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Don’t Go Breaking Unitary Marks

Posted by James Juo | Mar 28, 2022 | 0 Comments

An applicant may seek to register any portion of a trademark, if that portion presents a separate and distinct commercial impression. In re 1175854 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006). That does not apply, however, where a trademark is considered “unitary”; that is, when the elements of a mark are so integrated or merged together that they cannot be regarded as separable. See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The focus is on “how the average purchaser would encounter the mark under normal marketing of such goods and also … what the reaction of the average purchaser would be to this display of the mark.” Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1561 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)).

The Trademark Trial and Appeal Board (“TTAB”) recently addressed an ex parte appeal of a refusal to register THE VILLE filed by the University of Louisville, where the phrase “Visit the ‘Ville!” was used in the submitted specimen of use. In re University of Louisville, Serial No. 90182509 (Mar. 24, 2022). The application was filed in Class 041 for “Education services in the nature of courses at the university level; Entertainment services in the nature of live musical and dramatic performances; Entertainment in the nature of competitions in the field of intercollegiate sports; Arranging and conducting educational conferences; Arranging, organizing, conducting, and hosting social entertainment events; Organization of exhibitions for cultural or educational purposes; Organizing and arranging exhibitions for entertainment purposes.”

For this use-based trademark application filed under Section 1(a), the submitted specimen of use was a screenshot of the Office of Admissions page from the University's website which contained the following image:

The focus of the appeal was on the words used “in the red field.”

A trademark applicant is required under Section 1(a)(1) of the Lanham Act to submit a specimen depicting the applied-for mark as used, and some “nonconsequential variation” from the substantially exact representation of the mark is permitted.

During prosecution, the Examining Attorney found that the applied-for mark (i.e., “THE VILLE”) was not a substantially exact representation of the mark as used on the specimen of use. The University declined to submit a substitute specimen of use (possibly this may have been the only use as a trademark for the applied-for services by the University at the time the application was filed).

The University argued that “THE VILLE,” the University's nickname, was the commercial impression created by the specimen, the subject of which was “to invite potential students to THE VILLE.” The University further argued that added word “visit” does not change this commercial impression” because THE VILLE is the institution “where potential students are invited to visit.”

The TTAB disagreed, finding that the mark shown on the specimen was VISIT THE ‘VILLE!, where “those words are so merged together that the term THE VILLE cannot be regarded as a separable element creating a separate and distinct commercial impression.”

While the leading apostrophe does not change the commercial impression, “the same cannot be said for the word VISIT” because “an invitation or command to visit a particular place, i.e., VISIT THE 'VILLE, creates a different commercial impression than simply naming the place itself, i.e., THE VILLE.”  In this context, the word “visit” cannot be characterized as “nondistinctive.”

Using Applicant's preferred focus on the red field in the specimen, the words VISIT THE 'VILLE! appear together. The words VISIT THE appear on the same line and in the same style and relatively smaller size font. The word 'VILLE! appears in a larger font below and slightly to the right, but in close proximity to the terms VISIT THE and, more importantly, completes the sentence started by VISIT THE. The use of the exclamation point reinforces the notion that the terms VISIT THE 'VILLE! should be read together to form an exhortation. While the webpage specimen also shows the wording in the mark as a heading, “Visit the 'Ville,” and in various menu options such as “Visit the ville schedule,” and “#VISITTHEVILLE,” at no point does the specimen display the wording in the mark on its own, or as a separable element.

When the applied-for mark does not constitute the complete mark, it is sometimes referred to as a “mutilation” of the mark where “essential and integral subject matter is missing from the drawing.” In re Chemical Dynamics Inc., 839 F.2d 1569 (Fed. Cir. 1988) (mutilation “all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct ‘trademark' in and of itself” (quoting McCarthy and Unfair Competition § 19:17 (2d ed. 1984))).

A trademark application seeking to register only part of the mark shown in the specimen of use may be refused if that part does not create a separate commercial impression. See In re Semans, 193 USPQ 727, 728-29 (TTAB 1976) (the mark KRAZY, displayed on the specimen on the same line and in the same script as the expression “MIXED-UP,” does not in itself function as a registrable trademark apart from the unitary phrase “KRAZY MIXED-UP” even though “MIXED-UP” was disclaimed); see generally, In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123-24 (TTAB 2008) (“Without the degree symbol, it is unclear what the ‘90' in the drawing might refer to. However, when viewed on applicant's specimens of use, the degree symbol in the mark would clearly be perceived as modifying the preceding number, making clear that its meaning is ‘ninety degrees,' indicating that it refers to either an angle or a temperature. As such, the mark might possibly suggest to the potential purchaser that applicant's sports clothing is made for playing in especially hot weather, or indeed that the mark refers to an angle, as applicant contends.”).

Because “VISIT” was not part of the mark as filed, the remaining portion of the mark shown in the specimen, namely, THE VILLE, does not create a separate commercial impression, and the applied-for mark is not a substantially exact representation of the complete merged mark as used in commerce.  The TTAB affirmed the refusal to register.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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