The San Francisco AIDS Foundation and The Los Angeles Gay and Lesbian Community Services Center

Trademark Trial and Appeal Board

Feb 6, 2015

No. 85825132 (T.T.A.B. Feb. 6, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The San Francisco AIDS Foundation and The Los Angeles Gay and
Lesbian Community Services Center
_____

Serial No. 85825132
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Lynn M. Humphreys of Morrison & Foerster LLP for The San Francisco AIDS
Foundation and The Los Angeles Gay and Lesbian Community Services
Center.

Amy Alfieri, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Bucher, Kuhlke and Hightower,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
The San Francisco AIDS Foundation and The Los Angeles Gay and Lesbian
Community Services Center (“Applicants”) seek registration on the Principal
Register of the mark 10K CLUB (in standard characters) for “Charitable
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fundraising services, namely, organizing and conducting fundraising events,” in
International Class 36.1
The Trademark Examining Attorney has refused registration of Applicants’
mark on the ground that 10K CLUB is merely descriptive of Applicants’ services
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
When the refusal was made final, Applicants appealed and filed a request for
reconsideration. On June 5, 2014, the Examining Attorney denied the request and
the appeal was resumed on June 9, 2014. The Examining Attorney and Applicants
filed briefs. We affirm the refusal to register.
Mere Descriptiveness
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Oppedahl &
Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting, Estate
of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920) (“A mark is merely
descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of’’ the goods or services related to the mark.”)) The determination of
whether a mark is merely descriptive must be made “in relation to the goods [or

1 Application Serial No. 85825132 was filed on January 16, 2013, based upon Applicants’
allegation of first use and first use in commerce on September 15, 2011 under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a).
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services] for which registration is sought, the context in which it is being used, and
the possible significance that the term would have to the average purchaser of the
goods because of the manner of its use or intended use.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978)). 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. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); and In re Associated Theatre Clubs
Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71
USPQ2d at 1371. However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
nondescriptive meaning, or if the composite has a bizarre or incongruous meaning
as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157
USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983).

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Evidence and Argument
The Examining Attorney asserts that:
[W]hen used in connection with the applicant[s’]
“Charitable fundraising services, namely, organizing and
conducting fundraising events,” the proposed mark
merely indicates that the applicant[s’] fundraising
services feature a club, or a group of people organized for
a common purpose, with a goal of raising ten thousand
dollars, or 10K.
Ex. Att. Br. p. 6.
In support of her position, the Examining Attorney submitted excerpts from
various third-party websites to demonstrate that “the term 10K is commonly used
in the fundraising field in reference to ‘ten thousand dollars.’” Id. Some examples of
use of the term 10K highlighted by the Examining Attorney are set forth below:
Join us for our 3rd annual Speed The Light 10K in a Day
Fundraiser!!! SO (you ask) do I have to walk/run 10K? No!
(insert sigh of relief) In this case 10K stands for 10
thousand dollars. That’s right 10 thousand dollars! …
This year we raised our goal to 10K.
(www.gofundme.com);2
Easy Fundraising for Churches-Raising 10k – 150k Has
Never Been Easier (www.missionpossiblemp.com);3
10K For Ten Thousand Homes … My goal is $10,000.
$10k for me running a 10k for Ten Thousand Homes or
10k for 10k for 10k Homes. (www.crowdrise.com);4
United Way Raises 10K in Golf Classic … the
organization’s second annual Golf Classic at Twin Shields
Golf Club on August 19 got the ball rolling by netting over

2 November 4, 2013 Office Action, TSDR p. 2 (TSDR refers to the USPTO electronic file
system Trademark Status and Document Retrieval available online).
3 Id., TSDR p. 6.
4 June 5, 2014 Office Action, TSDR. pp. 2-3.
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$10,000 for its Community Impact Fund.
(www.smnewsnet.com);5 and
I’ve decided that we’re going to keep it going – a
fundraising event each week with the goal of raising TEN
THOUSAND DOLLARS by the end of the season. Check
back to hear more about our awesome events and see our
progress towards 10K! (www.kathurd.com)6
The Examining Attorney also submitted the following dictionary definition for
the word CLUB:
A group of people organized for a common purpose,
especially a group that meets regularly.7
We grant the Examining Attorney’s request for judicial notice of the following
definition for CLUB as “a group of people who meet to participate in an activity
(such as a sport or hobby).”8 In re Dietrich, 91 USPQ2d 1622, 1631 n.15 (TTAB
2009); In re Petroglyph Games Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009).
In addition, the Examining Attorney submitted copies of third-party
registrations wherein the word CLUB is disclaimed in connection with services
similar to those of Applicants. E.g., Reg. No. 3155527 for the mark INTERACT
CLUB for charitable fundraising services;9 Reg. No. 3197874 for the mark CARLY’S
CLUB for charitable fundraising services;10 Reg. No. 2480154 for the mark BED &

5 Id., TSDR p. 6.
6 Id., TSDR p. 12.
7 HOUGHTON MIFFLIN, retrieved from the Yahoo website, attached to April 2, 2013 Office
Action, TSDR p. 6.
8 MERRIAM-WEBSTER online dictionary, http://www.merriam-webster.com.
9 April 2, 2013 Office Action, TSDR pp. 11-13.
10 Id., TSDR pp. 17-19.
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BREAD CLUB for charitable fundraising services;11 and Reg. No. 4376807 for the
mark PROUD PATRIOTS CLUB for charitable fundraising services.12
Finally, the Examining Attorney points to Applicants’ specimen of use that
includes the following passage:
10K Club is comprised of AIDS/LifeCycle participants
who have committed to raising at least $10,000 for the
fight against HIV/AIDS.
and Applicants’ website that includes the following passages:
Members of the 10K Club make a significant impact on
the success of the ride …
By raising $10,000 or more, 10K Club members help us
keep the cost of fundraising low …
Join us for happy hours, workshops, and social
gatherings. Learn what motivates other 10K Club
members …
If you’re an experienced 10K fundraiser and would like to
mentor other participants …
We can help you … connect with other 10K participants,
and more.13
Based on these excerpts, the Examining Attorney contends that “[i]t is apparent
from the applicant[s’] own use of [their] mark that the intended meaning of 10K
Club is fundraising services featuring a club in which participants share the
common goal of raising ten thousand dollars.” Ex. Att. Br p. 10.

11 November 4, 2013 Office Action, TSDR pp. 7-8.
12 Id., TSDR pp. 12-14.
13 April 2, 2013 Office Action, TSDR p. 7.
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Applicants argue that the proposed mark is not merely descriptive because “the
individual components of Applicants’ Mark have multiple meanings and do not
immediately convey a single, specific idea. Moreover, as a unitary composite mark,
10K CLUB suggests a prestigious and exclusive organization, and is an uncommon
way of referring to Applicants’ services.” App. Br. p. 1. More specifically, it is
Applicants’ position that the “various common meanings of ‘10K’ and ‘club’ create
ambiguity as to the mark’s significance, especially in light of the fact that
Applicants’ services description does not specify what role ‘10K’ plays in the
‘fundraising events’ and how that relates to a ‘club.’” App. Br. pp. 3-4. Applicants
contend that “given the range of meanings for ‘10K’ alone in the context of
‘charitable fundraising services,’ the mark 10K CLUB could be interpreted as …
accounting for [a] variety of metrics such as headcount [number of donors],
volunteer hours [donating 10 thousand hours], donation amount, athletic goal [10k
race].” Applicants continue that the “combination of ‘10K’ and ‘club’ together…can
convey numerous meanings to a consumer based on different permutations…the
mark could refer to” a charity gala with a ten thousand dollar entry fee, a
fundraising event at a nightclub with the goal of fundraising ten thousand dollars, a
group that receives special “member” benefits for participating in a charitable 10k
run, etc. Applicants particularly assert that “in the context of charitable
fundraising, a significant number of consumers associate ‘10K’ with the 10K run.”
App. Br. p. 5.
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In support of their position, Applicants submitted excerpts from Wikipedia for
the entry 10K that include the following passages, “10K run, a common running
race distance” and “typically incorporate an element of charity running, where
participants raise funds for a cause based upon their completion of the course”;14
dictionary definitions for the word CLUB, including “organization offering members
social amenities, meals, and temporary residence” and “a commercial organization
offering members special benefits”;15 third-party web pages showing 10K used in
connection with charity races and CLUB used in connection with private clubs;16
Wikipedia entries for COUNTRY CLUB and SUPPER CLUB;17 third-party web
pages showing use of the phrase “10K Hours show”;18 and third-party registrations
for the marks CLUB’S CHOICE for, inter alia, fundraising services, CLUB
BREATHE for charitable fundraising, and CLICK CLUB USA for charitable
fundraising services, all registered on the Principal Register.19
Analysis
Applicants’ argument is dependent on ignoring the context in which Applicants
use their proposed mark. Applicants confine the analysis to the services identified
in the application. While Applicants are correct that we determine mere
descriptiveness in the connection with the identified services that is also done in

14 App. Response October 3, 2013, TSDR p. 3-5.
15 Id., TSDR p. 11.
16 Id., TSDR pp. 15-24.
17 Id., TSDR pp. 27-43.
18 App. Req. for Recon. May 5, 2014, TSDR pp. 69-73.
19 Id., TSDR pp. 79-88.
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connection with the context in which the identified services are used. As noted
above, a term need not immediately convey an idea of each and every specific
feature of an applicant’s services in order to be considered merely descriptive; it is
enough that the term describes one single, significant feature or attribute. See
Chamber of Commerce of the U.S., 102 USPQ2d at 1219; Oppedahl & Larson LLP,
71 USPQ2d at 1371 (“A mark may be merely descriptive even if it does not describe
the full scope and extent of the applicant’s goods or services.”) (quotation omitted).
In addition, as noted above, we must consider “the context in which it is being used,
and the possible significance that the term would have to the average purchaser of
the [services] because of the manner of its use or intended use.” Chamber of
Commerce of the U.S., 102 USPQ2d at 1219 (emphasis added).
As explicitly stated in the identification of services, the charitable services
consist of “organizing and conducting fundraising events.” Applicants’ broad
identification of services encompasses fundraising services to raise ten (10)
thousand dollars, and Applicants’ website makes clear that the paramount aspect of
its covered services is to have club members raise ten (10) thousand dollars. See
Chamber of Commerce of the U.S., 102 USPQ2d at 1219. See also In re Bayer
Aktiengesellschaft, 82 USPQ2d at 1832 (Internet evidence may be considered for
purposes of evaluating a trademark). Cf. In re Reed Elsevier Properties Inc., 482
F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (appropriate to review
applicant’s website for context to inform the understanding of a term in order to
define the genus). Further, it is clear from Applicants’ specimens of use that the
Serial No. 85825132
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meaning of 10K in Applicant’s applied-for mark refers to money rather than a race.
The fact that 10K may have a different merely descriptive meaning in another
context, including the broad category of charity fundraising, e.g., 10K race for a
charitable race, is not controlling on the question of descriptiveness. In re
RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012); In re Chopper Indus., 222
USPQ 258, 259 (TTAB 1984).
Nor do we find Applicants’ use of the terms 10K or CLUB to evoke other
meanings such that “the merely descriptive significance of the term[s] is lost in the
mark as a whole.” RiseSmart Inc., 104 USPQ2d at 1934 (quoting In re Kraft, Inc.,
218 USPQ 571, 573 (TTAB 1983)). While the term COUNTRY CLUB may be
associated with “prestige or privilege,” without context the word CLUB alone does
not convey “rarified privilege” and in the context of the mark 10K CLUB and
Applicants’ services, its meaning is clear; there is no incongruity or double entendre.
See App. Reply Br. p. 3. Applicants’ similar argument that ‘[i]n the context of
charitable fundraising, 10K CLUB can be readily understood by consumers to
denote exclusivity in the sense that ‘membership’ is a privilege reserved for a
distinct subgroup within the association,” yields the same result. App. Reply Br. p.
4. We agree that the word CLUB conveys the meaning of a specific group that would
encompass subgroups within a group, but that does not create a double meaning in
the context of Applicants’ services wherein the “10K Club is comprised of
AIDS/LifeCycle participants who have committed to raising at least $10,000.”20

20 Applicants’ specimen of use.
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We find that 10K CLUB immediately describes a significant feature of the
services, namely a group organized for the purpose of raising ten thousand dollars.

Decision: The refusal to register Applicants’ mark 10K CLUB as merely
descriptive under Section 2(e)(1) is affirmed.