TTABlog Test: Is PENNSTATE HEALTH Primarily Geographically Descriptive of Health Care Services?

The USPTO refused to register the proposed mark PENNSTATE HEALTH in standard character form, for various educational, research, and health care services, finding it to be primarily geographically descriptive under Section 2(e)(2). The Office refused to register the word-and-design mark shown below absent a disclaimer of that same phrase, for the same services. The Examining Attorney pointed out that the applicant had disclaimed "PENN STATE" in some of its registrations, or claimed acquired distinctiveness. Applicant argued that "Penn State" is not a nickname for the Commonwealth of Pennsylvania, but rather for the University. How do you think this came out? In re The Pennsylvania State University, Serial Nos. 88311154 and 88311234 (March 9, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson].

 
In order to establish a violation of Section 2(e)(2), the USPTO must show that:
 

1. the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public; 
2. the source of the goods or services is the place named in the mark; and 
3. the public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place. 

 
A geographic nickname, like "Big Apple" or "Motown," or an abbreviation or other variant of the name of a geographic location is treated the same as the actual geographic name.

Here, there was no question that the services are rendered in Pennsylvania, nor that a services-place association would be made by consumers if the mark, as a whole, "projects a geographic significance." And so the main issue here concerned the first prong of the Section 2(e)(2) test: whether the primary significance of the term PENNSTATE connotes "a place generally known to the relevant American public." 

The Examining Attorney contended that PENN is a common abbreviation for Pennsylvania and STATE describes one of the fifty states, and so "by definition the combination of words, 'PENN' and 'STATE' describes a geographic location." Applicant maintained that "the 'primary' significance of PENNSTATE in the minds of potential purchasers is unquestionably as the well-known nickname for the applicant Penn State."

The Board agreed with applicant that the unitary term "PENNSTATE" is not a generally known geographic location. Dictionary and acronym definitions for "Penn" and "Penn." were inconclusive, "referring equally to Pennsylvania, Admiral Penn and his son, and the University of Pennsylvania." As to the disclaimers and Section 2(f) claims in applicant's other registrations, the Board noted the term PENNSTATE (as opposed to the two-word PENN STATE) was treated as unitary, without disclaimer or 2(f) claim.

Third-party website references overwhelmingly referred to the applicant. None of the articles or search results use "PENN" or "PENN." as an abbreviation for Pennsylvania. 

The Board concluded that the USPTO had failed to establish that PENNSTATE is the name of a place known generally to the public. The primary significance of PENNSTATE, the Board found, is to refer to Applicant.

The Board noted that any doubt on the question must be resolved in applicant's favor, leaving others who disagree, the option of opposing the application when published.

And so the Board reversed both refusals.

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TTABlogger comment: What if the evidence showed that people in Pennsylvania perceive PENNSTATE as referring to the University, but nationwide, consumers of the identified services see PENNSTATE as referring to the "state" of Pennsylvania? Wouldn't that justify the refusal?

Text Copyright John L. Welch 2021.