MathCapital Management, LPv.MATH Venture Partners Management, LLC

Trademark Trial and Appeal Board

Nov 18, 2020

91243961 (T.T.A.B. Nov. 18, 2020)

Mailed: November 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

MathCapital Management, LP
v.
MATH Venture Partners Management, LLC
_____

Opposition No. 91243961
_____

Jeffrey L. Van Hoosear, Thomas Y. Yee, Lesley Y. Kim, and Brian M.Z. Reece of
Knobbe, Martens, Olson & Bear, LLP for MathCapital Management, LP.

MATH Venture Partners Management, LLC, pro se.
_____

Before Bergsman, Lykos and Larkin, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

MATH Venture Partners Management, LLC (Applicant) seeks registration on the
Principal Register of the mark MATH VENTURE PARTNERS, in standard character
form, for “venture capital fund management,” in International Class 36.1 Applicant
disclaims the exclusive right to use “Venture Partners.”

1 Serial No. 87749194 filed January 9, 2018, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and first use in
commerce as of October 14, 2014.
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
Opposition No. 91243961

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MathCapital Management, LP (Opposer) opposed the registration of MATH
VENTURE PARTNERS for “venture capital fund management” under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that MATH VENTURE
PARTNERS is merely descriptive when used to identify “venture capital fund
management.”
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.
The parties fully briefed the case.
I. The Record
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s application for the mark MATH VENTURE
PARTNERS. In addition, the parties introduced the evidence listed below:
A. Opposer’s testimony and evidence.
Opposer introduced the testimony deposition of Peter Piazza, a partner in Opposer
since 2017.2
B. Applicant’s testimony and evidence.
1. Testimony declaration of Mark Achler, Applicant’s Managing
Director;3

2. Testimony declaration of David Semmel, Applicant’s former Chief
Financial Officer;4

2 16 TTABVUE. The Board posted the portions of the Piazza deposition Opposer designated
confidential at 15 TTABVUE.
3 17 TTABVUE.
4 19 TTABVUE. The Board posted the portions of the Achler declaration Applicant designated
confidential at 18 TTABVUE.
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3. Notice of reliance on Internet materials comprising excerpts from
third-party websites and securities rules accessed from SEC.gov;5

4. Notice of reliance on Internet materials comprising excerpts from
third-party websites and dictionary definitions;6 and

5. Notice of reliance on Internet materials comprising newspaper
articles, Applicant’s social media pages, and excerpts from third-
party websites.7

II. Entitlement to a Statutory Cause of Action8
To establish entitlement to a statutory cause of action under Sections 13 or 14 of
the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding
and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v.
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, *3 (Fed. Cir. 2020); see also
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999).9

5 20 TTABVUE.
6 21 TTABVUE.
7 22 TTABVUE.
8 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain applicable.
9 Applicant argues that in the Notice of Opposition Opposer failed to plead its entitlement to
a statutory cause of action under Section 13. Applicant’s Brief, pp. 6-7 (26 TTABVUE 12-13).
We agree. When the plaintiff asserts either mere descriptiveness or genericness, a plaintiff
may, for example, plead that it is engaged in the sale of the same or related products or
services (or that the product or service in question is within the normal expansion of
plaintiff’s business) and that the plaintiff has an interest in using the term descriptively in
its business, i.e., a plaintiff may plead that it is a competitor. See, e.g., Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013) (petitioner
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It is sufficient, for purposes of entitlement to a statutory cause of action under
Section 2(e)(1), that the opposer plead and prove that it is engaged in the manufacture
or sale of services similar or closely related to those of the applicant (i.e., is in a
position to use the involved alleged merely descriptive term to describe its services).
DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275, 280 (CCPA
1961) (entitlement to a statutory cause of action established where an opposer “is one
who has a sufficient interest in using the [allegedly] descriptive term in its
business.”); Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007)
(acknowledging that a commercial interest in an allegedly descriptive term is
sufficient to establish standing); James River Petroleum Inc. v. Petro Stopping Ctrs.
L.P., 57 USPQ2d 1249, 1251 (TTAB 2000); Mars Money Sys. v. Coin Acceptors, Inc.,
217 USPQ 285, 287 (TTAB 1983).
Peter Piazza, a partner in Opposer “involved in the vetting, negotiating and
investing in target companies,” testified that Opposer renders “venture-capital
investment” services.10 To support his testimony, Piazza introduced copies of
presentations using the word “Math” as part of Opposer’s service mark

established and respondent admitted that petitioner is a competitor using the term at issue
as part of its domain name), aff’d, 565 F. App’x 900 (Fed. Cir. 2014), (mem.). Opposer’s three-
paragraph complaint is devoid of any such allegations. 1 TTABVUE 3-4. However, insofar as
Opposer introduced testimony to prove Opposer’s statutory entitlement to bring a cause of
action, we find that Opposer fairly apprised Applicant that it was proving its statutory
entitlement to bring a cause of action. Accordingly, we find that the parties tried Opposer’s
entitlement to bring a cause of action by implied consent and we deem the pleadings amended
under Fed. R. Civ. P. 15(b). See also Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d
1134, 1138 (TTAB 2009).
10 Piazza Testimony Dep., p. 22 (16 TTABVUE 23).
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MathCapital.11 The testimony and evidence is sufficient to prove that Opposer is
entitled to a statutory cause of action.
III. Whether MATH VENTURE PARTNERS is merely descriptive?
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
precludes registration of a mark on the Principal Register that, when used in
connection with an applicant’s goods or services, is merely descriptive of them.
15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it immediately conveys
information concerning a feature, quality, or characteristic of the goods or services
for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc.,
906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery,
866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). We “must consider the mark
as a whole and do so in the context of the goods or services at issue.” DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (emphasis added); In re Calphalon Corp., 122 USPQ2d 1153, 1162
(TTAB 2017). “Whether consumers could guess what the product is from
consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ
365, 366 (TTAB 1985). Indeed, “[t]he question is not whether someone presented with
only the mark could guess what the goods or services are. Rather, the question is
whether someone who knows what the goods and services are will understand the
mark to convey information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting

11 Piazza Testimony Dep. Exhibits 11 and 12 (15 TTABVUE 76-103)(confidential).
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In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). This applies to
compound marks as well.
In considering a mark as a whole, the Board may weigh the
individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its
various components. … [I]f ... two portions individually are
merely descriptive of an aspect of appellant’s goods [or
services], the PTO must also determine whether the mark
as a whole, i.e., the combination of the individual parts,
conveys any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004).
The issue before us is whether, notwithstanding Applicant’s disclaimer of
VENTURE PARTNERS, the mark MATH VENTURE PARTNERS as a whole is
merely descriptive in relation to the identified services. If each component retains its
merely descriptive significance in relation to the goods or services, then the mark as
a whole is merely descriptive. Id. at 1374; In re Mecca Grade Growers, LLC, 125
USPQ2d 1950, 1955 (TTAB 2018).
Opposer has the burden of establishing by a preponderance of the evidence that
applicant's term is merely descriptive of hotel services. Plyboo Am., Inc. v. Smith &
Fong Co., 51 USPQ2d 1633, 1640 (TTAB 1999); Racine Indus., Inc. v. Bane-Clene
Corp., 35 USPQ2d 1832, 1837 (TTAB 1994).
David Semmel, Applicant’s former Chief Financial Officer, testified that venture
capital fund management includes,
[C]ollecting the [limited partners] investors’ money,
pooling it, and, as mandated by the limited partnership
agreement, investing the received money in high-risk,
start-up businesses, that Applicant oversees, to give the
[limited partners] the high investment returns they seek.
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To render these services to [limited partners], with each
fund, Applicant raises capital commitments (from the
[limited partners]) that become the fund, creates the fund
entity, periodically “calls” the capital commitments from
the [limited partners], invests the fund’s capital in
companies Applicant identifies that become the fund’s
“portfolio,” monitors and advises the portfolio companies,
reports the portfolio companies’ progress and returns on
capital to the [limited partners], and exits the viable
portfolio company investments while maximizing returns
to the [limited partners].12
Opposer contends that Applicant’s mark MATH VENTURE PARTNERS is merely
descriptive of venture capital fund management services “because the mark conveys
an immediate idea of the numeric calculations – the ‘math’ – that constitute an
important quality, characteristic, feature, function and/or purpose of Applicant’s
services.”13
Math plays a strong role in the venture capital fund
management industry, both in determining consumer
eligibility to receive services and in the compensation paid
to the venture firm. In order to determine whether an
individual is eligible to become a consumer of Applicant’s
services, the individual’s net worth must be calculated. If
the consumer qualifies for services, the venture firm will
select investments, and the firm is compensated based on
a calculation of percentage of assets and a performance
fee.14 (Internal citations omitted).
Merriam-Webster.com defines “math” as an abbreviation of “mathematics.”15
Merriam-Webster.com defines “mathematics” as

12 Semmel Testimony Decl. ¶ 4 (19 TTABVUE 3-4).
13 Opposer’s Brief, p. 6 (23 TTABVUE 11).
14 Opposer’s Brief, p. 7 (23 TTABVUE 12).
15 21 TTABVUE 22.
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the science of numbers and their operations, interrelations,
combinations, generalizations, and abstractions and of
space configurations and their structure, measurement,
transformations, and generalizations[.] Algebra,
arithmetic, calculus, geometry, and trigonometry are
branches of mathematics.16
“Calculation” is synonymous with “math.”17
Opposer asserts that the definition of “math” proves that consumers will
immediately understand that MATH VENTURE PARTNERS refers to the series of
calculations that go into managing venture capital,18 in other words that “Math” or
making calculations is a key aspect or characteristic of venture capital fund
management. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB
2016) (it is enough if a mark “describes one significant attribute, function, or
property of the [services].”) (emphasis added). Cf. Real Foods Pty Ltd. v. Frito-Lay N.
Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1379 (Fed. Cir. 2018) (“[A] term can be
generic for a genus of goods or services if the relevant public understands the term to
refer to a key aspect of that genus.”) (quoting Royal Crown Cola Co. v. Coca-Cola Co.,
892 F.3d 1358, 127 USPQ2d 1041, 1047 (Fed. Cir. 2018)).
“Math” is not a key aspect of venture capital management. It is an incidental,
routine activity for conducting virtually any business. Math is in no material way a
different kind of economic activity than what any person must do in any business to
get through the day. Applicant argues that the term refers broadly “to the series of

16 Id. at 21 TTABVUE 25.
17 Id. at 21 TTABVUE 22.
18 Opposer’s Brief, p. 7 (23 TTABVUE 12).
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calculations that go into consumer betting, the pooling of investor resources,
investment decisions, and payouts,”19 but when a potential client encounters the
mark MATH VENTURE PARTNERS, the mark, and the term “Math” in the mark,
do not immediately impart any information about the venture capital management
services with the required degree of particularity, see, e.g., The Goodyear Tire &
Rubber Co. v. Cont’l Gen. Tire, Inc., 70 USPQ2d 1067, 1069 (TTAB 2003) (to be merely
descriptive, the “immediate idea must be conveyed forthwith with a degree of
particularity.”) (internal quotation and quotation marks omitted), and consumers
would not understand the mark’s meaning without the exercise of some degree of
thought or imagination.
Opposer has failed to make a prima facie case that the mark MATH VENTURE
PARTNERS for “venture capital management” is merely descriptive because MATH
VENTURE PARTNERS does not project any readily understood meaning or directly
and immediately convey an impression or understanding of a key feature or attribute
of venture capital management services with the required degree of particularity. See
The Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 216 USPQ 11, 18 (7th Cir.
1982) (THE MONEY STORE for money lending services is suggestive because the
mark does not convey the essence of the business, money lending); Decatur Fed. Sav.
and Loan v. Ass’n Peach State Fed. Sav. and Loan Ass’n, 203 USPQ 406, 411 (N.D.
Ga. 1978) (SAVINGS SHOP suggestive of savings and loan association services
rendered out of small booths in shopping malls because it is an uncommon term). See

19 Id.
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also In re Crocker Nat’l Bank, 223 USPQ 152, 153 (TTAB 1984) (WORKING
CAPITAL ACCOUNT for “banking services” not merely descriptive because “working
capital” “either has no precise meaning when applied to applicant’s banking services
or an entirely incongruous one.”); In re TMS Corp. of the Americas, 200 USPQ 57, 59
(TTAB 1978) (THE MONEY SERVICE for electronic fund transfers is not merely
descriptive because it falls short of describing applicant’s services with any degree of
particularity; in other words, it “does not directly or indirectly convey any vital
purpose.”); In re Southern Nat’l Bank of N.C., 219 USPQ 1231, 1232 (TTAB 1983)
(MONEY 24 not merely descriptive of automatic teller machines providing money on
a 24 hour-a-day basis because it involves an element of incongruity or incompleteness
which an individual encountering the mark must interpret to arrive at the conclusion
that one can access his or her money by use of applicant’s services on a twenty-four
hour-a-day basis).
Decision: The opposition is dismissed.