Paper No. 15
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pallotta Teamworks
________
Serial No. 75/929,463
_______
Elena Muravina of Rosenfeld, Meyer & Susman, LLP for
Pallotta Teamworks.
Linda M. Estrada, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney)
_______
Before Hairston, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark KIDSMARCH, in typed form, for services recited
in the application as “charitable fundraising services,
namely, walk-a-thons for participation by children and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/929,463
2
their parents benefiting foster care and adoption placement
services organizations.”1
The Trademark Examining Attorney has finally refused
registration of the mark, on the ground that it is merely
descriptive of the recited services and thus unregistrable
under Trademark Act Section 2(e)(1). Applicant appeals
that final refusal.
Applicant and the Trademark Examining Attorney filed
main briefs, and applicant filed a reply brief. No oral
hearing was requested. Having carefully considered all of
the evidence and arguments presented by applicant and by
the Trademark Examining Attorney, we find that the mark is
merely descriptive, and we therefore affirm the refusal to
register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
1 Serial No. 75/929,463, filed February 28, 2000. The
application was filed on the basis of intent-to-use, but
applicant filed an Amendment to Allege Use on November 9, 2001,
in which April 30, 2001 is alleged to be the date of first use of
the mark anywhere and the date of first use of the mark in
commerce. As originally filed, the drawing page in the
application depicted the mark as two words, i.e., KIDS MARCH.
When applicant filed its Amendment to Allege Use, it also
requested amendment of the drawing to conform the mark to the
mark as used on applicant’s specimens of use. The Trademark
Examining Attorney approved the amendment to the drawing, finding
that the amendment was not a material alteration of the mark as
originally filed.
Ser. No. 75/929,463
3
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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 those 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 591, 593 (TTAB 1979).
Finally, “[w]hether consumers could guess what the product
[or service] is from consideration of the mark alone is not
Ser. No. 75/929,463
4
the test.” In re American Greetings Corporation, 226 USPQ
365, 366 (TTAB 1985).2
Although applicant’s services, considered most
broadly, are “charitable fundraising services,” it is clear
from applicant’s recitation of services and from
applicant’s specimens of use that such fundraising is
accomplished by means of, and takes the specific form of,
“walk-a-thons for participation by children and their
parents.”3 That is, a significant characteristic, indeed a
2 Citing Stix Products, Inc. v. United Merchants and
Manufacturers, Inc., 295 F.Supp. 479, 160 USPQ 777 (S.D.N.Y.
1968), applicant argues instead that “[t]he test for determining
whether a mark is descriptive is if the term used in the mark is
descriptive to one who has never seen the product and does not
know what it is.” (Applicant’s main brief at 5.) However, that
test is not the law in proceedings before the Board, having been
expressly rejected by the predecessor of our primary reviewing
court in In re Abcor Development Corporation, supra. Applicant’s
arguments based on the Stix test are unavailing.
3 Applicant’s specimen brochure includes the following relevant
text:
What is KidsMarch? It’s an incredible new event for kids of
all ages and their parents. A two-day walk from La Canada to
Pasadena. It’s to help less fortunate children in foster care
find permanent happy homes. It’s a chance for kids to taste
the beauty of giving, and for the adults in their lives to
share in that discovery. Do I need to be a parent to
participate? No. You can do KidsMarch with any special child
in your life. Will the kids get tired? Maybe, but don’t
worry. The KidsMarch is designed to be challenging, so the
kids will feel like they’ve really accomplished something.
And if the going gets too tough, there will be plenty of wagon
and buggy transport for tired little feet. How do we get
ready for KidsMarch? Soon after you register, you’ll receive
information on walking, fundraising, and talking to your kids
about the event. Your children will receive our special
KidsMarch Kit for Kids, with cool tips written just for them.
And all of you will have full and unlimited access to our team
Ser. No. 75/929,463
5
key characteristic, of applicant’s services is that they
feature walk-a-thons which are designed for participation
by children. Applicant’s argument that the walk-a-thon is
not a significant feature of its services is wholly
unpersuasive. That this feature might not be the only
significant feature of applicant’s services is immaterial
to our analysis under Section 2(e)(1). See In re
H.U.D.D.L.E., supra; In re MBAssociates, supra.
KIDSMARCH, the matter applicant seeks to register,
immediately would be perceived as a combination of the
words KIDS and MARCH.4 Each of those words is merely
descriptive of the significant characteristic of
applicant’s recited services discussed above. KIDS is a
readily-understood synonym of “children,”5 and in the
context of applicant’s services (which is the only context
that matters in this case) it immediately and directly
of friendly expert coaches. Where do we camp out? Under the
stars at the Rose Bowl, in a kid-friendly version of our
amazing Mobile City. Imagine a huge slumber party filled with
primary-colored tents, an outdoor movie theater, plenty of
popcorn, marshmallows, hot chocolate, and acts of kindness
everywhere.
4 As noted supra at footnote 1, the original application drawing
depicted the mark as two words, i.e., KIDS MARCH. On its
specimens, applicant displays the mark as KidsMarch. See supra
at footnote 3.
5 The Trademark Examining Attorney has submitted dictionary
evidence showing that “kid” is defined, inter alia, as “a child”
or “a young person.” The American Heritage Dictionary of the
English Language (3d ed. 1992).
Ser. No. 75/929,463
6
conveys the information that the walk-a-thons applicant
produces under the mark are designed for participation by
children. That the term may have other meanings in other
contexts is immaterial to our analysis under Section
2(e)(1). In re Bright-Crest, Ltd., supra.
MARCH merely describes the walk-a-thon feature itself;
in the context of applicant’s charitable fundraising
services, it directly and immediately conveys the
information that the fundraising event produced and
conducted under the mark involves walking. The dictionary
evidence submitted by the Trademark Examining Attorney
shows that “march” is defined, inter alia, as “to
participate in an organized walk, as for a public cause.”6
We take judicial notice that another dictionary defines
“march,” in pertinent part, as a noun meaning “an organized
procession of demonstrators who are supporting or
protesting something,” and “marcher” as “one that marches;
esp : one that marches for a specific cause
.”7
Again, in the context of applicant’s recited services, it
6 The American Heritage Dictionary of the English Language (3d
ed. 1992).
7 Webster’s Ninth New Collegiate Dictionary, at 726 (1990). The
Board may take judicial notice of dictionary definitions. See,
e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); see also TBMP §712.01.
Ser. No. 75/929,463
7
is these definitions which are relevant; the fact that
“march” might have other meanings in other contexts is
immaterial to our Section 2(e)(1) analysis. In re Bright-
Crest, Ltd., supra.
These dictionary definitions of “march” as denoting an
organized walk for a cause, or participation in such a
walk, do not expressly make reference to fundraising. The
more common connotation of the term in this context likely
is that set forth in the second dictionary definition,
i.e., an “organized procession of demonstrators who are
supporting or protesting something,” i.e., a “protest
march.”8 However, it is not dispositive that applicant’s
fundraising event is not a “march” in the sense of “an
organized procession of demonstrators.” The evidence of
record shows that “march” also is often used descriptively
in the context of fundraising events such as the walk-a-
thon event applicant produces under the mark in question,
and that “march” and “walk-a-thon” often are used
interchangeably.
For example, the Trademark Examining Attorney has made
of record the results of her search of the Lexis/Nexis
8 Historical examples of which we take judicial notice include
the famous 1963 civil rights “March on Washington” and the recent
“Million Man March” and “Million Mom March.”
Ser. No. 75/929,463
8
electronic database (NEWS library, ALLNWS file) for news
articles in which the term “fundraising march” appeared.
The search retrieved 196 articles, twenty-one of which were
printed out and made of record by the Trademark Examining
Attorney. Excerpts from some of these articles demonstrate
the descriptive significance of “march” as used in
connection with fundraising events (emphasis added):
Organizers from CEUS plan a fundraising march
Sunday from 10 a.m. to 1:30 p.m. along
Bergenline Avenue in West New York and Union
City, with volunteers collecting donations as
they walk from First Street to 48th Street.
(The Record (Bergen County, NJ), January 16,
2001.)
Leslie Stoner, 36, of Reston, kept looking
around amazed early yesterday as she circled
the U.S. Capitol with thousands of marchers
raising money to fight colon cancer, the
disease that killed her father. …The assistant
principal of an elementary school lost her
father and brother-in-law to colon cancer and
said the fundraising march and concert made her
feel less alone in her grief. (Washington
Post, October 9, 2000.)
A fund-raising march is held every September
for the nonprofit program… (Chicago Sun-Times,
October 27, 2000.)
The Public School Foundation is seeking pledges
for its third annual Walk for Education fund-
raising march down Franklin Street on Sept. 18.
(The News and Observer (Raleigh, NC), September
6, 1999.)
The Walk for Education fund-raising march
starts at 3 p.m. today... Students have been
collecting donations since the end of August.
Ser. No. 75/929,463
9
Last year, the walk attracted more than 3,000
people and raised more than $45,000. (Chapel
Hill Herald, September 18, 1999.)
I am writing to express my disappointment in
your lack of coverage of the recent three-day
Avon fund-raising march for breast cancer
awareness… But there was no story about the
breast cancer march. Over the weekend,
approximately 1,900 men and women walked 55
miles from Bear Mountain to Central Park to
raise money for breast cancer awareness. (The
Record (Bergen County, NJ), September 2, 1999.)
HEADLINE: 300 walk for Simi Crisis Pregnancy
Center; Annual fund-raising march usually
brings in more than $16,000 to continue
services…
BODY: About 300 people went for a walk
Saturday in Simi Valley.… Their purpose was to
walk three miles to raise money for the Crisis
Pregnancy Center.… New to the event this year
were food, child-oriented games and musical
entertainment at the end of the walk. Ventura
County Star, March 28, 1999.)
Tomorrow: Annual fund-raising march for
Gettysburg. (The Washington Times, April 24,
1999.)
The charity contingent, calling itself the
River Rats, has been preparing since March for
a three-day, 60-mile fund-raising march against
breast cancer sponsored by Avon Products Inc.
(The Orange County Register, October 11, 1998.)
Like many Americans, Carol Becker believes in
charitable giving. She contributes to groups
that have helped members of her family and
participates regularly in fund-raising marches.
(Pittsburgh Post-Gazette, October 4, 1998.)
HEADLINE: Earth Day fund-raising march part of
national event to raise money for recreation
areas. (The Morning Call (Allentown, PA) April
13, 1998.)
Ser. No. 75/929,463
10
Inspired by a national march two years ago,
Sharon Green has decided to take a stand for
Carroll County’s children with a fund-raising
march tomorrow to Westminster’s City Hall Park.
…Green hopes the mile-long march through
downtown Westminster will focus attention on
children’s issues and raise money for two local
organizations. Participants are asked to seek
pledges. …The march, sponsored by Westminster
United Methodist Church, will begin at 11 a.m.,
rain or shine. (The Baltimore Sun, May 22,
1998.)
Millin adds that the recent non-profit fund-
raising marches and local service projects by
area colleges and the recent Make A Difference
Day emphasize the rising interest and
participation in volunteerism and service.
(Asheville Citizen-Times (Asheville, NC),
November 23, 1997.)
That commitment to his parents – and to the
fight against AIDS – will continue Sunday, when
Mr. Morrison participates in the Dallas AIDS
LifeWalk. It’s the second consecutive year
that he will join the annual fund-raising
march. (The Dallas Morning News, October 5,
1997.)
The Trademark Examining Attorney also made of record one of
the fifty articles retrieved by the search “children’s
march”:
Leah Grady is 12 years old and until recently
didn’t know homeless people existed.
Yesterday, however, she and 125 of her
classmates at the Connelly School of the Holy
Child in Potomac became social activists for an
afternoon, holding a three-mile march to raise
$3,500 to fight homelessness. The Potomac walk
was one of dozens this month involving a small
army of children in the Washington region. …The
children’s marches are meant to complement
Ser. No. 75/929,463
11
today’s main event: the 11th annual Help the
Homeless Walkathon… This year, organizers have
set a combined fund-raising goal of $3 million
for the walkathon and the related children’s
marches… (The Washington Post, November 2,
1998).
Finally, the Trademark Examining Attorney also
searched for articles in which the word “march” is used
descriptively in connection with walk-a-thon events
specifically. The search retrieved 579 such articles,
fourteen of which were made of record. Excerpts from some
of these articles are:
Encourage your employees to volunteer. …At
Charter, we encourage volunteers to participate
in the political campaigns of their choice,
march in AIDS and breast cancer walk-a-thons,
and generally involve themselves in the
communities we serve. (Multichannel News,
November 27, 2000.)
Preschoolers, teachers, and parents marched
around the Berkeley College campus on Garret
Mountain in West Paterson on Friday to raise
money and awareness for the fight against
cystic fibrosis. …As part of the march, the
children, joined by staff, parents, and
faculty, walked around the campus three times
to reach three-quarters of a mile. The walk-a-
thon ended with a picnic. (The Record (Bergen
County, NJ), June 17, 2000.)
Amy Eckelmann’s auburn hair dripped from
yesterday morning’s persistent rain, but the
12-year-old marched on against breast cancer
with the struggle of loved ones guiding her
steps. …Amy joined a rain-soaked troop of
about 300 people yesterday in the fifth annual
Mother’s Day walk-a-thon for breast cancer
Ser. No. 75/929,463
12
awareness and research… (Newsday (New York,
NY), May 11, 1998.)
Fifteen members of the Marines’ Detachment 2,
Allentown Communication company, march with
others through Lehigh Parkway during a walk-a-
thon for diabetes yesterday. (The Morning Call
(Allentown, PA), October 7, 1996.)
Students Who Care, which formed to sponsor the
march, plans to make the walk-a-thon an annual
event, but expects to walk for other causes
next year. (Sun-Sentinel (Fort Lauderdale),
September 3, 1996.)
We find that this evidence suffices to establish that
“march” is a merely descriptive term in the context of
fundraising services, especially in the context of
fundraising walk-a-thons such as applicant’s.
We also find that the two merely descriptive words
which comprise applicant’s mark, i.e., KIDS and MARCH, are
likewise merely descriptive when considered together. As
applicant notes, it is possible that two terms which in
themselves are merely descriptive may be combined into a
composite term which is not merely descriptive because it
is more than the sum of its parts; in such cases, combining
or juxtaposing the two descriptive terms may result in an
inventive, incongruous or otherwise inherently distinctive
new composite. However, this is not such a case.
Applicant argues that its combining of KIDS and MARCH into
KIDSMARCH creates a mark with a new, different, and
Ser. No. 75/929,463
13
incongruous commercial impression, but applicant never
explains specifically what that new commercial impression
is, or why the composite is any less merely descriptive
than the two words are when considered separately. We find
that there is nothing incongruous, inventive or distinctive
about combining KIDS and MARCH into KIDSMARCH, where that
composite is used in connection with fundraising services
featuring a walk-a-thon in which kids march.
Nor are we persuaded by applicant’s argument that
KIDSMARCH is an inherently distinctive “coined term.”
Instead, we find that KIDSMARCH is the legal equivalent of
the merely descriptive phrase KIDS MARCH; applicant’s
compression of the two words into a single word does not
change the commercial impression or create any new or
different meaning. It is not dispositive that the term
does not appear in the dictionary, or that applicant may be
the first or only user of the term. See, e.g., In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983).9
9 Thus, we accord little probative value to the declaration of
applicant’s counsel’s paralegal Bryan J. Armstrong, in which he
avers that he searched the Lexis/Nexis database for references to
“kidsmarch” and retrieved only two articles, both of which were
about applicant’s services. Likewise immaterial is his
contention that his search of the Lexis/Nexis database for
references to “kids march” retrieved ninety-seven articles, only
fifteen of which “made reference to the searched terms in the
context of a march for a cause,” with the remainder of the
Ser. No. 75/929,463
14
In summary, and for the reasons discussed above, we
find that the evidence of record suffices to establish that
KIDSMARCH is merely descriptive of the services recited in
the application, and that refusal of registration under
Trademark Act Section 2(e)(1) is proper. In reaching this
conclusion, we have carefully considered all of applicant’s
arguments to the contrary (including those not specifically
mentioned in this opinion), but we find them unpersuasive.
Decision: The refusal to register is affirmed.
articles displaying “kids march” either as an incidental
juxtaposition of the two words or referring to the two words “in
terms of their common meanings.” Uses of the words in contexts
unrelated to applicant’s recited services is immaterial to our
analysis. In re Bright-Crest Corp., supra. Moreover, none of
the retrieved articles was attached to his declaration or
otherwise made of record, further diminishing or negating the
probative value of the declaration.
