Case: In re Health Science Funding, LLC, No. 2013-1054 (Fed. Cir. Sept. 13, 2013) (non-precedential). On appeal from the U.S. Patent and Trademark Office, Trademark Trial and Appeal Board. Before Prost, Clevenger, and Linn.
Procedural Posture: Applicant appealed the TTAB’s refusal to register the marks “PRASTERONE.ORG” and “THE PRASTERONE COMPANY” on the Supplemental Register. CAFC affirmed.
- Genericness: The TTAB was correct in holding the marks as generic under Section 23 of the Trademark Act for services identified as “providing a website featuring scientific and clinical research information about investigational medical foods, dietary supplements or drugs, namely, prasterone or derivatives or analogs thereof.” The TTAB correctly identified the services based on the applicant’s own identification of services, and correctly analyzed the individual components of the marks as well as the marks in their entirety before making its determination. Moreover, although it is generally error to rely on genericness in one class of goods (i.e., drugs) to establish genericness for another class (i.e., information services), the CAFC held that the TTAB’s analysis was considerably more detailed. Specifically, the TTAB found that “prasterone” is frequently used with websites that provide general information about prasterone and its medical uses, and further found that the addition of “.org” and “company” did nothing to convert the generic term prasterone into a registrable mark.