From: Kon, Elissa Garber
`
`Sent: 10/15/2010 11:45:06 AM
`
`To: TTAB EFiling
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`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 76701339 - THE EYE CANCER
`FOUNDATION - P-3856-3 - EXAMINER BRIEF
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`
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 76701339.doc
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`
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`Sent: 10/15/2010 11:45:06 AM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 76701339 - THE EYE CANCER
`FOUNDATION - P-3856-3 - EXAMINER BRIEF
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 76701339.doc
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`
`
`
` SERIAL NO:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`76701339
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`
`
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`*76701339*
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`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
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`
`
`
`
` MARK: THE EYE CANCER FOUNDATION
`
`
`
` THE EYECARE FOUNDATION,
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`
` CORRESPONDENT ADDRESS:
` MYRON AMER
`
` MYRON AMER, P.C.
` 350 NATIONAL BLVD STE 2B
` LONG BEACH, NY 11561-3327
`
`
` APPLICANT:
`INC.
`
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
` P-3856-3
` CORRESPONDENT E-MAIL ADDRESS:
`
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
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`
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`
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`The applicant, The Eyecare Foundation, Inc., has appealed the final
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`refusal of registration under Section 2(e)(1) of the Trademark Act of 1946, as amended,
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`15 U.S.C. Section 1052(e)(1) (hereinafter the “Act”) on the ground that the proposed
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`mark is merely descriptive of a feature of the applicant’s services in both Classes 36 and
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`FACTS
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`
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`On January 25, 2010, the applicant applied to register THE EYE CANCER
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`44.
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`
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`FOUNDATION for use with charitable services, namely, charitable fundraising and
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`providing grants to physicians for research on eye cancer and eye diseases in Class 36, as
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`well as charitable services, namely, providing healthcare counseling and support to
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`
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`people with eye cancer and providing medical information to people with eye cancer and
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`other eye diseases and their families about their diseases and possible treatment options
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`via the Internet, in Class 44.
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`The examiner initially refused registration on April 26, 2010 under Section
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`
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`2(e)(1) of the Trademark Act, 15 U.S.C. Section 1052(e)(1), on the ground that the
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`proposed mark is merely descriptive of the services, and provided a caveat that the
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`proposed mark was possibly generic for the services. This refusal was premised on
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`evidence that the applicant’s foundation services provide fundraising and counseling
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`services in the field of “eye cancer.” The examiner also required a claim of ownership to
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`a related registration and an amended identification of services.
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`
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`In response, on May 10, 2010, the applicant amended its identification of
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`services, disclaimed the word FOUNDATION and deleted the wording “eye cancer” and
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`“and other” from the description of services. Thus, the description of services was
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`amended to: charitable services, namely, charitable fundraising and providing grants to
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`physicians for research on eye diseases, in Class 36, and providing medical information
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`to people with eye diseases and their families about their diseases and possible treatment
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`options via the Internet; providing a charity-based, Internet database of patient medical
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`information in the field of eye diseases where patents can inquire about medical issues
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`and procedures from other patients and can relay information about their medical
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`experience for support and community, in Class 44. The applicant argued that deleting
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`the wording “eye cancer” from the description of services rendered the mark suggestive,
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`and not descriptive, of the services, because they no longer pertain to “eye cancer.”
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`The examiner issued a final refusal under Section 2(e)(1) on May 27, 2010 based
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`on evidence that eye cancer is considered an eye “disease,” and therefore, deleting this
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`wording from the description of services did not obviate this refusal. The examiner
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`referenced websites, dictionary definitions and sample registrations that were already of
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`record as well as additional evidence provided therewith. On June 9, 2010, the applicant
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`requested copies of referenced dictionary definitions that were not physically attached to
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`the May 27, 2010 Office action and submitted a declaration from the applicant’s
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`president. Since the applicant’s request was made in response to a final refusal, it was
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`treated as a request for reconsideration. TMEP section 715.03.1 The examiner denied
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`reconsideration on June 11, 2010 because the applicant’s request did not present any new
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`facts or arguments.
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`
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`On June 25, 2010, the applicant filed a written request for clarification of
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`the citation for the definition of the word FOUNDATION in the record. The examiner
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`denied reconsideration again on June 30, 2010 because the request did not raise any new
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`facts or arguments. In response to the applicant’s request, and to be sure that the record
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`1 TMEP section 715.03 provides, in pertinent part: “The examining attorney should
`construe any document filed after final action that responds to the outstanding
`refusals or requirements as a request for reconsideration. If the request for
`reconsideration does not overcome or resolve all outstanding refusals and
`requirements, the examining attorney must issue a written action that advises the
`applicant of the status of the application. The Office action should discuss any new
`evidence submitted with a request for reconsideration.”
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`
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`
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`contained complete dictionary definitions with correct citations, the examiner provided
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`additional definitions of the word FOUNDATION under TMEP section 715.03.2 On
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`July 12, 2010, the applicant filed a nonresponsive “preliminary response” maintaining
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`that the examiner made an “untimely attempt to expand the record on appeal” by
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`submitting the additional dictionary definitions of the generic term FOUNDATION.
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`This appeal was filed on July 28, 2010.
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`
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`ARGUMENT
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`I. The Proposed Mark is Merely Descriptive of the Services
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`
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`The proposed mark THE EYE CANCER FOUNDATION is merely descriptive of
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`the applicant’s services because it immediately tells consumers a feature of the services.
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`As outlined below, this wording immediately tells consumers that the applicant’s
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`foundation provides charitable fundraising and grants for research on eye diseases, such
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`as eye cancer, and provides medical and patient-related information about eye diseases,
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`such as eye cancer, even if it also provides such information about other more common
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`eye diseases.
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`
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`2. The Examining Attorney’s Definitions of FOUNDATION are Timely
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`
`
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`2 TMEP section 715.03 provides, in pertinent part: “Regardless of whether an applicant
`submits new evidence with a request for reconsideration, the examining attorney may
`introduce additional evidence directed to the issue(s) for which reconsideration is sought.
`TBMP §1207.04.”
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`
`
`
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`In its “preliminary comments,” the applicant notes that it owns U.S. Registration
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`No. 2786259 for THE EYECARE FOUNDATION, registered on the Principal Register
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`with a Section 2(f) claim and a disclaimer for the generic word FOUNDATION, for
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`almost the same services. Registration of the mark THE EYECARE FOUNDATION
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`under Section 2(f) with a disclaimer of FOUNDATION for virtually the same services
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`shows the applicant’s acknowledgement that FOUNDATION is generic for these
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`services.
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`The applicant alleges that any dictionary definitions of FOUNDATION the
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`
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`examiner provided after the final refusal should not be considered by the Board because
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`they were not timely. The applicant provided no legal foundation for its position. The
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`dictionary definitions provided by the examiner with the denials of reconsideration were,
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`in fact, timely, pursuant to TMEP section 715.03 and TBMP section 1207.04, which
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`provide, in pertinent part:
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`
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`Regardless of whether an applicant submits new evidence with a request
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`for reconsideration, the examining attorney may introduce additional
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`evidence directed to the issue(s) for which reconsideration is sought.
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`TBMP §1207.04. See In re Davey Products Pty Ltd., 92 USPQ2d 1198
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`(TTAB 2009); In re Giger, 78 USPQ2d 1405 (TTAB 2006). TMEP
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`section 715.03
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`
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`
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`When a timely request for reconsideration of an appealed action is filed
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`(with or without new evidence), the examining attorney may submit,
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`with his or her response to the request, new evidence directed to the
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`issue(s) for which reconsideration is sought. TMBP section 1207.04
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`
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`The additional dictionary definitions made of record by the examiner
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`with her second denial of reconsideration are directed to the issues of which the applicant
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`sought reconsideration, and were submitted in direct response to the applicant’s request
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`for definition citations. Further, this evidence does not impact the Section 2(e)(1) refusal
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`because the applicant has not argued that FOUNDATION is not generic, or even
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`descriptive, of its services. Indeed, as noted above, the applicant has already admitted that
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`FOUNDATION is generic as to these services by virtue of its disclaimer of
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`FOUNDATION in the prior registration under Section 2(f).
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`
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`
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`3. The Fact that Eye Cancer is a Rare Condition Does not Obviate
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`Descriptiveness of the Mark
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`The applicant’s sole argument against the Section 2(e)(1) refusal is that
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`“eye cancer” is so rare that it should not be construed to be an “eye disease” within the
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`scope of conditions covered in the amended description of services. This position is not
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`supported by the evidence and the applicant’s own statements. Further, this position does
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`not obviate the Section 2(e)(1) refusal because the applicant’s services are of the types
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`that also pertain to eye cancer. Therefore, THE EYE CANCER FOUNDATION
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`
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`immediately tells consumers that the applicant’s fundraising, grant and information
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`services are in the field of eye cancer, as well as other more common eye diseases,
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`conditions, afflictions and/or ailments.
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`
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`The original identification of services included “providing medical
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`information to people with eye cancer and other eye diseases.” Emphasis added. The
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`applicant’s prior registration for a related mark also included “providing medical
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`information to people with eye cancer and other eye diseases.” Emphasis added. This
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`wording indicates that eye cancer is one of many eye diseases. The applicant would not
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`have used the wording “and other” if eye cancer was not considered an eye disease. It is
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`noted that in amended its identification of services to delete “eye cancer,” the applicant
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`also deleted “and other,” leaving only “eye diseases.” The evidence below, including
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`statements by the applicant, its chairman and its president, clearly indicate that the
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`applicant provides these services in connection with eye cancer as well as other eye
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`diseases.
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`
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`The evidentiary declaration submitted by the applicant’s president on
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`The Eye Cancer Foundation History
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`June 9, 2010 states:
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`
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`Established in 1989, The Eye Cancer Foundation is an educational and
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`supportive resource for eye cancer patients, their families and
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`physicians. Our mission in two fold: one part focused on multi-centered
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`
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`research of new diagnostic treatments for eye cancer research, the other
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`focused on providing much needed patient support services.
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`
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`We understand that en eye cancer diagnosis can be overwhelming. It is
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`for this reason that we provide two highly utilized web sites for patients
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`and their families: The Eye Cancer Network.
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`
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`Emphasis added. Excerpted from Evidentiary Declaration of the applicant’s president,
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`found at page 3 of the applicant’s June 9, 2010 submission.
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`
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`Despite the applicant’s statements that The Eye Cancer Foundation’s
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`mission centers on research and information about eye cancer, the applicant maintains
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`that “eye cancer” is not within the scope of “eye diseases” because eye cancer is rarer
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`than other diseases. The applicant argues that eye cancer is not within the scope of eye
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`diseases in support of its position that deleting “eye cancer” from the identification of
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`services eliminates the descriptiveness refusal. This very narrow argument is
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`contradicted by the applicant’s own repeated use of the phrase “eye cancer and other eye
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`diseases,” and its own mission statement.
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`
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`The term “eye cancer” tells consumers an aspect of the applicant’s
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`services because it immediately advises consumers that they can find information and
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`fundraising activities relating to eye cancer. “A mark may be merely descriptive even if
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`it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re
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`
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`Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)
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`(citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807,
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`1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if the term describes only one
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`significant function, attribute or property. In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d
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`at 1371; TMEP §1209.01(b).
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`
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`The examiner has made of record several sample websites that show the
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`applicant and others in the applicant’s field referring to eye cancer among other eye
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`“diseases.” In particular:
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`
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`The Eye Cancer Network is the first online-based community dedicated
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`to eye tumor patients. This cite was developed to help patients around
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`the word find much needed information and research on the various
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`forms of ocular tumors and related eye diseases. …Dr. Finger treats
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`patients with eye cancer, ocular tumors and orbital diseases at The
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`New York Eye Cancer Center.
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`
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`Emphasis added. Excerpted from www.eyecancer.com and attached at
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`page 3 to the May 27, 2010 final refusal.
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` Message from our Chairman
`
` A
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`Dear Friends:
`
`
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`Now that I have spent over a quarter of a century devoting my career to
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`the fight against eye tumors, I have witness how these diseases
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`drastically alter the lives of patients and their families….The Eye
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`Cancer Foundation has grown to become the leading non-profit
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`organization dedicated to serving the needs of eye cancer patients
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`worldwide
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`
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`Emphasis added. Excerpted from http://eyecancerfoundation.net and
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`attached at page 4 to the May 27, 2010 final refusal.
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` choroidal melanoma is malignant, meaning that the cancer may
`
` A
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`metastasize and eventually spread to other parts of the body. Because
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`choroidal melanoma is intraocular and not usually visible, patients with
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`this disease often do not recognize its presence until the tumor grows….
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`
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`Emphasis added. Excerpted from www.eyecancermd.org, attached at
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`page 9 to the May 27, 2010 final refusal.
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`
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`This evidence, including statements from the applicant itself, indicates
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`that eye cancer is an eye disease; eye cancer is related to other eye diseases under Section
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`2(e)(1) because information about eye cancer and other eye diseases emanate from the
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`same sources in the marketplace; and the same physicians treat both eye cancer and other
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`eye diseases. Therefore, simply deleting the wording “eye cancer” from the identification
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`of services would not make this mark any less descriptive because providing research,
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`information and fundraising services about eye diseases are the type of services that
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`emanate from the same sources in the marketplace as providing those services about eye
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`“cancer.” The fact that eye cancer may be rarer than other eye diseases does not obviate
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`this refusal. Section 2(e)(1) of the Trademark Act discusses descriptiveness in relation to
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`the stated goods or services and does not make any exceptions for rarity of a condition
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`described in a mark.
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`The applicant maintains that the examiner failed to present any evidence
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`of “public awareness” that the rare condition known as “eye cancer” is an eye disease.
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`The examiner has made ample evidence of record that eye cancer is considered an “eye
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`disease,” within the scope of the amended identification of services. The applicant’s own
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`statements in the record and on its website show the applicant’s tireless efforts to become
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`“the leading non-profit organization dedicated to serving the needs of eye cancer
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`patients worldwide” after having witnessed how “these diseases drastically alter the
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`lives of these patients.”
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`As additional evidence that the proposed mark is merely descriptive of
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`the services, the examiner has made of record numerous sample registrations from the
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`Office’s database of registered marks wherein the type of cancer followed by the word
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`FOUNDATION were disclaimed for related services. Sample registrations were also
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`attached that included the name of a medical condition with the word FOUNDATION,
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`wherein the name of the condition was disclaimed on the Supplemental Register or under
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`Section 2(f), along with the word FOUNDATION, such as BREAST CANCER
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`FOUNDATION and CHILDHOOD CANCER FOUNDATION. See Registration Nos.
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`2597035 and 3104009 attachments located at pages 12 and 44, respectively, to the April
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`26, 2010 Office action.
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`
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`CONCLUSION
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`
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`The examining attorney respectfully requests that the Board affirm her
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`final refusal to register the proposed mark on the basis that it is merely descriptive of the
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`services, under Trademark Act Section 2(e)(1).
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`
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`Respectfully submitted,
`
`/Elissa Garber Kon/
`Examining Attorney, Law Office 106
`Phone: (571) 272-9181
`Fax: (571) 273-9106
`Email: elissagarber.kon@uspto.gov
`
`Mary I. Sparrow
`Managing Attorney
`Law Office - 106
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