Wednesday, May 11, 2022

Precedential No. 13: TTAB Reverses Disclaimer Requirement of "KID" in two Lego Marks Found to be Unitary

In what may be one of the biggest wastes of time in the history of trademark jurisprudence, the Board reversed the USPTO's requirements that LEGO disclaim the word KID, in both Latin and non-Latin characters, in the two marks shown below, for various goods and services primarily aimed at children. The Board found the two marks to be unitary, and therefore disclaimer of KID was not required. Now, does anyone think that Lego, by avoiding these disclaimers, will be able to stop others from using the word KID in connection with child-related goods and services? What's the point? In re Lego Juris A/S, 2022 USPQ2d 443 (TTAB 2022) [precedential] (Opinion by Judge Cynthia C. Lynch).

The Board observed that a composite mark is unitary if the elements of the mark "are so merged together that they cannot be viewed as separable elements, . . .  rendering a disclaimer unnecessary." In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981).

Several factors inform the unitariness analysis: the physical connection of the potentially unregistrable component to other elements of the proposed mark by lines or other design features; the relative location of the respective elements of the proposed mark; and the significance of the terminology as used on or in connection with the goods or services. Dena v. Belvedere, 21 USPQ2d at 1052; see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.05 (July 2021).


The Board found that, in each mark, the elements "merge together in a way that conveys a unitary impression." It perceptively noted that the words MONKIE and KID are physically connected to the design of a monkey’s head. The Board was unmoved by the examining attorney’s argument that the monkey head "functions as a space" that separates those two words.

Connecting elements with a design feature tends to show unitariness. Dena v. Belvedere, 21 USPQ2d at 1052. This conclusion is bolstered by the curled tail over the letter I in KID, which gives the sense that the monkey’s body is hidden behind the word KID, with the tail peeking over the top. A similar tail design also appears at the bottom right, connected to the Chinese lettering joined to the edge of the D in the word KID and to the edge of the underlining beneath MONKIE KID and the monkey head design.

What about the fact that the words MONKIE and KID are in different colors? Again, the Board was unimpressed: "The monkey head design incorporates both red and yellow, and this color scheme, like the design itself and its placement, serves to bring the words MONKIE and KID together, reinforced by the underlining of both words and the design in alternating red and yellow. We find the elements of the mark as a whole are 'so merged together that they cannot be regarded as separate.' Dena v. Belvedere, 21 USPQ2d at 1052."

The Board concluded that the monkey-related design elements and the connection of the various features "give the impression of a 'monkey kid' creature." Consumers are likely to understand KID, and its foreign equivalent, to refer to that MONKIE KID creature. In short, "a registrable term and an unregistrable term are joined together [with design elements] so as to form a mark which has a distinct non-descriptive meaning of its own …." In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983).

And so, the Board reversed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: Why precedential? What's new here? FWIW, I think the use of red for the word KID makes it stand out with a separate commercial impression.

Text Copyright John L. Welch 2022.

4 Comments:

At 8:22 AM, Blogger Gene Bolmarcich, Esq. said...

This is purely academic. What practical impact could the disclaimer have on any theoretical enforcement effort involving this mark? "A disclaimer does not remove the disclaimed matter from he mark"..or how about "consumers have no idea what is disclaimed in a registration"..and on and on..I have yet to imagine how a disclaimer ever hurts a registrant. If it's a weak term it will be considered as such whether it's disclaimed or not.

 
At 9:03 AM, Anonymous Stacey Kalamaras said...

I think this is the right decision. The USPTO's disclaimer requirement of one particular term in unitary marks is ridiculous and maybe that is the purpose of this decision being precedential. Perhaps now the Examiners will stop asking for disclaimers of one term when it's clear that two words create a one word unitary mark, especially when a design element is present. I had the exact same scenario a few years ago. We unsuccessfully argued against the disclaimer request on unitary grounds, but client did not want to appeal. I think Lego did the right thing to appeal this one. I'm thrilled with this outcome and hope it will make a difference going forward!

 
At 9:09 AM, Anonymous Anonymous said...

I personally believe that the disclaimer requirement in general is nonsense and requiring a disclaimer is a waste of time for both examiners and applicants. Like you mentioned in this post, who believes a rational person would bring an infringement action based solely on a descriptive term, when the inherently distinctive terms are completely different? Disclaimers only serve to state the obvious, namely, that a term is descriptive and anyone can use the descriptive term in their own marks. Thus, the disclaimer requirement simply delays prosecution of applications (not to mention the fact that the requirement for a disclaimer of a term is often inconsistently applied by examiners). The only standard of review that examiners should be concerned with is whether the mark as a whole is registrable; whether the components of said mark would be registrable on their own is irrelevant.

 
At 12:33 PM, Anonymous Anonymous said...

With respect to "STAR WARS" or "STAR TREK" marks for science fiction, "star" is arguably descriptive of such science fiction. But the owners of those marks are likely to fight any disclaimer requirement. This sensitivity may be specific to the entertainment space.

 

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