Wednesday, July 07, 2021

TTABlog Test: Must "BARK" Be Disclaimed in "BIG BARK" for Tree Care Services?

The USPTO refused to register the mark BIG BARK for tree care services, unless the applicant disclaimed the word BARK. Applicant Corporate Green contended that a disclaimer is not required because BIG BARK is a unitary mark. Was applicant barking up the wrong tree? How do you think this appeal came out? In re Corporate Green, LLC, Application Serial No. 87519612 (June 30, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board had no doubt that "bark" is descriptive of tree care services, and Corporate Green didn't contend otherwise. [Personally, I have my doubts - ed.]. So the Board turned to the question of whether BIG BARK is a unitary mark.

A mark is unitary if its elements are unseparable. A unitary mark "has a distinct meaning of its own independent of the meaning of its constituent elements." It must create "a single and distinct commercial impression." [In short, I know it when I see it. - ed.].

The Board looked to applicant's specimen of use (depicted above).

It is apparent that, in order to determine whether what applicant seeks to register constitutes a single composite or unitary mark, one must look to the specimens filed with an application because they show the mark as used on or in connection with the goods and therefore how the average purchaser would encounter the mark under normal marketing of such goods and also suggest what the reaction of the average purchaser would be to this display of the mark.

The Board observed that the term "Big Bark" does not have a well-known or common meaning.

[T]he Examining Attorney did not submit any evidence showing the term “Big Bark” has any meaning or is used in connection with trees or tree care services. Thus, the combination of “Big” and “Bark” forming the composite mark BIG BARK has a distinct meaning of its own independent of the meaning of its constituent elements; that is, BIG BARK engenders a commercial impression separate and apart from the word “Bark.”

The Board found BIG BARK to be an incongruous term because "the combination of 'Big' and 'Bark' is illogical, out of place, or unexpected." BIG BARK is an imaginary thing, and thus the mark is incongruous. "Applicant’s clients and prospective clients will refer to Applicant’s services as BIG BARK tree services, not 'Big' tree services or 'Bark' tree services." 

The alliteration of BIG and BARK reinforces the unitary nature of the mark. See, e.g., In re Kraft, 218 USPQ 571, 573 (TTAB 1983), where the Board found LIGHT ‘N LIVELY for reduced calorie mayonnaise unitary based not only on the “alliterative lilting cadence” of the wording but also on the fact that the mark as a whole “has a suggestive significance which is distinctly different from the merely descriptive significance of the term ‘LIGHT’ per se” and that “the merely descriptive significance of the term ‘LIGHT’ is lost in the mark as a whole.”

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What if the applicant works only on big trees? If the applicant advertises on the Internet, is their byte and good as their bark, I wonder?

Text Copyright John L. Welch 2021.


At 9:37 AM, Anonymous Anonymous said...

Kuddos to the attorney on that one.

At 12:39 PM, Anonymous Anonymous said...

How is the connotation argument with a big dog on the specimen not the issue being discussed by the Board?

At 1:29 PM, Anonymous Miriam Richter said...

My first thought was that it was a double entendre and should win on that basis - I thought it was very clever but I'm being to esoteric!

At 6:27 AM, Blogger John L. Welch said...

Good question. The Board said it needed to look at the specimen of used to understand consumer perception. The double entendre is plain to see. Enlarged photo of tree bark as the background and a picture of a dog's head below the words BIG BARK.

At 8:56 AM, Anonymous Anonymous said...

The Board said it had to look at the specimen to understand consumer perception. What if this application was filed under 1(b) had not been used in commerce yet? Would the Board still found this "unitary"?

At 8:58 AM, Anonymous Anonymous said...

The bigger issue is that specimen is clearly digitally manipulated.

At 11:41 AM, Anonymous Anonymous said...

Wait a minute.

In case after case they say we don't care about what is going on in commerce; all we care about is the mark and the goods ID. Now the specimen dictates the outcome?

At 6:39 PM, Anonymous Anonymous said...

I think the naysayers are barking up the wrong tree! (just had to do this)

At 8:25 PM, Blogger Matt Pritchard said...

A picture of the truck in an OA response dated 10/29/18 looks much more legitimate - the strange image may be the result of the manner the truck wrap was itself printed.


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