1213.05(g)   Marks with Design Elements Replacing Letters

Generally, when a design element replaces one or more letters (or a portion of a letter or letters) in a word that is merely descriptive, generic, or geographically descriptive, this combination of word and design element does not create a "unitary mark" if the word remains recognizable. Accordingly, the examining attorney must require a disclaimer of the merely descriptive, generic, or geographically descriptive word in such cases. See In re Clutter Control, Inc., 231 USPQ 588, 590 (TTAB 1986).

If the wording to be disclaimed is otherwise registrable (i.e., not generic), applicant may submit a claim of acquired distinctiveness as to that portion of the mark under Trademark Act §2(f). The examining attorney must always separately determine whether an applicant has adequately shown acquired distinctiveness. See In re Venturi, Inc., 197 USPQ 714, 717 (TTAB 1977).

The examining attorney must also assess whether the proposed mark might be unitary for other reasons (such as a compound or telescoped mark).

1213.05(g)(i)   Marks with a Distinctive Design Replacing a Letter in Descriptive or Generic Wording

Marks with a distinctive design that replaces a letter or part of a letter are registrable on the Principal Register with a disclaimer of the merely descriptive, generic, or primarily geographically descriptive wording. For example:

The words Jelly Bean Wool. The two O's in wool are represented by sheep.

Principal Register – Disclaimer of "WOOL"

The words Flapjack, Inc. Animal Food. The "N" in animal is represented by a donkey.

Principal Register – Disclaimer of "INC." and "ANIMAL FOOD"

The words Numbskull Clothing Co. The "O" in clothing is represented by the image of a skull and crossed bones.

Principal Register – Disclaimer of "CLOTHING CO."

The words Hot Paris. The "A" in Paris is represented by the image of the Eiffel Tower.

Principal Register – Disclaimer of "PARIS"

The word Pony. The letter "P" in Pony is represented by the image of a pony's head.

Principal Register – Disclaimer of "PONY"

The words Fish Flips. The dots over the "I" in both words are represented by the images of fish.

Principal Register – Disclaimer of "FISH"

The word Kids. The "I" in Kids is represented by the image of small children.

Principal Register – Disclaimer of "KIDS"

The words Lisa Corrado Nutrition. The "O" in the word Nutrition is represented by the image of an apple.

Principal Register – Disclaimer of "NUTRITION"

The words Outdoor Towels. The center of the letter "O" in Outdoor is in the shape of a tree.

Principal Register – Disclaimer of "TOWELS"

The words Doggie Rewards. The "O" in Doggie is represented by the image of a dog's paw print.

Principal Register – Disclaimer of "DOGGIE"

1213.05(g)(ii)   Marks with Merely Descriptive or Primarily Geographically Descriptive Designs Replacing Letters within Descriptive or Primarily Geographically Descriptive Wording

If the design that replaces a letter within descriptive or primarily geographically descriptive wording is itself merely descriptive or primarily geographically descriptive, or is otherwise nondistinctive, the examining attorney must require the applicant to amend to the Supplemental Register or seek registration on the Principal Register under §2(f) and to disclaim any generic wording. For example:

The words National Bankers Association. The letter "S" in each word is represented by the dollar sign.

Disclaim "BANKERS ASSOCIATION" on Principal Register under §2(f) or on Supplemental Register

The words Connecticut Builders Association. The "O" in Connecticut is represented by a shaded image in the shape of the state of Connecticut.

Disclaim "BUILDERS ASSOCIATION" on Principal Register under §2(f) or on Supplemental Register

The words National Check Cashers. The last letter "S" in the word Cashers is represented by the dollar sign.

Disclaim "CHECK CASHERS" on Principal Register under §2(f) or on Supplemental Register

1213.05(g)(iii)   Marks with Accurate Pictorial Representations Replacing Letters in Merely Descriptive and Primarily Geographically Descriptive Marks

If the mark is otherwise merely descriptive or primarily geographically descriptive, and the design replacing a letter is an accurate pictorial representation of generic, merely descriptive, or geographically descriptive matter, the examining attorney must require the applicant to amend to the Supplemental Register or seek registration on the Principal Register under Trademark Act §2(f). The applicant must disclaim any generic wording or any accurate pictorial representation of generic matter. For example:

The words Best Soccer Balls. The letter "O" in soccer is represented by the image of a soccer ball.

Disclaim "SOCCER BALLS" and the pictorial representation of the soccer ball on the Principal Register under §2(f) or on the Supplemental Register

1213.05(g)(iv)   Unitary Marks with Design Elements Replacing Letters in Descriptive or Generic Wording

If literal and design elements in a mark are so merged together that they cannot be divided or regarded as separable elements, these elements may be considered unitary. For example, where the design element replacing a letter is merely one part of a larger design, the mark may be unitary, and no disclaimer of the descriptive or generic wording is required:

The words Cycle Customizing. The words are joined together, forming the shape of a motorcycle.
The word "metrobike." The words are joined together with the letters "o" and "b" forming the wheels of a bicycle and a design element forming the frame, handles, and seat.

1213.05(h)   Unitary Marks: Case References

In the following cases, marks were considered unitary: B. Kuppenheimer & Co., v. Kayser-Roth Corp., 326 F.2d 820, 822, 140 USPQ 262, 263 (C.C.P.A. 1964) (holding that KUPPENHEIMER and SUP-PANTS were combined so that they shared the double "P," making "an indivisible symbol rather than two divisible words"); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) (finding that purchasers would regard LIGHT N’LIVELY as a unitary mark); In re Hampshire-Designers, Inc., 199 USPQ 383, 384 (TTAB 1978) (holding DESIGNERS PLUS+ for sweaters unitary); In re J.R. Carlson Labs., Inc., 183 USPQ 509, 511 (TTAB 1974) (holding E GEM unitary for bath oil containing vitamin E ).

In the following cases, marks were found not to be unitary: In re Slokevage, 441 F.3d 957, 963 78 USPQ2d 1395, 1400 (Fed. Cir. 2006) (holding not unitary trade dress mark for clothing consisting of a label with the words "FLASH DARE!" in a V-shaped background and cut-out areas located on each side of the label); Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052 (holding EUROPEAN FORMULA above a circular design on a dark square or background not unitary); In re Ginc UK Ltd., 90 USPQ2d 1472, 1476 (TTAB 2007) (holding ZOGGS TOGGS for clothing not unitary and affirming requirement for disclaimer of "TOGGS"); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006) (holding GALA ROUGE for wine not unitary and affirming requirement for disclaimer of "ROUGE"); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (holding LEAN LINE for low calorie foods not unitary; requirement for disclaimer of "LEAN" held proper); In re IBP, Inc., 228 USPQ 303 (TTAB 1985) (holding IBP SELECT TRIM for pork not unitary; refusal of registration in the absence of a disclaimer of "SELECT TRIM" affirmed); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (holding UNIROYAL STEEL/GLAS for vehicle tires not unitary; requirement for disclaimer of "STEEL/GLAS" deemed appropriate); In re EBS Data Processing, 212 USPQ at 966 (TTAB 1981) (holding PHACTS POCKET PROFILE, for personal medication history summary and record forms, not unitary; refusal to register in the absence of a disclaimer of "POCKET PROFILE" affirmed. "A disclaimer of a descriptive portion of a composite mark is unnecessary only where the form or degree of integration of that element in the composite makes it obvious that no claim other than of the composite would be involved. That is, if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary."); In re Nat’l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977) (holding PRESTO BURGER for electrical cooking utensils not unitary; requirement for disclaimer of "BURGER" affirmed).