The Arthritis Foundation, Inc.

Trademark Trial and Appeal Board

Aug 8, 2003

No. 76296618 (T.T.A.B. Aug. 8, 2003)

Mailed: August 8, 2003
Paper No. 13
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re The Arthritis Foundation, Inc.
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Serial No. 76/296,618
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Edward M. Prince and Wendy L. Robertson of Alston & Bird
LLP for The Arthritis Foundation, Inc.
Elizabeth J. Winter, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
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Before Simms, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
The Arthritis Foundation, Inc. (applicant), a Georgia
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark ARTHRITIS
WALK on the Principal Register for “charitable fundraising
services; organizing, arranging and conducting charitable
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/296,618
2
fundraising events.”1 The Examining Attorney has refused
registration under Section 2(e)(1) of the Act, 15 USC
§1052(e)(1), arguing that applicant’s mark is merely
descriptive of its services. Applicant and the Examining
Attorney have filed briefs, but no oral hearing was
requested.
We affirm.
Relying on dictionary definitions, applicant’s
specimen of use, evidence from the Nexis electronic
database and from the Internet, the Examining Attorney
contends that the asserted mark ARTHRITIS WALK is merely
descriptive because the mark immediately informs sponsors
and participants that applicant is organizing and
conducting a walk to raise money to fight the disease of
arthritis. In other words, the words ARTHRITIS WALK
describe a quality, characteristic or feature of
applicant’s fundraising services—-that applicant is
conducting a walk to benefit arthritis patients. The
Examining Attorney contends that participants and others

1 Application Serial No. 76/296,618, filed August 7, 2001, based on
applicant’s assertion of a bona fide intention to use the mark in
commerce. Applicant subsequently filed an amendment to allege use (on
November 5, 2002) along with a contingent amendment to place this
application on the Supplemental Register in the event registration on
the Principal Register is denied. See TMEP §1212.02(c). That
amendment claims use since December 2001. The Examining Attorney has
approved this alternative request for registration on that register.
See Examining Attorney’s brief, 2. Accordingly, if we affirm this
refusal to register, this application will be placed on the
Supplemental Register.
Serial No. 76/296,618
3
will immediately understand from the mark the nature of
applicant’s services.
Furthermore, pointing to evidence which she has made
of record, the Examining Attorney argues that it is
customary for charitable organizations to use the name of a
condition or disease followed by the word “walk” to
identify their walks to raise money to fight the particular
disease that is the focus of the particular charitable
organization. The evidence shows that such other terms as
“diabetes walk,” “breast cancer walk,” “Alzheimer’s walk,”
“Cystic Fibrosis Walk,” “Cancer Walk” and “Heart Walk” are
being used by such organizations. The Examining Attorney
also notes that the evidence reflects that some charitable
organizations use somewhat suggestive or arbitrary
terminology as identifying marks for their fundraising
services, such as “Making Strides Walk” (breast cancer),
“Memory Walk” (Alzheimer’s), “Light the Night walk”
(leukemia and lymphoma) and “Pettrek” (animals with
cancer).
Applicant’s specimen of use shows the mark sought to
be registered in the following context:
The Arthritis Foundation salutes our 2002
Arthritis Walk participants and the sponsors
for making a difference in the lives of people
with arthritis! Across the country, more than
10,000 people joined together in May during
Serial No. 76/296,618
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National Arthritis Month to raise more than one
million dollars to fight arthritis, the
nation’s number one cause of disability…
…Participants will have the choice of a 5K
or 1-mile walk. Men, women and children with
arthritis will lead the way wearing special
blue honoree hats to show that they are taking
control of their arthritis. And during the
walk you’ll have an opportunity to write a
message on the inspirational Wall of Heroes.
The best way to enjoy the Arthritis Walk
is to invite others to walk with you. Anyone
can participate…
The Examining Attorney has also introduced copies of
various pages from applicant’s Web site showing that
applicant’s annual ARTHRITIS WALK is a nationwide walk
that raises funds to fight arthritis and related
diseases.
Applicant, on the other hand, argues that its
mark is only suggestive (or highly suggestive) of its
fundraising services but not merely descriptive of
them. Applicant admits that walks are a common method
of raising funds (reply brief, 5) and that its
services “include a nationwide walk that raises funds
to fight arthritis…” (brief, 5, and Request for
Reconsideration, filed November 5, 2002, 2). However,
the fact that a “walk” is a common way of raising
money does not necessarily make the word merely
descriptive of charitable fundraising services,
according to applicant. Applicant contends that
Serial No. 76/296,618
5
“arthritis” does not describe its fundraising services
but is the name of a disease, and that, while “walk”
may be descriptive of an activity employed by
applicant to raise funds, applicant’s fundraising
services cannot be described as a “walk.” Also, read
literally, “arthritis” does not “walk” (brief, 5).
Moreover, applicant argues that there is some
incongruity in its mark because one with arthritis may
have a difficult time walking. Also, the combination
of two descriptive words, assuming each one is
descriptive of certain aspects of the activities
surrounding applicant’s services, may lead to a non-
descriptive, suggestive composite. Applicant argues,
therefore, that some imagination, thought or
perception is needed to reach a conclusion about the
nature of applicant’s services. Because multi-stage
reasoning is needed, applicant’s mark is only
suggestive, applicant contends. However, applicant
does concede that participants will “have little
difficulty in figuring out that fundraising activities
involve a walk to raise money to fight arthritis.”
Brief, 6. Further, applicant’s attorney argues that
applicant’s mark is no more descriptive than various
third-party registered marks such as WALK FOR HOPE
Serial No. 76/296,618
6
AGAINST BREAST CANCER, CROP WALK, WALK AS ONE WALK-A-
THON, AMERICAN HEART WALK, WALK THE TALK and WALK WITH
THE WORLD. Finally, applicant argues that any doubt
should be resolved in favor of allowing its mark to be
published for opposition.
It is well settled that a term is merely descriptive,
within the meaning of Section 2(e)(1) of the Trademark Act,
if it immediately describes a quality, characteristic or
feature of the goods or services or directly conveys
information regarding the nature, function, purpose or use
of the goods or services. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Also,
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 and the possible significance
that the term may have to the relevant purchasers. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Further, we must judge the question of mere descriptiveness
on the basis of the likely purchaser perception of the
asserted mark according to the evidence of record.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that applicant’s mark is merely descriptive of its
services. The Examining Attorney has made of record
Serial No. 76/296,618
7
evidence that it is not uncommon for organizations to have
walks named after the particular disease or condition that
is the focus of their fundraising efforts. And applicant
appears to follow this practice. We have no doubt that, on
this record, sponsors and participants in applicant’s
fundraising walks will perceive the asserted mark ARTHRITIS
WALK as merely describing a feature of applicant’s
fundraising services, namely that applicant is organizing
or conducting a walk to raise money to fight arthritis. No
imagination, thought or perception is needed to reach a
conclusion as to the nature of applicant’s services.
Finally, as the Examining Attorney has noted, third-
party registrations are not conclusive on the question of
descriptiveness. A mark is not registrable merely because
similar marks might be on the register. In re Scholastic
Testing Services, Inc., 196 USPQ 517 (TTAB 1977). The
Board must decide each case on its own merits. In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227
USPQ 417, 424 (Fed. Cir. 1985). However, even if some
prior registrations had some characteristics similar to
applicant’s mark (and it is not clear that they do), the
allowance by this Office of such prior registrations does
not bind the Board. See In re Nett Designs, Inc., 236 F.3d
Serial No. 76/296,618
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1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). As that Court
stated:
Nonetheless, the Board (and this court in
its limited review) must assess each mark on
the record of public perception submitted
with the application. Accordingly, this
court finds little persuasive value in the
registrations that Nett Designs submitted to
the examiner or in the list of registered
marks Nett Designs attempted to submit to
the Board.
Decision: The refusal of registration is affirmed.
This application will proceed to registration on the
Supplemental Register.