Thursday, September 09, 2010

TTAB Reverses Refusal of "CORPORATE FUEL" For Business Advisory Services, Finding Disclaimer of "CORPORATE" Unnecessary

When this Applicant declined to comply with the Examining Attorney's requirement that the word "CORPORATE" be disclaimed in the mark CORPORATE FUEL for business advisory services, a refusal to register under Section 6(a) of the Act resulted. The Board, however, found the disclaimer unnecessary and it reversed the refusal. In re Corporate Fuel Partners, LLC, Serial No. 78705685 (August 27, 2010) [not precedential].

The Examining Attorney maintained that the term CORPORATE "describes the intended users of applicant." Applicant, on the other hand, asserted that the mark "as a whole creates a unique unitary phrase."

As there is no such thing as “corporate fuel,” Applicant’s unusual combination of the adjective “CORPORATE” to modify the noun “FUEL” creates a coined phrase which has no specific meaning other than to playfully hint to Applicant’s consumers that its services will provide the unique fuel or energy needed to launch them past their competitors.

The Board observed that no disclaimer is required if a mark is unitary: if it creates a single, distinct commercial impression. When the words comprising the mark create an incongruity, the mark is unitary.

[H]ere the words CORPORATE FUEL do create a single unitary phrase that is the name of an imaginary thing. The word CORPORATE does not stand alone creating its own separate commercial impression. Rather, consumers would receive the phrase CORPORATE FUEL as a play on actual types of fuel, like jet fuel or diesel fuel.

Finally, the Board pointed out that registration of the mark "cannot serve to preclude others from making fair use of the term CORPORATE in describing their services." It therefore reversed the disclaimer requirement.

Copyright John L. Welch 2010.


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