Pacific Whale Foundation

Trademark Trial and Appeal Board

Dec 18, 2020

87891333 (T.T.A.B. Dec. 18, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: December 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
_____

In re Pacific Whale Foundation
_____

Serial Nos. 87891322, 87891333, 87891351, and 87891363
_____

Rebecca O. Filipović and Shannon S. Sheldon of McKeon Sheldon Mehling LLLC,
for Pacific Whale Foundation.
John T. Billings, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Cataldo, Bergsman, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Pacific Whale Foundation (“Applicant”) seeks registration on the Principal
Register of the following marks:
1. PACIFIC WHALE FOUNDATION (in standard characters; FOUNDATION
disclaimed);1

1 Application Serial No. 87891322, filed on April 24, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming December 9,
1980 as both the date of first use and the date of first use in commerce for all the identified
classes of services.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 2 -
2. (FOUNDATION disclaimed);2
3. (FOUNDATION disclaimed);3 and
4. (FOUNDATION disclaimed)4.
Each of Applicant’s applications identify the following services:
Promoting the public awareness of the need for marine wildlife
conservation; charitable services, namely, organizing and developing
projects to promote awareness of ocean and marine wildlife
conservation; promoting public awareness of environmental protection,

2 Application Serial No. 87891333, filed on April 24, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming August 26,
2016 as both the date of first use and the date of first use in commerce for all the identified
classes of services. The description of the mark reads as follows: “The mark consists of a
stylized image of a whale tail behind which is a solid square with curved edges all above the
literal element ‘PACIFIC’, which is directly above the literal element ‘WHALE’, which is
directly above a horizontal line separating the literal elements ‘PACIFIC WHALE’ from the
literal element ‘FOUNDATION’, all equally justified.” Color is not claimed as a feature of the
mark.
3 Application Serial No. 87891351, filed on April 24, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming December
31, 2010 as both the date of first use and the date of first use in commerce for all the identified
classes of services. The description of the mark reads as follows: “The mark consists of a
stylized image of a whale tail, behind which is a solid square with curved edges, all of which
is to the left of the literal element ‘PACIFIC WHALE’ situated above a horizontal line and
the literal element ‘FOUNDATION’ below said horizontal line.” Color is not claimed as a
feature of the mark.
4 Application Serial No. 87891363, filed on April 24, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming August 26,
2016 as both the date of first use and the date of first use in commerce for all the identified
classes of services. The description of the mark reads as follows: “The mark consists of a
stylized image of a whale tail behind which is a solid square with curved edges followed by
the literal element ‘PACIFIC WHALE FOUNDATION’.” Color is not claimed as a feature of
the mark.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 3 -
ocean conservation and marine wildlife conservation; promoting public
interest and awareness of ocean and marine wildlife conservation and
protection, ocean and marine environmental sustainability practices,
and of the need for and benefits of education, science and research
relating to ocean and marine ecosystems; retail store services featuring
souvenirs, gifts, educational materials and toys relating to ocean and
marine wildlife conservation, in International Class 35;

Charitable fundraising services by means of organizing and conducting
projects to promote awareness of whale and ocean conservation, in
International Class 36;

Conducting education exhibitions in the field of ocean and marine
wildlife conservation; education services, namely, providing classes,
seminars and workshops in the field of environmental protection, ocean
and marine wildlife conservation and marine biology; educational
services, namely, providing symposiums and conferences in the field of
the conservation and preservation of the environment and of nature;
organization of educational symposiums and conferences on the topic of
environmental conservation and preservation; production of videos
featuring environmental preservation and conservation issues;
photography; ocean photography; marine wildlife photography, in
International Class 41; and

Scientific research and consultation services in the field of marine
wildlife conservation; scientific consulting services concerning
conservation of reefs and development of man-made marine habitat;
scientific research and consultation in the field of marine life
environment; scientific research in the fields of whale and ocean
conservation; scientific research relating to environmental protection;
scientific research in the field of environmental conservation and
preservation and preparing related expert reports and evaluations;
providing scientific information and online scientific information about
environmental conservation and preservation, in International Class 42.

For each application, Applicant claims acquired distinctiveness under Section 2(f)
of the Trademark Act as to the wording “PACIFIC WHALE FOUNDATION” in its
entirety.
The Trademark Examining Attorney refused registration of each of Applicant’s
marks under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 4 -
Applicant’s failure to comply with the requirement to disclaim WHALE
FOUNDATION because it is purportedly generic of Applicant’s identified services
within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
and is thus an unregistrable component of the mark.
When the Examining Attorney made the refusals final, Applicant appealed. The
appeals are fully briefed. After Applicant submitted its appeal briefs, the Board
granted Applicant’s motion to consolidate the appeals.5 We therefore decide all four
appeals in a single opinion. For the reasons explained below, we reverse the refusals
to register.6
I. Disclaimer Requirement - Applicable Law
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C.
§ 1056(a). A “disclaimer” is a statement that an applicant does not claim exclusive
rights to an unregistrable component of a mark:
[A] disclaimer of a component of a composite mark amounts merely to
a statement that, in so far as that particular registration is concerned,
no rights are being asserted in the disclaimed component standing
alone, but rights are asserted in the composite; and the particular
registration represents only such rights as flow from the use of the
composite mark.

5 4 TTABVUE in application Serial No. 87891322; 5 TTABVUE in application Serial No.
87891322.
6 Unless otherwise specified, all TTABVUE and Trademark Status and Document Retrieval
(“TSDR”) citations reference the docket and electronic file database for application Serial No.
87891322. All citations to the TSDR database are to the .pdf version of the documents.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 5 -
Sprague Elec. Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954).
Merely descriptive or generic terms are unregistrable under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1), and therefore are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer requirement is grounds for
refusal of registration. In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re
National Presto Indus. Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool
Indus. Inc., 157 USPQ 114 (TTAB 1968).
II. Genericness
A generic term “is the common descriptive name of a class of goods or services.”
Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827,
1830 (Fed. Cir. 2015) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). There is a two-part test used to
determine whether a designation is generic: (1) what is the genus (class or category)
of goods or services at issue?; and (2) does the relevant public understand the
designation primarily to refer to that genus of goods or services? Princeton Vanguard,
114 USPQ2d at 1803 (citing Marvin Ginn, 228 USPQ at 530); Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014). “The
critical issue in genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question.” Marvin Ginn, 228 USPQ at 530. The USPTO must
demonstrate a term is generic by “clear evidence” of generic use. See In re Hotels.com
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 6 -
LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) .
Any term that the relevant public uses or understands to refer to the genus of
services, or a key aspect or subcategory of the genus, is generic. Royal Crown Co., Inc.
v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018). “[A]
term is generic if the relevant public understands the term to refer to part of the
claimed genus of goods or services, even if the public does not understand the term to
refer to the broad genus as a whole.” In re Cordua Rests. LP, 110 USPQ2d 1227, 1229
n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016)
(holding CHURRASCOS, a word that is generic for a type of grilled meat, to be generic
for restaurant services because it referred to a key aspect of those services); see also
In re Nordic Naturals, Inc., 755 F.3d 1340, 111 USPQ2d 1495 (Fed. Cir. 2014)
(CHILDREN’S DHA generic for DHA supplements for children); In re Northland
Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT
generic for ring cake mixes, i.e., the subcategory “bundt cakes.”).
“Evidence of the public’s understanding of the term may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers and other publications.” Royal Crown, 127
USPQ2d at 1046 (quoting Merrill Lynch, 4 USPQ2d at 1143); see also Cordua, 118
USPQ2d at 1634; Princeton Vanguard, 114 USPQ2d at 1830; In re Reed Elsevier
Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (finding third-
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 7 -
party websites competent sources for determining what the relevant public
understands mark to mean).
A. What is the Genus of the Services at Issue?

Our first task is to determine the proper genus. In defining the genus, we
commonly look to the identification of goods or services in the application. See Reed
Elsevier, 82 USPQ2d at 1380; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551, 1552 (Fed. Cir. 1991) (a proper genericness inquiry focuses on the identification
set forth in the application or certificate of registration); In re Serial Podcast, LLC,
126 USPQ2d 1061, 1063 (TTAB 2018) (proper genus generally is “set forth by the
recitation of services in each subject application.”). The Examining Attorney argues
that the genus of Applicant’s services is promoting awareness in the field of “ocean
and marine wildlife conservation” and “ocean and marine ecosystems”, charitable
fundraising in the field of “whales and ocean conservation”, educational programs in
the field of “environmental protection, ocean and marine wildlife conservation, and
marine biology” and scientific research and consultation in the fields of “whale and
ocean conservation,” “marine wildlife conservation,” and “environmental protection.”7
Applicant argues that the relevant genus is “ocean and marine wildlife conservation,
research, and education”, not “whale conservation, research, and education” because
the subject matter of Applicant’s services relates to “ocean and marine wildlife as a

7 Examining Attorney’s Brief, p. 7; 8 TTABVUE 8.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 8 -
holistic and all-encompassing environmental endeavor” and because the services do
not relate “solely or even specifically to whales.”8
We agree with Applicant’s broader definition of the genus of Applicant’s identified
services. Accordingly, we find that the appropriate genus of services at issue is the
promotion of ocean and marine wildlife conservation and the scientific research and
consultation, educational, and charitable fundraising services associated therewith.
However, as properly noted by the Examining Attorney, a designation may
nonetheless be deemed generic if the relevant public understands the designation to
refer to a subcategory or key aspect of a good or service. Royal Crown Co., 127
USPQ2d at 1046-47; Cordua, 118 USPQ2d at 1638.
We add that, inasmuch as neither the Examining Attorney nor Applicant raised
arguments specifically attributed to the different classes in each application, we will
not separately address each class of services but rather refer to them collectively as
identified above. In doing so, we nevertheless base our analysis and conclusion as to
each of the classes on the services as identified.
B. Who are the Relevant Purchasers?
The second part of the test is whether the relevant public understands the
designation Applicant seeks to register primarily refers to that genus of goods or
services at issue. “The relevant public for a genericness determination is the
purchasing or consuming public for the identified goods [or services].” Frito-Lay N.
Am., Inc. v. Princeton Vanguard LLC, 124 USPQ2d 1184, 1187 (TTAB 2017) (citing

8 Applicant’s Appeal Brief, p. 11; 6 TTABVUE 12.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 9 -
Magic Wand, 19 USPQ2d at 1552); Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108
USPQ2d 1341, 1351 (TTAB 2013). Because there are no restrictions or limitations to
the channels of trade or classes of consumers for Applicant’s identified services, the
relevant consuming public consists of the public at large, namely, ordinary consumers
who are interested in ocean and marine wildlife conservation, as well as those
customers interested in charitable fundraising, educational services, and scientific
research and consultation services provided in association with the promotion of
ocean and marine wildlife conservation.
C. How does the Relevant Public Perceive the Designation WHALE
FOUNDATION?

The Examining Attorney argues that the designation WHALE FOUNDATION is
the generic name of a specific subcategory of Applicant’s identified services, namely,
the “conservation, research, and education on whales.”9 In support of his argument,
the Examining Attorney submitted the evidence summarized below:
1. Dictionary Definitions
The constituent elements of the wording WHALE FOUNDATION are defined as
follows:10
 “whale” is defined as “any of various marine mammals of the order
Cetacea;” and

 “foundation” is defined as “an institution established with an endowment,
for example a research body or charity.”

9 Examining Attorney’s Brief, p. 7, 14 TTABVUE 8.
10 December 12, 2016 Office Action, TSDR pp. 11-15 and 19-20 (www.merriam-webster.com).
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 10 -
2. Plain Copies of Third-Party Registrations11
The Examining Attorney submitted nine live, third-party registrations, all issued
on the Supplemental Register, where a qualifying term(s) preceding the term
FOUNDATION has/have been disclaimed along with the word FOUNDATION. All
nine registered marks are in standard character form. The third-party registrations
are identified below:12
 FAMILY FUNERALHOME FOUNDATION (Reg. No. 2523554)
(FUNERALHOME FOUNDATION disclaimed) for, among other
things, “educational services, namely, providing conferences,
seminars and workshops in the fields of estate settlement, funeral
services, and bereavement care”;

 NATIONAL BREAST CANCER FOUNDATION, INC. (Reg. No.
2576826) (BREAST CANCER FOUNDATION, INC. disclaimed) for,
among other things, “Promoting public awareness of the need for
prevention, detection and elimination of cancer by encouraging
women to perform self-examinations of their breasts, obtain clinical
examinations, and mammographies”;

 THE LEXINGTON CANCER FOUNDATION, INC. (Reg. No.
4270118) (CANCER FOUNDATION, INC. disclaimed) for
“Charitable fundraising to support the fight against cancer and
improving the quality of healthcare for cancer patients”;

 INTERNATIONAL ANTI-POACHING FOUNDATION (Reg. No.
4787607) (ANTI-POACHING FOUNDATION disclaimed) for
“Charitable fundraising in aid of animal wildlife conservation”;

 BAINUM FAMILY FOUNDATION (Reg. No. 5083936) (FAMILY
FOUNDATION disclaimed) for, among other things, “Research in

11 October 15, 2019 Final Office Action, TSDR pp. 24-49.
12 In its Appeal Brief, Applicant refers to various office actions purportedly issued during the
prosecution of some of the underlying applications of the third-party registrations submitted
by the Examining Attorney. See Applicant’s Brief, p. 20; 6 TTABVUE 21. Applicant, however,
did not submit copies of these purported office actions prior to appeal. Thus, we give no
consideration to any arguments presented by Applicant based on these purported office
actions.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 11 -
the fields of medical and health-related services, including nutrition
services, health and medical services, mental health counseling
services, and developmental and behavioral health services for at-
risk and indigent individuals”;

 TEXAS WINE FOUNDATION (Reg. No. 5352308) (WINE
FOUNDATION disclaimed) for “Charitable foundation services,
namely, providing fundraising activities and financial support for the
Texas wine and grape industry”;

 AMERICAN VETERANS FOUNDATION (Reg. No. 5273101)
(VETERANS FOUNDATION disclaimed) for, among other things,
“Promoting public awareness of veterans and veterans issues” and
“Charitable foundation services, namely, providing financial support
to veterans for payment of housing bills, food bills, clothing bills and
medical bills”;

 MICHIGAN ANIMAL WELFARE FOUNDATION (Reg. No.
5619342) (ANIMAL WELFARE FOUNDATION disclaimed) for
“Charitable fundraising services, by means of organizing and
conducting events to benefit animal rescue organizations”; and

 LAMPIDIS CANCER FOUNDATION (Reg. No. 5735744) (CANCER
FOUNDATION disclaimed) for “Providing a website featuring
information in the field of cancer research”.

3. Internet Articles and Blogs
 The Ocean Update: whalesandmarinefauna.wordpress.com (“Scuba
Junkie Marine Beach Resort marine biologist Ric Owen said experts
from universities and whale foundations believed the mammal
could be breeding in deep waters bear Semporna”);13

 Whales Need Saving: www.whalesneedsaving.weebly.com/, (“With
the money we will donate to other whale foundations and we will
adopt whales and help them.”);14

 Redbubble: www.redbubble.com, an online retailer (50% of all
proceeds go to whale foundations);15

13 March 12, 2019 Office Action, TSDR p. 5.
14 Id., TSDR p. 6.
15 Id., TSDR pp. 7-8.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 12 -

 TripAdvisor: www.tripadvisor.com/Attraction_Review-g60942-
d108756-Reviews-Pu_ukohola_Heiau-
Kawaihae_Island_of_Hawaii_Hawaii.html (“When we stopped in, a
whale foundation has set up shop with binoculars so we could see
the whales breaching off the coast.”);16

 Cruise Critic blog entry – www.boards.cruisecritic.com (“But if we do
have to be at the whale foundation 45 minutes early, we won’t have
time for much but lunch before whale watching.”);17

 Flock Call: www.flockcall.com (“I always loved animals as a
youngster, and I even wrote to and sponsored whale foundations,
but I found my passion for parrots when I was 18 years old, after
bringing a Green-cheeked Conure into my home — and soon after,
an African grey.”);18

 Gyuha Bau’s Blog: www.ghb0219.blogspot.com (“Recently, whales
are in danger. Thoughtless whaling is threatening whales and it is
causing the extinction of many whale species. You can donate money
to help these whales. There are many whale foundations you can
donate to.”);19

 MavicPilots: www.mavicpilots.com (“There seems to be a fuzzy line
on drones and whale watching and I didn’t want to be scrutinized by
anyone by posting any of those. Btw, I was on the beach next to the
whale foundation located here.”);20

 Gramho: www.gramho.com (“Also, “fantasticto know that all money
from excursions goes to whale foundations”);21

 Sailing Anarchy, www.forums.sailinganarchy.com (These
environmentalists and whale foundations saw us as the anti-
christ. Funny thing is, one of the more well known whale

16 Id., TSDR pp. 9-10.
17 Id., TSDR p. 14.
18 Id., TSDR p. 15.
19 Id., TSDR pp. 16-17.
20 Id., TSDR pp. 11-12.
21 October 15, 2019 Final Office Action, TSDR p. 21.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 13 -
foundations hit 3 whales in ’09 on their whale watching vessels.”);22
and

 The Associated Press State & Local Wire: An article titled “Whale
foundation opposes carbon dioxide experiment off Kauai” (The
Pacific Whale Foundation is protesting a proposed experiment off
Kauai that would involve pumping 20 metric tons of pressurized
carbon dioxide gas into the depths of the Pacific Ocean over a two-
week period. According to Dwayne Meadows, direct of research at the
whale foundation, the public also spoke against the proposed
dumping of carbon dioxide off Keahole Point on the Big Island in
1999).23

4. Excerpts from Applicant’s website24

In addition to the foregoing evidence, the Examining Attorney maintains that
Applicant’s own website demonstrates that Applicant consistently uses the term
WHALE to identify a central feature and key aspect of its identified services. The
Examining Attorney relies on the following excerpts from Applicant’s website to
support his argument:
Founded by Greg Kaufman in 1980 as a 501(c)(3) nonprofit organization
dedicated to saving the world’s whales from extinction, PWF has
now grown into a social enterprise that offers fee-based programs and
services through PacWhale Eco-Adventures to help fund its non-profit
work”; “Though our efforts, millions have learned about whales and other
marine life, like dolphins, Hawaiian monk seals, sea turtles, and the
endangered Hawaiian population of false killer whales.

22 Id., TSDR pp. 17-18.
23 Id., TSDR pp. 22-23. The Examining Attorney also submitted excerpts from the websites
www.countryscapesart.com and www.legalrollercoaster.com which display the wording “save
the whale foundations” and “killer whale foundations,” respectively. See id., TSDR pp. 15-16
and 19-20. Because these two excerpts do not use the designation “whale foundation”
standing alone, we do not find them probative in our analysis and, therefore, we have given
them no consideration.
24 Id., TSDR pp. 12-14.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 14 -
Our vision to be the people’s environmental organization for the protection
of the world’s whales, dolphins, and other marine animals living wild in
their natural habitat.

Discussing the founding of applicant’s foundation being specifically related
to whales; “He committed his new organization to educating the public,
from a scientific perspective, about whales and their ocean habitat.”

Discussing Applicant’s studies, all of which relate to the study of whales
specifically; “Pacific Whale Foundation (PWF) is a pioneer in the use of non-
invasive scientific techniques to gather data about humpback whales.”

The Examining Attorney therefore concludes that when the term WHALE is
used in association with the word FOUNDATION, consumers will immediately
perceive the term WHALE as identifying a key aspect and central feature of
Applicant’s identified services.
Based on all the evidence he has submitted, the Examining Attorney maintains
that he has established by clear evidence that the designation WHALE
FOUNDATION is the generic name of Applicant’s identified services.
In challenging the refusals, Applicant argues that the Examining Attorney
cites to no evidence of any instance in which Applicant has used its mark or the
term WHALE FOUNDATION in a generic manner.25 Additionally, Applicant
maintains that the Examining Attorney ignored the evidence submitted by
Applicant during the prosecution of its applications that purportedly
demonstrates that the wording “pacific whale” in its involved marks has acquired
distinctiveness.26 Moreover, Applicant submitted countervailing third-party

25 Applicant’s Appeal Brief, p. 9; 5 TTABVUE 10.
26 Id. at pp. 8-10; 5 TTABVUE 9-11.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 15 -
registrations for marks that use descriptive terms preceding the word
FOUNDATION where the Office found only the term FOUNDATION to be
generic, despite the preceding descriptive term being a subcategory or even
directly relating to the services listed in the registrations. The registrations are
as follows:27
 AMERICAN HORSE FOUNDATION (Reg. No. 2215594 –
Supplemental Register) (FOUNDATION disclaimed) for, among
other things, “association services, namely, promoting equine related
interests;”

 INTERNATIONAL CRANE FOUNDATION (Reg. No. 1843274 –
Principal Register) (Section 2(f) as to INTERNATIONAL RHINO
FOUNDATION; FOUNDATION disclaimed) for “promoting the
public awareness and interest in the field of crane preservation;
research in the field of crane preservation; preservation of cranes by
such means as crane habitat conservation and restoration.”

 INTERNATIONAL RHINO FOUNDATION and design (Reg. No.
4719554 – Principal Register) (Section 2(f) as to “INTERNATIONAL
RHINO FOUNDATION; FOUNDATION disclaimed) for, among
other things, “promoting public awareness of the problems affecting
the survivability of all species of rhinoceros and conservation efforts
related thereto” in Class 35 and “charitable fundraising services,

27 September 11, 2019 Response to Office Action, TSDR pp. 20-38. Applicant also submitted
a copy of Reg. No. 5521486 issued on the Supplemental Register for the mark OREGON
WILDLIFE FOUNDATION (OREGON disclaimed) for “promoting public interest and
awareness in the fields of conservation and management of fish, wildlife, plants, and other
natural resources.” Because this registration includes a disclaimer of OREGON, we find that
it is not probative in our analysis and, therefore, we have given it no consideration.
Also, for the first time in its appeal brief, Applicant referenced additional registrations for
the marks THE OCEAN FOUNDATION, THE GEORGIA SEA TURTLE CENTER, and
REEF CHECK and identified the corresponding services, as well as the registration numbers,
for these purported registered marks. See Applicant’s Appeal Brief, p. 13 n. 3; 6 TTABVUE
14. Normally, a reference to or list of registrations submitted with an appeal brief would not
be considered. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). However, the Examining
Attorney did not object to this untimely evidence in his brief. Therefore, we will consider
Applicant's referenced registrations although the probative weight to be given to these
referenced registrations without underlying copies of the registrations themselves is quite
limited.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 16 -
namely, fundraising for groups and programs promoting the
preservation and conservation of rhinos” in Class 36.

 NATIONAL FISH AND WILDLIFE FOUNDATION and design
(Reg. No. 4522682 – Principal Register) (Section 2(f) as to
NATIONAL FISH AND WILDLIFE; FOUNDATION disclaimed) for,
among other things, “promoting public interest and awareness in the
fields of conservation and management of fish, wildlife, plants, and
other natural resources.”

 CEDAR TREE FOUNDATION (Reg. No. 3258483 – Principal
Register) (FOUNDATION disclaimed) for “providing grants to non-
profit organizations in the fields of sustainable agriculture,
environmental education, and environmental health; providing
fellowships in environmental conservation and biodiversity
research.”

 FIRST RESPONDER CHILDREN’S FOUNDATION (Reg. No.
5515859 – Supplemental Register) (FOUNDATION disclaimed) for
“charitable foundation services, namely, providing fundraising
activities, fundraising events in the nature of holiday celebration
events, cinema events, and live theater events, funding,
scholarships, grants and/or financial assistance for the support and
education of children and families of first responders killed or
permanently disabled in the line of duty as well as facilitating
educational activities and programs created and operated by first
responders and their affiliates which benefit the education and
safety of children in their communities.”

 HOMEOWNERSHIP PRESERVATION FOUNDATION (Reg. No.
5564326 - Principal Register) (Section 2(f) as to HOMEOWNERSHIP
PRESERVATION FOUNDATION; FOUNDATION disclaimed) for
“providing counseling services in the field of mortgage debt
management, and debt and credit counseling to consumers facing
foreclosure that results in promoting, preserving and expanding
homeownership.”

 REINING HORSE SPORTS FOUNDATION (Reg. No. 3741953 –
Principal Register) (Section 2(f) as to REINING HORSE SPORTS
FOUNDATION; FOUNDATION disclaimed) for, among other
things, “promoting public awareness of the history of the sport of
reining; association services, namely, promoting the interests of
reining horse enthusiasts; Advertising services, namely, promoting
the sport of reining.”
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 17 -

 THE HEART FOUNDATION (Reg. No. 5362591 – Principal
Register) (Section 2(f) as to THE HEART FOUNDATION;
FOUNDATION disclaimed) for, among other things, “charitable
fundraising services for promoting research, education and other
activities relating to the prevention, detection, treatment, and causes
of heart disease; Charitable fundraising services to support the
prevention, detection, treatment, and causes of heart disease.”

Based on the foregoing third-party registration evidence, Applicant submits that
the designation WHALE FOUNDATION is not generic for its identified services and
should not be disclaimed.28
In an attempt to rebut the Examining Attorney’s argument that , based on
Applicant’s own website, consumers will immediately perceive the term WHALE as
identifying a key aspect and central feature of Applicant’s identified services,
Applicant counters the argument by noting that the Examining Attorney ignored
other important details on its website that explains its services more fully.
Specifically, Applicant points to the following language on its website :29
As leaders in the development of whale watching, Pacific Whale
Foundation has been acutely aware of the ever-changing nature of the
relationship between humans and marine mammals and has
developed a broad, holistic approach to marine tourism.

For the past 40 years, our researchers have conducted studies and
collected data to better understand marine life and how to best protect
it…

We take pride in knowing that we have been at the forefront of educating
the public, from a scientific perspective, about marine life and the
world in which we live.

28 Applicant’s Appeal Brief, p. 14; 5 TTABVUE 15.
29 Id. at pp. 15-16; 6 TTABVUE 16-17 (emphasis added by Applicant).
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 18 -
These are just a few of the ways our operations help to fulfill our
mission to protect the ocean and inspire environmental
stewardship.

(emphasis by Applicant).
Finally, Applicant argues that the Internet evidence submitted by the Examining
Attorney that references use of the designation “whale foundation” is “woefully
inadequate to support a finding of genericness.”30
We address each of Applicant’s arguments in turn. First, Applicant’s argument
regarding the failure of the Examining Attorney to submit evidence demonstrating
that Applicant uses the designation “whale foundation” generically for its identified
services is unpersuasive. The fact that Applicant itself does not employ the phrase
“whale foundation,” standing alone, in its advertising material is not fatal in the
determination of whether the phrase is generic for Applicant’s identified services. As
noted above, evidence of the public’s understanding of the term may be obtained from
any competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers and other publications.
Second, Applicant’s argument that the Examining Attorney ignored Applicant’s
submission of evidence demonstrating that the wording “pacific whale” in Applicant’s
marks has acquired distinctiveness is unavailing. Applicant did not submit any
evidence during the prosecution of its applications that would demonstrate that the
wording “pacific whale,” standing alone, has acquired distinctiveness. Instead,
Applicant’s Section 2(f) claim was made as to the wording PACIFIC WHALE

30 Id. at p. 19; 6 TTABVUE 20.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 19 -
FOUNDATION as a whole,31 which was accepted by the Examining Attorney.32 Thus,
any reliance by Applicant that the wording “pacific whale” has acquired
distinctiveness is misplaced.
Third, the fact that Applicant has submitted other portions of its website to
provide a fuller description of the services provided under its involved mark does not
detract from the fact that Applicant’s services include , among other things, the
promotion of the awareness of whale conservation. This especially holds true since
the service of promoting whale conservation is set forth in Applicant’s recitation of
services.
Finally, we turn to Applicant’s argument that the evidence submitted by the
Examining Attorney is inadequate to support a finding of genericness. We once again
note that it is beyond dispute that “the burden of showing that a proposed trademark
[or service mark] is generic remains with the Patent and Trademark Office.” Merrill
Lynch, 4 USPQ2d at 1143. Moreover, it is incumbent upon the Examining Attorney
to make a “substantial showing … that the matter is in fact generic.” Id. Indeed, this
substantial showing “must be based on clear evidence of generic use.” Id. Thus, “a
strong showing is required when the Office seeks to establish that a term is generic.”
In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994).
In this case, the Examining Attorney submitted excerpts from only 11 online
articles and blogs we may consider, one of which refers specifically to Applicant. We

31 February 21, 2019 Response to Office Action, Declaration of Kristie Wrigglesworth,
Acting Executive Director of Applicant; TSDR pp. 15-18.
32 March 12, 2019 Office Action; TSDR p. 2.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 20 -
have said before that it is not necessary that an Examining Attorney submit all
stories found, especially where there are a large number of them. However, a
sufficient number of them should be made available to enable a determination to be
made as to the meaning of the term in question to the relevant public. There was no
indication from the Examining Attorney that the submitted articles or blog postings
constitute a representative sample of the search results or the entirety of the search
results. In view thereof, we presume the Internet evidence submitted by the
Examining Attorney represents the entirety of the search results that supports the
refusals to register.
We find that these 11 articles/blog postings showing limited generic use of the
designation “whale foundation” are insufficient to demonstrate that the designation
is the generic name of Applicant’s identified services. See, e.g., Magic Wand v. RDB,
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991) (affirming dismissal of
petition to cancel registration of TOUCHLESS for automobile washing services,
based on Board’s finding that “the evidence demonstrates limited generic use of the
term ‘touchless’ before members of the relevant purchasing public”); In re Homes &
Land Publishing Corp., 24 USPQ2d 1717, 1718 (TTAB 1992) (finding RENTAL
GUIDE not generic for a real estate listing magazine for rental properties, where the
Examining Attorney submitted only dictionary definitions of “rental” and “guide” and
three articles using the term, one of which referred to applicant). We further note
that Applicant’s website itself does not employ the wording “whale foundation,”
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 21 -
standing alone.33 Finally, the countervailing third-party registration evidence
submitted by Applicant diminishes the probative value of the third-party registration
evidence submitted by the Examining Attorney.
Quite simply, based on this record, we find that the Examining Attorney has not
met his difficult burden of making the substantial or strong showing required to
establish by clear evidence that the designation WHALE FOUNDATION is generic
for Applicant’s identified services. At a minimum, we have doubts, on this limited
record, as to whether relevant consumers would perceive the designation WHALE
FOUNDATION as the generic name of Applicant’s identified services, and such
doubts on the issue of genericness should be resolved in Applicant’s favor. In re DNI
Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005); In re Waverly Inc., 27 USPQ2d
1620, 1624 (TTAB 1993).
Decision: The refusals to register Applicant’s involved marks based on the
requirement, made under Trademark Act § 6(a), for a disclaimer of the wording
WHALE FOUNDATION are reversed. Applicant’s application Serial Nos. 87891322,

33 Even though, as noted above, Applicant improperly argues that the wording “pacific
whale,” standing alone has acquired distinctiveness, it would be reasonable to conclude that
relevant consumers, upon viewing Applicant’s involved mark, would perceive the wording
“pacific whale” as a unitary element of the mark, particularly since in two of the involved
marks the wording PACIFIC WHALE appears above the term FOUNDATION separated by
a horizontal line. In other words, consumers, who know the services offered under Applicant’s
mark, may view Applicant’s marks as conveying that Applicant is a foundation which
provides services, in part, that concern Pacific whales specifically and not whales in general.
Such a reasonable perception appears to undermine the Examining Attorney’s position that
“whale foundation” is the generic name of Applicant’s identified services.
Serial Nos. 87891322, 87891333, 87891351, and 87891363
- 22 -
87891333, 87891351, and 87891363 will proceed forward with the already disclaimed
term FOUNDATION in each application.