1213.05(b)(ii)(B) Prepositional Phrases
Prepositions are words or phrases that link a grammatical object–such as a noun, pronoun, verb, adjective, or phrase–to another word to indicate the relationship between them. See The Chicago Manual of Style ¶ 5.169 (16th ed. 2010). For instance, the relationship could be one of space, location, time, cause, means, or possession. See id. ¶ 5.174. Examples of prepositions include above, at, before, between, by, for, from, in, into, of, on, since, through, to, toward, until, and with. See id. ¶ 5.170. A prepositional phrase is the combination of the "preposition, its object, and any words that modify the object," such as "over the hill," "in the sports car," or "near her." See id. ¶ 5.173.
Wording in a mark that comprises a prepositional phrase is generally connected or unified by the preposition(s) in such a way that the elements would not be regarded as separable. In addition, marks comprised of prepositional phrases often have the commercial impression of a catch phrase or slogan. In some instances, however, marks contain distinctive matter followed by unitary prepositional phrases that are informational or descriptive, and these prepositional phrases are separable from the rest of the mark and must be disclaimed. Common examples include "of" followed by a geographic place name (e.g., "of Atlanta") and "for" followed by a consumer designation (e.g., "for children").
Example 1: MANGOES FOR THE EARTH for "fresh mangoes"
The preposition FOR joins THE EARTH with MANGOES, indicating a relationship between the wording. MANGOES is not separable because the prepositional phrase modifying it brings all the wording in the mark together to convey something more than the individual components. No disclaimer of MANGOES is required.
Example 2: A DAY OF HOPE FOR HEART DISEASE for "educational services, namely, conducting workshops in the field of heart disease"
The prepositions OF and FOR create two prepositional phrases joined as a unit that could be viewed as a catch phrase. No disclaimer of HEART DISEASE is required.
Example 3: ESTEE LAUDER FOR MEN for "cologne"
The descriptive prepositional phrase FOR MEN appears separable from the rest of the mark and does not create a distinct meaning independent of the meaning of the separate elements. Disclaimer of FOR MEN is required.
Some additional examples of phrases in which the preposition renders the phrase unitary are:
TALES OF THE COCKTAIL for "educational services, namely, conducting seminars in the field of mixology"
MENTORS FOR COMPLETE TEACHING for "conducting remedial tutoring programs for children in the areas mathematics and science"
CHECK UP FROM THE NECK UP for "medical services"
LANGUAGE OF LOLLIPOPS for "candy"
DEPARTMENT OF THE NAVY for "printed newsletters in the field of military science"
A DIVISION OF XYZ INDUSTRIES for "construction of buildings"
In some cases, the combination of a verb and a preposition link the wording to create a unitary phrase. For example:
GET MORE FROM ENERGY for "providing temporary use of online non-downloadable software for computing energy savings"
CHANGING THE WORLD OF SUSHI for "restaurant services"
WOMEN WHO RUN FROM COMPUTERS for "computer education training using multisensoral methods, group process and drama to motivate those with computer anxiety or fear"