Community Health Campaign of Penn-sylvania

Trademark Trial and Appeal Board

May 5, 2000

No. 75326518 (T.T.A.B. May. 5, 2000)

Paper No. 9
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 5, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Community Health Campaign of Pennsylvania
________
Serial No. 75/326,518
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David V. Radack of Eckert Seamans Cherin & Mellott, LLC
for applicant.
Tina L. Snapp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Community Health Campaign of Pennsylvania has filed an
application to register the mark depicted below for
“charitable fund raising services.”1

1 Serial No. 75/326,518, filed June 24, 1997, claiming a date of
first use and of first use in commerce of May 1995.
Ser No. 75/326,518
2
Ser No. 75/326,518
3
Registration has been finally refused on the grounds
that (1) the mark as shown on the drawing differs from the
mark as shown on the specimens of record and applicant has
failed to either amend the drawing or submit new specimens
and (2) applicant has failed to submit a disclaimer of the
merely descriptive wording “Community Health Campaign.”
Applicant has appealed the final refusal of registration
and both applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
Looking first to the drawing, the Examining Attorney
maintains that the mark displayed therein is not a
“substantially exact representation” of the mark in which
applicant has acquired rights by use, as evidenced by the
specimens of record. She contends that the mark in the
drawing in which the wording “Community Health Campaign” is
displayed in three separate lines with only the first
letter being capitalized is not the same mark as that shown
on the specimens, in which the wording is in a single line
and is entirely in capitals. In the specimens the mark is
used as follows:
Applicant, on the other hand, argues that its mark
consists of the “circle of friends” logo in combination
Ser No. 75/326,518
4
with the words “Community Health Campaign,” and that the
positional relationship of the three words has no effect on
the overall commercial impression of the mark. Thus,
according to applicant, the mark in the drawing is a
“substantially exact representation” of the mark used on
the specimens.
Under Trademark Rule 2.51(b)(1), in an application
filed under Section 1(a), “the drawing of a service mark
shall be a substantially exact representation of the mark
as used in the sale or advertising of the services.”
Because the specimens of record show the mark which is
actually being used in commerce, the mark depicted in the
drawing must conform with the mark shown in the specimens.
See In re ECCS Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed.
Cir. 1996).
We agree with the Examining Attorney that there is
an obvious disparity between the manner in which the
wording “Community Health Campaign” is aligned in the
special form drawing and in the specimens. Placing each
word in a separate line with only the first letter being
emphasized by capitalization is not a “substantially exact
representation” of the three words arranged in a single
line with all letters being capitalized. Whether the
overall commercial impression is the same is not the test.
Ser No. 75/326,518
5
Instead, it is a much stricter standard, whether or not the
drawing is a “substantially exact representation” of the
mark in use.
Applicant might well have amended the drawing to
conform to the mark shown in the specimens on the basis
that the overall commercial impression was the same, since
the test for amendment under Trademark Rule 2.72(a)(2) is
whether the proposed amendment materially alters the mark
depicted in the original drawing. The mark for which
registration is sought, however, must be a “substantially
exact representation” of the mark being used by applicant.
This is the mark in which applicant has acquired rights.
Accordingly, the refusal to register on the ground that the
mark shown in the drawing is not substantially the same as
the mark shown on the specimens of record is affirmed.
Turning to the requirement for a disclaimer, the
Examining Attorney argues that the wording “Community
Health Campaign” is merely descriptive when used in
connection with applicant’s charitable fund raising
services. As support for her position, the Examining
Attorney relies upon a dictionary definition of the term
“campaign” as an “operation or series of operations
energetically pursued to accomplish a purpose,” and
statements in the specimens referring generally to use of
Ser No. 75/326,518
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the collected funds for local health agencies or to help
people in the community. She points out that the agencies
listed under applicant’s particular “Community Health
Campaign” are specifically directed to health problems,
these agencies including the Alzheimer’s Association, South
Pennsylvania Chapter; the American Cancer Society, Capital
Region; and the Cystic Fibrosis Foundation, Central PA
Chapter. In addition, the Examining Attorney has made of
record Nexis database excerpts demonstrating use of the
term “campaign” in conjunction with “community health,” of
which the following are representative:
...immunization for children. It was not ascertained,
however, whether immunizations were provided on an
ongoing basis or administered as part of a community
health campaign. Journal of School Health (October
1997);
...center - which provides acute care services to
rural Robeson’s 105,000 residents – is in midst of a
well-supported campaign to improve the overall
community health. Healthcare Executive (July/August
1996); and
To a large extent, hospital philanthropic campaigns
target specific community health needs. But some
institutional capital needs can’t be funded solely by
income from patient care services. Hospitals & Health
Networks (Sept. 20, 1994).
In view of this evidence, she argues that “Community Health
Campaign” merely describes or communicates to consumers the
focus of applicant’s fund raising services.
Ser No. 75/326,518
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Applicant maintains that the wording is only
suggestive, in that “Community Health Campaign” by itself
does not immediately convey information as to the nature of
applicant’s services. Applicant argues that the excerpts
relied upon by the Examining Attorney show use of the terms
“campaign” and “community health” in connection with
various health services, not fund raising activities.
Applicant contends that when its mark is viewed by the
persons to which it is directed, namely persons being
solicited to make contributions, it will require thought
and imagination for them to reach a conclusion as to the
fund raising nature of applicant’s services.
A word or phrase is merely descriptive within the
meaning of Section 2(e)(1) of the Trademark Act if it
immediately conveys information about a characteristic,
purpose, function or feature of the goods or services with
which it is being used. Whether or not a particular term
or phrase is merely descriptive is not determined in the
abstract, but rather in relation to the goods or services
for which registration is sought, the context in which the
mark is being used, and the significance the mark is likely
to have, because of the manner in which it is used, to the
average consumer as he encounters the goods or services
bearing the mark. See In re Abcor Development Corp., 588
Ser No. 75/326,518
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F.2d 811, 200 USPQ 215 (CCPA 1978); In re Nibco Inc., 195
USPQ 180 (TTAB 1977) and the cases cited therein.
Thus, we must determine whether or not the phrase
“Community Health Campaign” is merely descriptive when used
in connection with applicant’s charitable fund raising
services. The question is not whether the phrase standing
alone would convey the information that applicant provides
a fund raising service, as opposed to another type of
health service. From the evidence made of record by the
Examining Attorney, as well as the manner of use of the
mark in the specimens, we are convinced that the wording
“Community Health Campaign” would immediately convey the
information to potential contributors that this is a
campaign to raise funds for the benefit of community
health. The wording is merely descriptive of a major
purpose or feature of applicant’s fund raising services.
Accordingly, the requirement for a disclaimer of the
wording “Community Health Campaign” is proper and the
refusal to register because of applicant’s failure to
submit a disclaimer is affirmed.
Ser No. 75/326,518
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Decision: The refusal to register is affirmed on both
grounds.2
R. F. Cissel
H. R. Wendel
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board

2 We note that under Trademark Rule 2.142(g) the Board has the
jurisdiction to permit the entry of a disclaimer after the
issuance of its decision. The Board cannot, however, reopen the
application for any other purpose and accordingly cannot
entertain any amendment to the drawing. Applicant may file
another application and include both the disclaimer and a proper
drawing.