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)