1213.05(b) Unitary Phrases
A phrase is "a group of words that are used together in a fixed expression," "two or more words in sequence that form a syntactic unit that is less than a complete sentence," and "a sequence of two or more words arranged in a grammatical construction and acting as a unit in a sentence." MacmillanDictionary.com, search of "phrase," http://www.macmillandictionary.com/dictionary/american/phrase (Jan. 31, 2012); The American Heritage Dictionary of the English Language 1324 (4th ed. 2006); Random House Webster’s Unabridged Dictionary 1460 (2nd ed. 2001). Acting as a "single idea" or a "syntactical unit," however, does not necessarily mean that a phrase is "unitary" in the trademark sense. A phrase qualifies as unitary in the trademark sense only if the whole is something more than the sum of its parts. Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN FORMULA and design for cosmetic products not unitary since the "elements are not so merged together that they cannot be regarded as separate" and the proximity of the words to the design feature "does not endow the whole with a single, integrated, and distinct commercial impression").
Even where it includes an otherwise unregistrable component, a unitary phrase as a whole will have "some degree of ingenuity in its phraseology as used in connection with the goods; or [say] something a little different from what might be expected to be said about the product; or [say] an expected thing in an unexpected way." Ex parte Mooresville Mills, Inc., 102 USPQ 440, 441 (Comm’r Pats. 1954) (holding FROM FIBER TO FABRIC FOR THE STYLE CONSCIOUS MILLIONS for fabrics capable of registration on the Supplemental Register).
Phrases must be analyzed on a case-by-case basis to determine whether their meaning and commercial impression indicate an inseparable whole. As noted above, a unitary phrase derives its meaning when viewed as a whole, with the combination of the components having a distinct commercial impression that is independent of the constituent elements. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052 (noting that the proximity of the words EUROPEAN FORMULA to the design feature "does not endow the whole with a single, integrated, and distinct commercial impression"). In some cases, in addition to the mark itself, the specific arrangement and placement of all the elements of the phrase and the manner of use and presentation on the specimen, on applicant’s website, in promotional materials, and in connection with other goods or services may all demonstrate how the phrase is presented to and perceived by consumers.
Some considerations for determining whether a phrase that comprises a mark or part of a mark is unitary are set forth below.
1213.05(b)(i) Slogans
A slogan is a type of phrase and is defined as "a brief attention-getting phrase used in advertising or promotion" and "a catch phrase used to advertise a product." Merriam-Webster.com, search of "slogan," http://www.merriam-webster.com/dictionary/slogan (Jan. 31, 2012); Webster’s New World College Dictionary (4th ed. 2010). A registrable slogan is one that is used in a trademark sense and functions as a trademark or service mark on the Principal or Supplemental Register, including the Principal Register under §2(f). Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970) (holding that the mark HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE for hair tinting, dyeing, coloring preparations had become distinctive of the goods and was registrable); In re The Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (holding QUALITY THROUGH CRAFTSMANSHIP registrable for radio receivers and transmitters, power supplies, and antennae). Slogans, by their attention-getting nature, are treated as unitary matter and must not be broken up for purposes of requiring a disclaimer.
However, if a mark consists entirely of a slogan that is generic, merely descriptive, merely informational, or that is otherwise not being used as a mark, registration must be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (holding AMERICA’S FRESHEST ICE CREAM for flavored ices, ice cream, etc., incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (holding WHY PAY MORE! for supermarket services to be an unregistrable common commercial phrase); see TMEP 1213.05(b)(iii).
If an unregistrable slogan is a component of a mark with registrable matter, the examining attorney must require that the slogan be disclaimed.
1213.05(b)(ii) Grammar and Punctuation
Grammatical structure and punctuation may play a part in the analysis of whether a phrase or slogan would be viewed as unitary. Such considerations serve as guidelines rather than dispositive factors and the weight to be given each depends upon the overall meaning and commercial impression of the mark.
1213.05(b)(ii)(A) Verbs
A verb expresses an action (e.g., play, run, and sing) or a state of being (e.g., is, are, seem, become, and happen). See Merriam-Webster.com, search of "verb," http://www.merriam-webster.com/dictionary/verb (Jan. 31, 2012). The presence of a verb may indicate that a mark or portion of a mark is a unitary phrase or slogan by linking a subject and an object, or by referring to something that is ongoing, thereby creating continuity of thought or expression. See Chicagomanualofstyle.org, search of "verb," http://www.chicagomanualofstyle.org/16/ch05/ch05_sec096.html (Jan. 31, 2012).
Example 1: TIP YOUR HAT for "hats"
When linked with the phrase YOUR HAT, the verb TIP renders the mark as a unitary phrase that creates the commercial impression of touching or raising a hat as a greeting or polite gesture. No disclaimer of HAT is required.
Example 2: TRANSFORMING STATE GOVERNMENT for "providing information in the field of state governments"
The verb TRANSFORMING indicates an ongoing activity being performed on STATE GOVERNMENT, thereby unifying the terms so that they function as a unit. No disclaimer of STATE GOVERNMENT is required.
Some additional examples of phrases in which the verb renders the phrase unitary are:
FILING TAXES SO YOU DON"T HAVE TO for "tax preparation"
BOATS ARE FUN for "boats"
TAKE THIS MEDICINE for "cough syrup"
See TMEP §1213.05(b)(ii)(B) for examples in which the combination of a verb and a preposition link the wording to create a unitary phrase.
1213.05(b)(ii)(B) Prepositional Phrases
A preposition is "a word that usually comes before a noun or a pronoun and shows its relation to another part of the sentence." MacmillanDictionary.com, search of "preposition," http://www.macmillandictionary.com/dictionary/american/preposition (Jan. 31, 2012). Examples of prepositions include above, at, before, between, by, for, from, in, into, of, on, since, through, to, toward, until, and with. Chicagomanualofstyle.org, search of "preposition," http://www.chicagomanualofstyle.org/16/ch05/ch05_sec170.html (Jan. 31, 2012). Moreover, a preposition "links an object and an antecedent to show the relationship between them." Chicagomanualofstyle.org, search of "preposition," http://www.chicagomanualofstyle.org/16/ch05/ch05_sec169.html (Jan. 31, 2012). The relation or connection may be to indicate a spatial relationship, location, time, cause, means, or possession. Chicagomanualofstyle.org, search of "preposition," http://www.chicagomanualofstyle.org/16/ch05/ch05_sec174.html (Jan, 31, 2012). A prepositional phrase is the combination of the "preposition, its object, and any words that modify the object," for example, "over the hill," "in the sports car," or "near her." Chicagomanualofstyle.org, search of "prepositional phrase," http://www.chicagomanualofstyle.org/16/ch05/ch05_sec173.html (Jan 31, 2012); see MacmillanDictionary.com, search of "prepositional phrase," http://www.macmillandictionary.com/dictionary/american/prepositional-phrase (Jan. 31, 2012).
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: MANGOS FOR THE EARTH for "fresh mangos"
The preposition FOR joins THE EARTH with MANGOS, indicating a relationship between the wording. MANGOS 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 MANGOS is required.
Example 2: A DAY OF HOPE FOR HEART DISEASE for "conducting workshops relating to 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 "conducting seminars in mixology"
MENTORS FOR COMPLETE TEACHING for "remedial tutoring program 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 "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 nondownloadable 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"
1213.05(b)(ii)(C) Punctuation
The use of punctuation, such as a question mark, exclamation point, colon, dash, or period, as well as the meaning of the punctuation itself, may be a factor weighing either in favor of or against a mark or a portion of a mark being a unitary phrase or slogan. Note, however, that the presence of punctuation in a mark comprising a slogan or phrase should not be confused with the significance of punctuation in a mark containing compound words that are formed using punctuation. See TMEP §1213.05(a)(ii). Punctuation may either unite or separate all or some of the words in the mark. Where punctuation unites all the words, the mark or phrase as a whole is likely unitary. Where punctuation separates some of the words, however, the result likely indicates a mark or phrase that is not unitary, requiring disclaimer or refusal of the unregistrable matter. Therefore, the punctuation in the mark must be considered in connection with an assessment of the specific arrangement of the words and the overall meaning and commercial impression of the slogan or phrase.
Example 1: CREATIVE NAILS? for "nail polish"
A question mark is generally used at the conclusion of a sentence to indicate a direct question. Merriam-Webster.com, search of "question mark," http://www.merriam-webster.com/dictionary/question+mark (Jan. 31, 2012). Here, the question mark at the end of the phrase joins the terms so that they function as a unit, thereby changing the commercial impression. No disclaimer of NAILS is required.
Example 2: GO! PUZZLE for "computer games software"
An exclamation point is used after an interjection or exclamation to indicate a forceful utterance or strong feeling. Merriam-Webster.com, search of "exclamation point," http://www.merriam-webster.com/dictionary/exclamation+point (Jan. 31, 2012). It is usually placed at the end of a thought and indicates the conclusion of that thought. Here, the exclamation point is in the middle of the mark and physically separates GO and PUZZLE. The exclamation point also conceptually separates GO from PUZZLE because it gives GO a commanding and urgent connotation not applied to PUZZLE. Since PUZZLE is outside of the exclamatory statement and is descriptive for the goods, it is not united with GO. Disclaimer of PUZZLE is required.
Example 3: COMFY. COZY. COTTON for "bed sheets and blankets"
In this example, the period after each term physically and conceptually separates the terms such that each stands alone. Therefore, the wording does not comprise a unitary mark and a disclaimer of COTTON is required.
Example 4: NAA – NATIONAL ASSOCIATION OF ACCOUNTANTS for "association services, namely, promoting the interests of accountants"
Here, the punctuation physically and conceptually separates the wording in the mark. Moreover, the phrase NATIONAL ASSOCIATION OF ACCOUNTANTS is descriptive and must be disclaimed.
Example 5: BONDS – THE FUTURE OF INVESTING for "financial planning"
The punctuation physically and conceptually separates the wording in the mark and a disclaimer of BONDS is required. Note, however, that THE FUTURE OF INVESTING is a unitary phrase, avoiding a disclaimer of INVESTING.
In some cases, the use of punctuation in combination with a verb and/or preposition may combine to create a unitary phrase or a mark with a distinct meaning independent of the meaning of the separate elements, as shown below:
HAVE YOU HAD YOUR MEDS TODAY? for "prescription pills for diabetics"
PAPER FOR YOUR OFFICE. TO YOUR OFFICE. for "retail store services featuring office products"
WHERE SNACKS LOVE TO DIP! for "dips"
GO FOR GOLD! for "gold jewelry"
1213.05(b)(ii)(D) Possessives
Generally, the use of a possessive form of a word in a mark does not, by itself, merge the wording so as to create the commercial impression of a unitary phrase or slogan. However, if the mark contains the possessive form of a word as well as one of the considerations discussed above, this combination of the elements may result in a slogan or unitary phrase.
Example 1: BILL’S CARPETS for "retail carpet stores"
The possessive form of BILL’S alone is not sufficient to unite BILL’S with CARPETS such that the whole is more than the sum of its parts. Disclaimer of CARPETS is required.
Example 2: BILL’S IS CARPETS for "retail carpet stores"
The possessive BILL’S does not, by itself, unite BILL’S with CARPETS. However, the presence of the verb IS unites all the words to convey a complete thought that functions as a unit and expresses a fanciful state of being. No disclaimer of CARPETS is required.
Some other examples of wording in which the possessive does not create a unitary phrase and disclaimer of the descriptive wording is required are:
THE CHILDREN’S PLACE for "clothing"; "backpacks"; "retail stores" (disclaimer of CHILDREN’s required)
BARB’S BREAD BAKERY, INC. for "bakery services" (disclaimer of BREAD BAKERY, INC. required)
HUBER"S PREMIUM WORKWEAR for "clothing" (disclaimer of PREMIUM WORKWEAR required)
1213.05(b)(iii) Other Considerations
Even if none of the considerations discussed above apply, there may be something about the components of the mark that joins them together and transforms them into a unitary phrase or slogan. If other considerations, such as word pattern, double entendre, and incongruity (see TMEP §§1213.05(c)-1213.05(e)), or the context, rhetorical structure, or some other aspect of the mark creates a distinct meaning or commercial impression that is more than its constituent parts, the phrase should be deemed unitary for purposes of a disclaimer. For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning.
Example 1: BLACK MAGIC for "accessories for skateboards and snowboards, namely grip tape"
The wording "Black Magic" has a distinct meaning of its own as a whole. The word BLACK is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.
Example 2: NOT YOUR ORDINARY DINER for "restaurant services"
The combination formed by the familiar phrase NOT YOUR ORDINARY followed by a descriptive or generic term creates a unitary phrase. No disclaimer of DINER is required.
Example 3: CORPORATE FUEL for "business management and advisory services"
Here, the descriptive term CORPORATE and the arbitrary word FUEL combine to create a unitary phrase that is a play on actual types of fuel, like jet fuel or diesel fuel. No disclaimer of CORPORATE is required.
Note, however, that in the following examples, nothing about the components of the marks joins them together and transforms them into unitary phrases.
Example 4: SWEETER PEARS REGENCY ORCHARD for "pears"
The mark does not contain a verb, preposition, or punctuation. Except for REGENCY, all the terms are descriptive and inform about the goods, their nature, and the type of place where they are grown. That the arbitrary term REGENCY is in the middle does not connect all the words to create a unitary phrase. Therefore, SWEETER PEARS and ORCHARD must be disclaimed.
Example 5: AAMCO COMPLETE CAR CARE EXPERTS for "motor vehicle maintenance and repair services"
The arbitrary term AAMCO is not connected to the rest of the terms, since there is no verb, preposition, or punctuation. The wording COMPLETE CAR CARE EXPERTS, which is descriptive and a separable element from AAMCO, must be disclaimed.
1213.05(b)(iv) Unregistrable Unitary Phrases or Slogans
Although the determination that a mark or portion of a mark is unitary may provide an exception to the disclaimer requirement, when an entire unitary phrase or slogan is generic, descriptive, or merely informational, it remains unregistrable. To illustrate, "common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry" are unregistrable despite the fact that they may be unitary phrases or slogans. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale); In re Remington Prods. Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM for flavored ices); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD for construction material); see also TMEP §§1209.03(s) and 1202.04. Therefore, unless a unitary phrase or slogan otherwise meets all requirements for registrability, it must be disclaimed or refused registration, as appropriate.