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Exclaimation Point Creates Unitary Mark

Posted by James Juo | Oct 22, 2024 | 0 Comments

Where an applied-for trademark contains a merely descriptive term, the USPTO may require the applicant to "disclaim" that component of the mark. See, e.g., In re Omaha Nat'l Corp., 819 F.2d 1117, 1119-20 (Fed. Cir. 1987) (affirming disclaimer requirement for "first tier" in the mark FirsTier & design for use in connection with banking services). Failure to comply with a disclaimer requirement is a ground for refusal of registration. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed. Cir. 2015) (USPTO can condition registration of a mark on disclaimer of unregistrable component). 

A disclaimer of an otherwise unregistrable element is not required, however, if the term is combined or merged together with other elements of a composite mark, so that they form a unitary whole having a distinct meaning that itself is not merely descriptive. In re Slokevage, 441 F.3d 957, 962 (Fed. Cir. 2006) (citation omiited). A unitary mark creates "a single and distinct commercial impression" such that it is "an inseparatable whole." Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1560 (Fed. Cir. 1991). A disclaimer is not required because there is no separatable unregisterable component in a unitary mark. 

Recently, for the mark HARRY & DAVID POP! POPCORN for popcorn, it was undisputed that it was proper to require a disclaimer of the word "POPCORN" but not for the term "POP! POPCORN." In re Harry and David, LLC, Serial No. 97680254 (TTAB Oct. 17, 2024) (not precedent). 

     Here, the HARRY & DAVID POP! portion of the mark HARRY & DAVID POP! POPCORN forms a unitary, nondescriptive expression such that disclaimer of exclusive rights in POP! POPCORN is not required under the facts of this case; the present disclaimer of POPCORN suffices. Notably, POP! immediately follows the words HARRY & DAVID. In this location, the term POP!, with its exclamation point, forms an interjection, modifying and linking the preceding words together in a distinct grammatical phrase, HARRY & DAVID POP! See, e.g., In re Tires, Tires, Tires, Inc., Serial No. 77091459, 2009 TTAB LEXIS 654, at *10 (TTAB 2009) (critical factor in determining if words constitute a unitary phrase “is that the two or more words serve to modify each other and enhance the meaning of the composite”). The exclamation point sets these words apart, physically and conceptually, from the trailing word POPCORN, which is generic for the applied-for goods.

The TTAB further noted that while the word "pop" could indicate a quality, characteristic or feature of popcorn--"pop" could also mean to push, put, or thrust suddenly or briefly; to go, come, or appear suddenly; to be or become striking or prominent; a small portion of something that makes a vivid impression; something such as a color that looks very bright and noticeable next to something else; or power or strength. 

     These meanings of “pop,” when considered in the applied-for mark HARRY & DAVID POP! POPCORN and in relation to the identified popcorn and popcorn products, further support our finding that HARRY & DAVID POP! is a unitary expression with “a distinct meaning of its own independent of the meaning of its constituent elements,” Dena Corp., 950 F.2d at 1561, indicating the source of a handy snack, striking flavors and/or memorable treats or gift items. The words HARRY & DAVID POP! thus “function as a unit, with each relating to the other rather than directly to the goods.” In re Kraft, Inc., Serial No. 73283428, 1983 TTAB LEXIS 134, at *4 (TTAB 1983).

Thus, the TTAB reversed the disclaimer requirement for the term "POP! POPCORN" because the phrase HARRY & DAVID POP! was a unitary expression. 

The TTABlog  commented that, in view of the actual use of the mark on the packaging, there instead should have been two disclaimers: one for POP! and one for POPCORN, rather than one disclaimer of POP! POPCORN. The specimen of use presented the mark on three separate lines, with "HARRY & DAVID" on one line, "POP!" on the second line, and "POPCORN" on the third line--where all three used different fonts.  

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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