Inre: Health Science Funding, LLC , 538 F. App'x 898 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE HEALTH SCIENCE FUNDING, LLC
______________________
2013-1054
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
85/255,510 and 85/255,541.
______________________
Decided: September 13, 2013
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J. MARK POHL, Pharmaceutical Patent Att’ys, LLC, of
Morristown, New Jersey, for appellant.
BENJAMIN T. HICKMAN, Associate Solicitor, United
States Patent and Trademark Office, of Alexandria,
Virginia, for appellee. With him on the brief were
NATHAN K. KELLEY, Deputy Solicitor, and CHRISTINA J.
HIEBER, Associate Solicitor.
______________________
Before PROST, CLEVENGER, and LINN, Circuit Judges.
PROST, Circuit Judge.
Health Science Funding, LLC (“Health Science”) ap-
peals from the final decision of the United States Patent
2 IN RE: HEALTH SCIENCE FUNDING, LLC
and Trademark Office Trademark Trial and Appeal Board
(“Board”) refusing registration of the marks
“PRASTERONE.ORG” and “THE PRASTERONE
COMPANY.” In re Health Sci. Funding, LLC, No.
85255510, 2012 WL 4763146 (T.T.A.B. Sept. 19, 2012).
Because the Board’s decision finding the marks generic
for the recited services is supported by substantial evi-
dence, we affirm.
BACKGROUND
Health Science filed applications seeking registration
of the marks “PRASTERONE.ORG” and “THE
PRASTERONE COMPANY” on the Supplemental Regis-
ter for services identified as “providing a website featur-
ing scientific and clinical research information about
investigational medical foods, dietary supplements or
drugs, namely, prasterone or derivatives or analogs
thereof.” The examining attorney refused registration,
finding that the proposed marks are generic under Sec-
tion 23 of the Trademark Act, 15 U.S.C. § 1091.
Health Science appealed to the Board, which affirmed
the denial of registration. The Board began its analysis
“by finding that the genus of services at issue in this case
is adequately defined by applicant’s identification of
services, namely, ‘providing a website featuring scientific
and clinical research information about investigational
medical foods, dietary supplements or drugs, namely,
prasterone or derivatives or analogs thereof.’” Health Sci.
Funding, 2012 WL 4763146, at *3. The Board then found
that, given the genus of services offered, the terms
PRASTERONE.ORG and THE PRASTERONE
COMPANY would be understood by the relevant public
primarily to refer to that genus, namely information
services regarding prasterone.
The Board analyzed each mark in its entirety by first
considering the separate elements of the marks and then
finding that the combinations produced no non-generic
IN RE: HEALTH SCIENCE FUNDING, LLC 3
meaning. The Board found, and Health Science concedes,
that prasterone is a generic term for synthetic dehydroe-
piandroesterone (DHEA). The Board reasoned that
because prasterone is generic for the subject matter of
applicant’s services, it is likewise generic for the services
themselves. The Board then found that the terms “.org”
and “company” are themselves generic and without
source-identifying significance in the context of those
services. Finally, looking to the marks in their entirety,
the Board found that the addition of the generic top-level
domain “.org” does nothing to convert the otherwise
generic term “prasterone” into something more that would
allow registration of the PRASTERONE.ORG mark. So
too with THE PRASTERONE COMPANY mark, finding
that the addition of the article “the” and the generic word
“company” to prasterone did not produce a registrable
mark. Having found the marks generic, the Board af-
firmed the refusal to register the marks.
DISCUSSION
Whether a particular term is generic is a question of
fact. In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1378
(Fed. Cir. 2007). The Patent and Trademark Office
(“PTO”) bears the burden of establishing that a proposed
mark is generic by clear evidence. In re Hotels.com, L.P.,
573 F.3d 1300, 1302 (Fed. Cir. 2009). We review the
Board’s genericness finding for substantial evidence,
taking into account the PTO’s heightened burden of proof.
Id.Health Science challenges the Board’s decision on two
grounds. First, Health Science vaguely avers that the
Board misidentified the genus of services at issue and
that there is no evidence that either mark is generic for
the correct genus of services. Second, Health Science
construes the Board’s opinion as holding that genericness
in one class of goods or services is sufficient to establish
genericness for another class, which according to Health
4 IN RE: HEALTH SCIENCE FUNDING, LLC
Science is contrary to our precedent. Neither of these
arguments has merit.
“The critical issue in genericness cases is whether
members of the relevant public primarily use or under-
stand the term sought to be protected to refer to the genus
of goods or services in question.” H. Marvin Ginn Corp. v.
Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed.
Cir. 1986). Determining a mark’s genericness is “a two-
step inquiry: First, what is the genus of goods or services
at issue? Second, is the term sought to be registered or
retained on the register understood by the relevant public
primarily to refer to that genus of goods or services?” Id.
at 990.
With respect to the first step, Health Science contends
that there is no evidence in the record to support a finding
that the marks are generic for publication services. This
assertion is as true as it is immaterial. The Board did not
determine that the services at issue are publication
services, but rather found that the services are “providing
a website featuring scientific and clinical research infor-
mation about investigational medical foods, dietary
supplements or drugs, namely, prasterone or derivatives
or analogs thereof.” Health Sci. Funding, 2012 WL
4763146, at *3. Health Science does not directly chal-
lenge this finding. Even so, such a challenge would fail as
the Board merely adopted Health Science’s own identifi-
cation of its services. Moreover, as the Board noted, there
is no serious contention that Health Science’s services are
“‘publishing services’ that involve ‘preparation of the
works for online publication, not providing the work
itself.’” Id. at *3 n.8. Accordingly, we find no error in the
Board’s identification of the services at issue.
Health Science also finds fault with the Board’s anal-
ysis concerning whether the marks are understood by the
relevant public primarily to refer to the identified genus
of services. According to Health Science, the Board held
IN RE: HEALTH SCIENCE FUNDING, LLC 5
that genericness in one class of goods or services is suffi-
cient to establish genericness for another class as a mat-
ter of law. It is true that the Board stated that “because
‘prasterone’ is the generic name of one of the items that is
the subject matter of applicant’s services, it is likewise
generic for the services themselves.” Id. Had the Board
ended its analysis there, Health Science might have a
point. However, the Board did not stop there.
To the contrary, the Board looked first to the term
“prasterone” in isolation and found that, as the parties
agree, it is generic for synthetic DHEA. The Board also
found that the generic top-level domain “.org” and the
word “company” are themselves both generic terms. The
Board then looked to the evidence concerning both the
generic meaning of prasterone and its use on informa-
tional websites. The Board found that “prasterone” is
frequently used with websites that provide general infor-
mation about prasterone and its efficacy in medical use.
Finally, the Board, viewing the marks in their entirety,
found that the addition of “.org” and “company” did noth-
ing to convert the generic term prasterone into something
more, something registrable.
Health Science relies heavily on our holding in In re
Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), argu-
ing that the board erred in relying on genericness in one
class of goods or services (i.e. drugs) to establish generic-
ness for another class (i.e. information services). As noted
above, the Board analysis was considerably more detailed
than Health Science alleges. Moreover, Steelbuilding.com
is easily distinguishable. In that case, we reversed be-
cause “the Board erroneously: (1) construed the genus of
applicant’s services and goods too narrowly; (2) discounted
the ambiguities and multiple meanings in the mark; and
(3) dismissed the addition of the TLD indicator despite its
expansion of the meaning of ‘STEELBUILDING.COM.’”
Id. at 1299. Health Science points to no similar errors in
the Board’s decision in this case.
6 IN RE: HEALTH SCIENCE FUNDING, LLC
In fact, the Board’s analysis in the present case large-
ly tracks the analysis we approved in In re Hotels.com,
L.P., 573 F.3d 1300 (Fed. Cir. 2009). In Hotels.com, the
Board found that HOTELS.COM is a generic term for
hotel information and reservations, and that the “dot-
com” shows internet commerce and does not convert the
generic term “hotels” into a brand name. As they have in
this case, the Board addressed the genericness of each of
the constituent words and then used the prevalence of
“hotel.com” or “hotels.com” in hotel reservation service
websites to find the combination generic. We affirmed,
finding the Board’s decision was supported by substantial
evidence, including “the large number of similar uses of
‘hotels’ with a dot-com suffix, as well as the common
meaning and dictionary definition of ‘hotels’ and the
standard usage of ‘.com’ to show a commercial internet
domain.” Id. at 1306; see also In re 1800Mattress.com IP,
LLC, 586 F.3d 1359 (Fed. Cir. 2009) (finding
“MATTRESS.COM” generic in relation to online retail
store services in the field of mattresses was supported by
substantial evidence).
In the present case, as noted above, the Board found
that the generic meaning of prasterone was not altered by
the use of the generic terms “.org” or “company.” Further,
the Board relied on evidence showing that “prasterone” is
frequently used with websites that provide general infor-
mation about prasterone and its efficacy in medical use;
the very use for which Health Science seeks registration.
Health Science fails to show why any of these factual
findings lack substantial evidentiary support. Indeed,
these findings as well as the Board’s ultimate conclusion
that the marks are generic are supported by substantial
evidence. Accordingly, we affirm.
AFFIRMED