In its application to register the mark HARRY & DAVID POP! POPCORN for popcorn, Harry and David, LLC disclaimed the word POPCORN but declined to disclaim the term POP! POPCORN, arguing that POP! does not merely describe a feature of the "applied-for" goods. The USPTO refused to register the mark because of that failure to disclaim. How do you think Harry and David's appeal came out? In re Harry and David, LLC, Serial No. 97680254 (October 17, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).
"Merely descriptive terms are unregistrable under Trademark Act Section 2(e)(1), and therefore are subject to disclaimer if the mark is otherwise registrable." Trademark Act Section 6(a). "Failure to comply with a disclaimer requirement is a ground for refusal of registration."
However, a disclaimer is not required "if the term is combined or merged together with other elements of a composite mark, so that they form a unitary whole having a distinct meaning that itself is not merely descriptive."
A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.
Dictionary evidence submitted by both the Examining Attorney and Harry and David indicated that one of the definitions of “pop” is “to cause to explode or burst open,” as in “popped some popcorn." That was not the end of the inquiry, however.
The Board found that the HARRY & DAVID POP! portion of the subject mark forms a unitary, nondescriptive expression such that disclaimer of exclusive rights in POP! POPCORN is not required.
Notably, POP! immediately follows the words HARRY & DAVID. In this location, the term POP!, with its exclamation point, forms an interjection, modifying and linking the preceding words together in a distinct grammatical phrase, HARRY & DAVID POP! *** The exclamation point sets these words apart, physically and conceptually, from the trailing word POPCORN, which is generic for the applied-for goods.
The Board noted several other definitions for the word "pop," including "a small portion of something that makes a vivid impression, "something such as a color that looks very bright and noticeable next to something else," and "power or strength." The alternative definitions further supported the Board's conclusion that HARRY & DAVID POP! has “a distinct meaning of its own independent of the meaning of its constituent elements” because the phrase indicates "a source of a handy snack, striking flavors and/or memorable treats or gift items."
And so, the Board reversed the refusal to register.
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TTABlogger comment: How did you do? I think there should have been two disclaimers: one for POP! and one for POPCORN, rather than one disclaimer of POP! POPCORN. The packaging supports my approach.
PS: I don't like the term "applied-for goods." How does one apply for goods?
Text Copyright John L. Welch 2024.
Not really a unitary mark.
ReplyDeleteAnd I'd have rejected the specimen because it doesn't show the applied for mark in use, as evidenced by the fact that the applicant chose to put the TM symbol only on "POP!"
But we can all surmise the trademark counsel came along and said, "You're not going to get a registration for "POP!" for popcorn, so let's apply to register the whole "unitary mark." Thus, if they had to disclaim "POP!," it would defeat the entire purpose since they already have HARRY & DAVID registered and it'd be an admission that the piece of the mark they were actually trying to protect is merely descriptive.
Given the applicant's obvious initial goal of protecting "POP!" solus, this is somewhat of a pyrrhic victory.