Citable No. 28: TTAB Reverses Disclaimer Requirement and Clarifies Unitary Disclaimer Rule
There's nothing that gets the juices flowing like a new disclaimer decision, right? Well, hold onto your hat because that's just what the Board delivered in its 28th citable decision of 2006. The Board reversed a PTO requirement that Applicant Grass GmbH disclaim the phrase "SNAP ON 3000" in its mark SNAP ON 3000 AIRMATIC for furniture hardware and fittings. Instead the Board blessed Applicant's proposed disclaimer of "SNAP ON" and "3000" separately, rather than as a unitary phrase. In re Grass GmbH, 79 USPQ2d 1600 (TTAB 2006).
Applicant Grass stated that "snap on" signifies that some of its goods "are affixed by snapping them on," and that "3000" is a model number. The Examining Attorney demanded that Applicant disclaim "SNAP ON 3000" "as a unitary expression, rather than as separately disclaimed terms."
The Board noted that its precedents require that unitary expressions "be disclaimed as a composite." Thus the Board's decision "hinges" [the Board's pun, not mine] on whether "SNAP ON 3000" forms "a grammatically or otherwise unitary expression." TMEP Sec. 1213.08(b)(4th ed. 2005).
Applicant argued that "there is no grammatical connection or other nexus between "SNAP ON" and "3000" except their contiguity in the mark." It asserted that "the model number '3000' is arbitrary and therefore very different from the wording 'snap on,' which has a recognized meaning in the industry." Moreover, its proposed separate disclaimer "will allow competitors to use each of those terms individually, but ... competitors have no need to use the composite SNAP ON 3000," a combination that it coined.
The Board ruled that "SNAP ON 3000" is not a unitary expression that must be disclaimed in its entirety. It is composed of "two separable elements" that are "descriptive in different ways for different reasons." Unlike the terms GLASS TECHNOLOGY, MEDICAL DISPOSABLES, CERTIFIED HEARING AID AUDIOLOGIST, and THE RED CUP in previous cases, "[t]here is no grammatical or other inherent connection between the two terms."
Although TMEP Sec. 1213.08(b) states that "disclaimer of individual words separately will usually be appropriate only when the words being disclaimed are separated by registrable wording," the Board pointed out that this is a "guideline," not a "dispositive rule of law or the end of the inquiry."
"The issue is whether the components form a grammatically or otherwise unitary expression, not whether they are contiguous. In cases such as this, although the components in question are contiguous in the mark, they are not a unitary expression because each component retains its separate descriptive significance; the components do not merge to form a composite which has a single, unitary significance."
The Board therefore reversed the PTO's disclaimer requirement and deemed Applicant's proposed disclaimer acceptable.
Text Copyright John L. Welch 2006.