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.