The U.S. Patent and Trademark Office may require a disclaimer of an unregistrable component of an applied-for trademark that is otherwise registerable. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir. 2015); In re Stereotaxis Inc., 429 F.3d 1039 (Fed. Cir. 2005); In re Am. Furniture Warehouse Co., 126 USPQ2d 1400 (TTAB 2018).

For a unitary trademark, however, a disclaimer is unnecessary. In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981). A trademark is considered “unitary” when the elements of a mark are so integrated or merged together that they cannot be regarded as separable. Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555 (Fed. Cir. 1991) (“a unitary mark simply has no ‘unregistrable component,' but is instead an inseparable whole”).

Factors to consider in the unitariness analysis are: 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. The focus is on “how the average purchaser would encounter the mark under normal marketing of such goods and also … what the reaction of the average purchaser would be to this display of the mark.” Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1561 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)).

The Trademark Trial and Appeal Board (“TTAB”) recently addressed an ex parte appeal of a refusal to register MONKIE KID and design, where the applicant would not agree to a disclaimer for part of the applied-for mark. In re Lego Juris A/S, Serial Nos. 88698784 and 88698804 (May 9, 2022).

One of the applications included the following description:

The mark consists of the wording “MONKIE” in a stylized yellow font, outlined in black with red highlights, followed by “KID” in a stylized red font, outlined in black with a red highlight and also having a stylized yellow dot of the letter “I”. Between the two words is a stylized illustration of a monkey's head outlined in yellow and black and a red highlight, with a black head and red face, yellow eyebrows, white outline of its face below its eyebrows, black eyes signified by upward-pointing arches, black triangle nose, and a wide band of white teeth. On either end of the row of teeth is a red ear. Below all of this is an underline outlined in black with a red highlight that, for its first and fourth quarters, is colored yellow with red and yellow stripes at either end. In between, the underline is colored red. To the right of these elements are a series of yellow non-Latin characters outlined in black. The remaining white in the mark represents background and is not a claimed feature of the mark.

The application also contains a statement that the non-Latin characters in the mark transliterate to “WU KONG XIAO XIA” and “this means ‘MONKIE KID' in English.”

The applied-for goods and services included Class 9 goods including DVDs featuring children's entertainment, Class 16 goods including children's publications, and Class 41 services including “providing amusement facilities being a game place for children.”

The trademark examining attorney required a disclaimer of “KID” because it merely described the intended users of the goods and services.

On appeal, the TTAB disagreed, finding that the marks were unitary. For example, “the words MONKIE and KID are physically connected to the design of a monkey's head, which touches and slightly overlaps with the final letter of MONKIE and the first letter of KID.” In addition, the TTAB noted “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.”

The monkey-related design elements and the connection of the various features combine to give the impression of a “monkey kid” creature. Thus, potential purchasers are likely to understand KID, and its foreign equivalent, to refer to the MONKIE KID creature named and depicted in the mark. In this way, “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).

The following passage from EBS Data Processing was quoted by the TTAB as illustrating the unitariness exception to the disclaimer requirement:

This may occur where, for example, a compound word is formed by combining two words or terms, one of which would be unregistrable by itself, or when a compound word is formed by hyphenating two words or terms, one of which would be unregistrable by itself, or where a descriptive term is combined with a non-descriptive term so as to form a mark which has a distinct non-descriptive meaning of its own as a whole, [See: In re Continental Distilling Corporation, 117 USPQ 300 (CCPA 1958)], or where the words which have been put together function as a unit, each part relating to the other parts and not directly to the goods. See: Morehouse Manufacturing Corporation v. J. Strickland and Company, 160 USPQ 715 (CCPA 1969).

The TTAB concluded that the word “kid,” when combined with the other elements of the mark, formed “an ‘inseparable whole,' [and are] exempted from the disclaimer requirement ….” In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006).

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.