicant claims
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`“requires certain levels of imagination and ‘mental pause’ which strongly suggests
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`suggestiveness, not descriptiveness.” Id. at 8. Applicant describes the words
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`DEMENTIA and DISCOVERY as “antonyms” in its proposed mark, arguing that
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`“DEMENTIA DISCOVERY is a combination of two allegedly descriptive terms but
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`used in a way which creates juxtaposition, is inventive and evokes a unique
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`commercial impression.” Id. Applicant asks rhetorically: “Does DEMENTIA
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`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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`Serial No. 79207107
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`DISCOVERY mean that Applicant offers services for discovering dementia in
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`patients? Or does it mean that Applicant offers dementia patients tools to ‘self-
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`discover’ on how to cope with dementia on an everyday basis?” Id.
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`Applicant is correct that the word “discovery” has multiple dictionary meanings,
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`but we must assess whether the proposed mark is descriptive “not in the abstract or
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`on the basis of guesswork,” Fat Boys, 118 USPQ2d at 1513, but rather “in relation to
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`the particular goods [and services] for which registration is sought, the context in
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`which it is being used, and the possible significance that the term would have to the
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`average purchaser of the goods [and services] because of the manner of its use or
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`intended use.” Chamber of Commerce of the U.S., 102 USPQ2d at 1219. Although
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`Applicant focuses on the meaning of DISCOVERY combined with DEMENTIA, we
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`find that DISCOVERY derives its meaning in the proposed mark largely from its
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`combination with FUND to form the term of art “discovery fund,” which the record
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`shows is frequently used in various fields of medical and scientific research, and that
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`the word DEMENTIA identifies the particular field of research of Applicant’s
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`“discovery fund.” Contrary to Applicant’s argument that “‘DISCOVERY in
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`DEMENTIA DISCOVERY FUND cannot be defined by a single meaning as suggested
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`by the Examining Attorney when it comes to applicant’s services,” 13 TTABVUE 8,
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`the record shows that DISCOVERY has a clear descriptive meaning in the context of
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`the various dementia-related goods and services identified in the application.
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`We may consider Applicant’s website and publications, N.C. Lottery, 123 USPQ2d
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`at 1709-10, to determine “the possible significance that [the mark] would have to the
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`average purchaser of the goods [and services] because of the manner of its use or
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`intended use.’” Chamber of Commerce of the U.S., 102 USPQ2d at 1219. We reproduce
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`below a portion of Applicant’s press release announcing the launch of the “Dementia
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`Discovery Fund”:
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`We reproduce below portions of Applicant’s website:
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`14
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`14 July 26, 2019 Denial of Request for Reconsideration at TSDR 5 (highlighting supplied by
`the Examining Attorney).
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`Serial No. 79207107
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`15
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`16
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`17
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`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
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`19
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`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
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`juxtaposition of two terms with opposite meanings,” 13 TTABVUE 8, like the marks
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`SOLAR QUARTZ in In re Econoheat, Inc., 218 USPQ 381 (TTAB 1983) and SNO-
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`RAKE in In re Shutts, 217 USPQ 363 (TTAB 1983), cases cited by Applicant, 13
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`TTABVUE 6, 8, is belied by Applicant’s own uses of DEMENTIA DISCOVERY FUND
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`and the word “discovery” in the materials shown above. Applicant’s uses make clear
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`that when DISCOVERY is used in the proposed mark, the word unambiguously
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`means “the act of discovering something,” the first of the meanings of the word listed
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`by Applicant. Id. at 7. When modified by the word DEMENTIA, and followed by the
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`word FUND, the word DISCOVERY refers to what Applicant’s website calls the
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`Dementia Discovery Fund’s purpose, the discovery of “novel dementia treatments,”
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`“effective treatments for dementia,” and “breakthrough treatments for dementia,”
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`including “drug discovery.” The word DISCOVERY describes the objective of the
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`“fundraising and financial support services for research in dementia” and “charitable
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`fundraising for dementia research” services in Class 36, and the “medical research
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`and product development in the field of dementia” services identified in Class 42 in
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`the application, namely, discovery of the “pharmaceutical and medical preparations
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`and substances for the prevention and treatment of dementia,” “prescription
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`pharmace