Duane Rainville Demers

Trademark Trial and Appeal Board

Apr 5, 2012

No. 76664409 (T.T.A.B. Apr. 5, 2012)

Mailed: April 5, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Duane Rainville Demers
________

Serial No. 76664409
_______

Duane Rainville Demers appearing pro se.

Jenny Park, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_______

Before Bucher, Cataldo, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

Duane Rainville Demers (“applicant”) filed an application
to register the mark ORPHAN’S FUND FOUNDATION in standard
character format for “wildflowers – an educational fund for
higher education” in International Class 36.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), on the ground that the mark is merely
descriptive of applicant’s identified services. Registration
was also refused in light of applicant’s failure to comply with

1 Serial No. 76664409, filed August 9, 2006, pursuant to Section 1(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76664409
2
the examining attorney’s requirement to amend the recitation of
services.
Upon final refusal of registration, applicant filed a
timely appeal and request for reconsideration. Both applicant
and the examining attorney filed briefs.2 For the reasons
discussed herein, the Board affirms the refusal to register and
requirement to amend the recitation of services.
I. Examining Attorney’s Objection – Applicant’s Claim of
Acquired Distinctiveness

Before addressing the merits of the appeal, we will
consider the examining attorney’s objection raised in her brief.
The examining attorney objects to applicant’s assertion of a
claim of acquired distinctiveness pursuant to Section 2(f) of
the Trademark Act, 15 U.S.C. § 1052(f) in his brief for the
first time. The objection is sustained. In addition to being
untimely, such a claim is impermissible for an application based
on an allegation of a bona fide intent to use the mark.
15 U.S.C. § 1052(f); Trademark Rule 2.142(d).
II. Refusal to Register Under Section 2(e)(1)
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a significant quality, characteristic, function,

2 As noted in the Board’s October 26, 2011 order, in light of
applicant’s failure to appear at the oral hearing scheduled upon his
request, applicant’s right to an oral hearing is deemed waived.
Serial No. 76664409
3
ingredient, attribute or feature of the product or service in
connection with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive, that the
mark describe each feature of the goods or services, only that
it describe a single, significant ingredient, quality,
characteristic, function, feature, purpose or use of the goods
or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a term is merely descriptive is determined
not in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it is
being used on or in connection with the goods or services, 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; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ
at 593.
We find that applicant’s mark is a phrase which immediately
conveys to prospective purchasers a significant feature of the
identified services, namely that applicant’s services consist of
a foundation whose purpose is to provide funds for children
without parents.
Serial No. 76664409
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Multiple definitions of the terms “orphan,” “fund,” and
“foundation” have been made of record:
orphan 1. a child without parents: a child whose parents
are both dead or has been abandoned by his or her parents,
especially a child not adopted by another family.
encarta.msn.com.

orphan 1a. a child whose parents are dead. 1b. a child
who has been deprived of parental care and who has not been
adopted. www.bartleby.com.

fund 2. a reserve of money: a sum of money saved or
invested for a particular purpose. encarta.msn.com.

fund 2a. a sum of money or other resources set aside for a
specific purpose. www.bartleby.com.

foundation 5. charitable or educational organization: an
organization that has been formally set up with an
endowment fund, e.g. a school, research establishment,
charitable trust, or hospital. 6. fund supporting
institution: an endowment fund that supports an
institution. encarta.msn.com.

foundation 3a. Funds for the perpetual support of an
institution; an endowment. www.bartleby.com.

As shown by the above dictionary definitions, the
possessive form of the word “orphan” in applicant’s mark
immediately conveys to prospective consumers the intended
recipients or beneficiaries of applicant’s services; the word
“fund” as used in the mark refers to the monetary resources that
applicant provides for the purposes of paying for educational
services on behalf of children without parents; and the term
“foundation” by definition refers to an institution providing
endowment funds. When used together as a phrase, applicant’s
Serial No. 76664409
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mark immediately identifies a foundation designed to provide
funding to finance the education of orphans.
In addition, the evidence obtained by the examining
attorney from third-party websites shows that the term “orphan’s
fund” is used by others to identify charitable endowment funds
established for orphans. See e.g., printout from
www.orphansfund.org showing use of brand name ORPHAN’S FUND to
identify charitable fundraising services for the benefit of
orphans. Denial of Request for Reconsideration, February 15,
2010. Such evidence is consistent with a finding that
applicant’s mark is merely descriptive.3
To further support the descriptive nature of the term
“foundation” as used in relation to applicant’s identified
services, the examining attorney made of record the
following use-based third-party registrations with a
disclaimer of the term FOUNDATION for the same or similar
services:
Registration No. 3106067 for the mark THE ROGER EDENS
FOUNDATION for “charitable fundraising and providing
grants to individuals and organizations in the fields
of stem cell research and the art of writing special
material, namely songs and sketches specifically
written for the purpose of charitable fundraising.”

3 We hasten to add though that as part of its burden of proof, the
Office is not required to show competitor need. See In re
BetaBattInc., 89 USPQ2d 1152, 1156 (TTAB 2008); In re Sun
Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001).
Serial No. 76664409
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Registration No. 3040912 for the mark CENTRAL VALLEY
FOUNDATION for “accepting and administering monetary
charitable contributions.”

Registration No. 2995352 for the mark UNITED HEALTH
FOUNDATION for various services including, “charitable
services, namely, providing grants, contributions and
other funding, support and information to non-profit
organizations, medical and clinical research
facilities, physicians and other health professionals,
community leaders, community organizations and
individuals in the fields of health and well-being.”

Registration No. 3035547 for the mark THE JELD-WEN
FOUNDATION for “providing grants to organizations
involved in social welfare activities, educational
activities, healthcare activities, youth activities,
arts and cultural activities, and/or free-market and
free-enterprise oriented activities; providing college
scholarships; administering monetary charitable
contributions.”

Registration No. 3085315 for the mark BURGER
KING/McLAMORE FOUNDATION & design for “providing
charitable fundraising and scholarship services.”

Registration No. 3679817 for the mark WILLIAM & EVA
FOX FOUNDATION & design for “providing grants to
actors and not-for-profit charitable organizations to
promote study, research, and training in the field of
acting and to encourage participation by actors and
potential audiences in non-commercial theater.”

Registration No. 3565932 for the mark THE JOHN RITTER
FOUNDATION FOR AORTIC HEALTH for various services,
including “charitable fundraising; accepting and
administering monetary charitable contributions;
charitable fundraising services for aortic health
research and education.”

Registration No. 3253329 for the mark PITT MEMORIAL
HOSPITAL FOUNDATION & design for “charitable fund
raising services, namely, for the support of medical
care for hospital patients, hospital facilities and
equipment.”

Serial No. 76664409
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Registration No. 3703647 for the mark MOTHERLESS CHILD
FOUNDATION for “charitable fundraising for orphans and
orphanages; charitable services, namely, providing
financial assistance and tuition assistance, to
orphans and orphanages.”

Registration No. 3324307 for the mark LANCE ARMSTRONG
FOUNDATION for various services, including “charitable
fundraising services; providing research grants to
organization in the fields of public health, cancer,
cancer recovery and survival.”

Registration No. 3242130 for the mark MAKE A
DIFFERENCE FOUNDATION for “charitable fund raising.”

Third-party registrations featuring the same or similar
services as applicant’s services are probative evidence on
the issue of descriptiveness where the relevant word or
term is disclaimed, registered under Trademark Act Section
2(f) based on a showing of acquired distinctiveness, or
registered on the Supplemental Register. See Sweats
Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560,
4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions
Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar
Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).
As accurately noted by the examining attorney, applicant
devotes much of his brief explaining the inspiration and purpose
of his proposed mark. Such a discussion is relevant only to the
extent it pertains to whether applicant’s mark is merely
descriptive. In addition, we agree with the examining attorney
Serial No. 76664409
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that the cases cited by applicant in his brief are inapposite
and fail to support his position.
In sum, we find that the examining attorney has met her
burden of proof that applicant’s mark is merely descriptive of
the recited services.
III. Amendment to Recitation of services
The Trademark Act requires that a trademark or service mark
application must include a “specification of … the goods [or
services]” in connection with which the mark is being used or
will be used. 15 U.S.C. § 1051(a)(2); 15 U.S.C. § 1051(b)(2);
Trademark Rule 2.32(a)(6). This requirement for a specification
of the particular goods and/or services applies to applications
filed under all statutory bases. See 15 U.S.C. §§ 1051(a)(2),
1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. § 2.32(a)(6).
The identification of goods and/or services must be specific,
definite, clear, accurate, and concise. See In re Societe
Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB
1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed.
Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory,
Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498
F.2d 1406, 181 USPQ 722 (CCPA 1974); In re Cardinal
Laboratories, Inc., 149 USPQ 709 (TTAB 1966). The Office has
discretion to require a degree of particularity necessary to
Serial No. 76664409
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identify clearly services covered by a mark. See In re Omega
SA, 494 F.3d 1362, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).
In the present case, applicant seeks registration of his
proposed mark for “wildflower — educational fund for higher
education.” As argued by the examining attorney,4 the recitation
is deficient for several reasons: because of the overly broad
wording, it fails to identify all the services with sufficient
particularity in order to determine the correct classification;
the term “wildflowers” is ambiguous within the context of the
recitation as currently stated and appears to be “unnecessary”;
and the recitation does not indicate what specific services are
provided in connection with “educational fund” and as such is
overly broad.
We find for the reasons stated above by the examining
attorney that she properly exercised her discretion in issuing a
final requirement to amend the recitation of services.
Decision: The refusal to register under Section 2(e)(1)
and the requirement to amend the recitation of services are
affirmed.

4 Applicant did not address this issue in his appeal brief.