Examples of Composite or Unitary Marks & Disclaimers

The Trademark Act provides for a way for trademarks containing unregisterable matter to be registered on the Principal Register or Supplemental Register (In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980)) by requiring that the unregisterable part of the mark be disclaimed. Every rule has exceptions, if the unregisterable part and the registerable part together create a “unitary” mark, the otherwise unregisterable part does not have to be disclaimed. A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component (TMEP 1213.05).

Specific categories of unitary matter has emerged through case law and USPTO policy, such as compound word marks, telescoped words, hyphenated terms, slogans, double entendre, incongruity, and visual display of the mark conveying a unitary whole. See TMEP 1213 Disclaimer of Elements in Marks for more information or call us at 1-651-500-7590. Unitary mark claiming can also eliminate problems with merely-desciptive refusals I some cases.


Example of  How To Analyze If  A Trademark is A Unitary Mark

By the Belvidere Court

"A unitary mark simply has no `unregistrable component,' but is instead an inseparable whole." See Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991). “A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression . . .

. . . An examination of the mark discloses that its elements are not so merged together that they cannot be regarded as separate (citation omitted). The words [COMPOSITE MARK] are separate from the [type of design] design. These two elements are not connected by any lines or design features.

Nothing melds [COMPOSITE MARK] with the [type of design] design to create a single indivisible symbol.

In addition, no particular meaning in the words [COMPOSITE MARK] or the [type of design]  design links these detached features . . . The observable characteristics of Belvedere's mark show that its elements are not `so merged together that they cannot be regarded as separable elements.' (citation omitted).

The mere proximity of [COMPOSITE MARK] to the unrelated design feature does not endow the whole with a single, integrated, and distinct commercial impression. No evidence suggests that a potential purchaser would perceive this mark to convey a single inseparable impression. In the absence of such evidence, [COMPOSITE MARK] in large type appears to stand out and convey a meaning wholly unrelated to the circular design. . . .The commercial impression is determined by various factors, including the relative location of the respective elements; and the meaning of the terms in the mark in relation to each other and to the services.”


Examples of Unitary Marks From USPTO

Examination Guide February 2012

MARK/ID

ID

EXPLANATION

TIP YOUR HAT

hats

The verb renders the mark a unitary phrase.

FILING TAXES SO YOU DON'T HAVE TO

tax preparation

The verb renders the mark a unitary phrase.

BOATS ARE FUN

boats

The verb renders the mark a unitary phrase.

TAKE THIS MEDICINE

cough syrup

The verb renders the mark a unitary phrase.

TRANSFORMING STATE GOVERNMENT

providing information in the field of state governments

The verb renders the mark a unitary phrase.



Examples of  Composite and Unitary Marks and Their Effect on Registration

Mark

TTAB Decision or Case

When 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.  

  • SMARTTOWER merely descriptive of commercial and industrial cooling towers;
  •  AGENTBEANS merely descriptive of computer programs for use in development and deployment of application programs;
  •  FOOD & BEVERAGE ONLINE merely descriptive of news information services for the food processing industry;
  • SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays.






 In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002);


In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001);


In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996);


In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994).



A term that merely combines two descriptive words [composite term] is not registrable if the individual components retain their descriptive meaning in relation to the services and the combination results in a composite mark that is itself descriptive. (In re ZeroNines Technology, Inc., (TTAB 2010))

  • THE BREATHABLE MATTRESS merely descriptive of "beds, mattresses, box springs and pillows";
  • GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services;
  • ALWAYS AVAILABLE, is merely descriptive when applied to “computer services, namely, creating indexes of information, sites and other resources available on computer networks” because it immediately describes a significant characteristic of the named services.










In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006)


In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988


In re ZeroNines Technology, Inc., (TTAB 2010)



If two or more terms are combined in a mark to create an incongruity (e.g., URBAN SAFARI, MR. MICROWAVE, and DR. GRAMMER), the mark is unitary and disclaimer of nondistinctive individual elements is necessary." TMEP § 1209.

The concept of mere descriptiveness "should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and `mental pause.'"In re Shutts, 217 U.S.P.Q. 363, 364-65 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive)

See also In re Vienna Sausage Mfg. Co., 156 USPQ 155, 156 (TTAB 1967) (FRANKWURST held not merely descriptive for wieners, the Board finding that although "frank" may be synonymous with "wiener," and "wurst" synonymous with "sausage," the combination of the terms is incongruous and results in a mark that is not more than suggestive of the nature of the goods) and In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966) (TINT TONE held suggestive for hair coloring, the Board finding that the words overlap in significance and their combination is somewhat incongruous or redundant and does not immediately convey the nature of the products).


What applicant seeks to register must not only be in use, it must make a distinct commercial impression as used. In re 1175856 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006)(“[I]t is well settled that an applicant may seek to register any portion of a composite mark if that portion presents a separate and distinct commercial impression….”). That is, the mark as actually used must not be so entwined (physically or conceptually) with other material that it is not separable from it in the mind of the consumer. In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988). (Id.)


Call us at 1-651-500-7590 to help eliminate problems with your trademark application. Our Not Just Patents Five-Step Verification identifies issues before application in order to prevent problems and assure speedy registration.  


To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

*We don’t stop here but this is a good start!


Our rates are very reasonable and we support your application all the way through a normal prosecution including responding to refusals for the fixed application price. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm just to answer a USPTO Office Action Refusal at an hourly rate.


If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA). If someone is using your trademark in a way that harms you, we may be able to stop them through an opposition or a cancellation proceeding. If you are being opposed or are threatened with cancellation, we may be able to help as well. Timing is very important for a bunch of reasons: Opposition times are very short, times to answer Petitions to Cancel are only 40 days from when the petitions are filed, times to answer Oppositions can be very short, and sitting on your rights in general can cause problems. Don’t delay calling. We may be able to help.


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Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

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Are You a Content Provider-How to Pick an ID  Specimens: webpages

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Shop Rights  What is a Small or Micro Entity?

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Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

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What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

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Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

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Trademark Incontestability  TTAB Manual (TBMP)

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Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

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Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

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ID of Goods and Services see also Headings (list) of International Trademark Classes

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Not Just Patents Often Represents the Underdog

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Section 2(d) Refusals   FilingforTrademark.com

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What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

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Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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