Unitary Trademarks Are Inseparable

A unitary trademark is a mark whose component elements are so integrated or merged together that “a single and distinct commercial impression” is created. Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (noting that the elements of a unitary mark are “inseparable”).

The inquiry focuses 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, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)).

Slogans

For a phrase to be unitary in the trademark sense, the whole must be something more than the sum of its parts. For example, a slogan such as “HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE,” by its attention-getting nature, may be treated as unitary. But more generic or common commercial phrase such as “WHY PAY MORE!” would not function as a trademark.

The presence of verbs or prepositions often indicates a unitary phrase that would not be regarded as separable.

A verb linking a subject and an object, or by referring to something that is ongoing, may create continuity of thought or expression for a unitary phrase. TMEP 1213.05(b)(ii)(A) (“Verbs”). For example, the verb “tip” in TIP YOUR HAT, creates the commercial impression of touching or raising one’s hat as a greeting or polite gesture. Id.

Similarly, prepositions may indicate a relationship between the words in a phrase. TMEP 1213.05(b)(ii)(B) (“Prepositions”). For example, the preposition “for” in MANGOES FOR THE EARTH indicates a relationship that conveys something more than the individual words by themselves, But, in ESTEE LAUDER FOR MEN, the prepositional phrase “for men” appears descriptive and its addition does not create a distinct meaning independent of “Estee Lauder.”

Punctuation also may be relevant to determining whether a unitary mark is created. TMEP 1213.05(b)(ii)(C) (“Punctuation”). For example, the question mark at the end of “CREATIVE NAILS?” joins the words so that they function as a unit, creating a different and distinct commercial impression from the words by themselves. But the periods in “COMFY. COZY. COTTON” (for “bed sheets and blankets”) actually separates the terms and does not create a unitary mark.

Composite Marks

For a composite mark consisting of words together with a design, the mere proximity of the words to the design “does not endow the whole with a single, integrated, and distinct commercial impression.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN FORMULA and design for cosmetic products not unitary since the “elements are not so merged together that they cannot be regarded as separate” and the proximity of the words to the design feature “does not endow the whole with a single, integrated, and distinct commercial impression”).

A composite mark might be a unitary mark, however, where the design element changes the meaning of the word element. For example, a stylized “4” design in front of the word “MOM” may create a unitary mark as in “4MOM.” In re Thorley Industries, LLC, Ser. No. 90703606 (TTAB Dec. 20, 2023).

 

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.