CAFC Affirms TTAB: "PRASTERONE.ORG" Generic for Prasterone-Related Website

In a rare case of double-WYHA?, the U.S. Court of Appeals for the Federal Circuit (a/k/a, the CAFC) affirmed the TTAB's decision (here) upholding a refusal to register, on the ground of genericness, the terms PRASTERONE.ORG and THE PRASTERONE COMPANY for "providing a website featuring scientific and clinical research information about investigational medical foods, dietary supplements or drugs, namely, prasterone or derivatives or analogs thereof." In Re Health Science Funding, LLC, Appeal No. 1054 (Fed. Cir. September 13, 2013) [not precedential].

There was no dispute that "prasterone" is a generic term for synthetic dehydroepiandroesterone (DHEA). The Board reasoned that because prasterone is generic for the subject matter of the services, it is also generic for the services themselves. It found that ".org" and "company" are also generic and lack source-identifying significance. Looking at the applied-for marks in their entireties, the Board found them to be generic.

The CAFC reviewed the Board's finding for substantial evidence, bearing in mind that the PTO has the burden to prove genericness by clear evidence.

The Board found no error in the Board's determination of the genus of services as being identified by the recitation of services in the applications at issue.

In determining whether the applied-for marks are understood by the relevant public primarily to refer to the identified genus of services, the Board properly relied on both the generic meaning of prasterone and on its use on informational websites, finding that "prasterone" is frequently used at websites that provide information about the drug and its efficacy.

Applicant relied heavily on the CAFC's decision in In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), but the Board found that case "easily distinguishable."

In that case, we reversed because "the Board erroneously: (1) construed the genus of applicant’s services and goods too narrowly; (2) discounted the ambiguities and multiple meanings in the mark; and (3) dismissed the addition of the TLD indicator despite its expansion of the meaning of 'STEELBUILDING.COM.'" Id. at 1299. Health Science points to no similar errors in the Board’s decision in this case.

Instead, the court found that the Board's approach in this case largely tracked the CAFC's analysis in In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) [HOTEL.COM deemed generic for hotel information and reservation services].

Applicant here failed to show why the Board's factual findings lack substantial evidentiary support. The CAFC ruled that the Board's findings, and its ultimate conclusion, were indeed supported by substantial evidence.

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Text Copyright John L. Welch 2013.

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