Disclaim ‘Bark’ in Big Bar? Or Unitary Mark?

In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the refusal to register the mark BIG BARK for “tree care services,” unless the term BARK was disclaimed.

Under §1056(a), an examining attorney may require an applicant to disclaim a component of an otherwise registrable mark. In the case at hand, the Applicant was required to disclaim the term BARK, as it is a merely descriptive term, and therefore unregistrable under §2(e)(1). The Applicant agreed that BARK was a merely descriptive term but argued that it did not require a disclaimer as it was part of the unitary mark, BIG BARK. “If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required.” Trademark Manual of Examining Procedures §1213.05 (2018).

So, the Board conducted the following analysis to determine whether or not the applied-for mark, BIG BARK, was a unitary mark. In Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991), the Federal Circuit stated that a unitary mark is made up of inseparable elements, and it must create a “single and distinct commercial impression.” Further, the Fed. Circuit explained that the test to determine a mark’s “unitariness” required the Board to determine “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.” Using the Applicant’s specimen of use, the Board began its examination of the mark.  Starting with each separate term, it found that BIG was the modifying adjective for BARK, and that used together, the applied-for mark BIG BARK had no well-known meaning in connection with trees, or tree care services. Therefore, the Board found that the mark BIG BARK had a distinct meaning, independent of its individual components, and gave a commercial impression separate from the term BARK, alone. Turning to the commercial impression of the applied-for mark, the Board found it likely that clients, and potential clients, would refer to the Applicant’s services as BIG BARK tree services, opposed to either “Big” tree services or “Bark” tree services. As such, the Board found that the applied-for mark BIG BARK had a “suggestive significance wholly distinct from the merely descriptive significance of the term ‘BARK.’” It found that consumers would not go through the mental process of breaking apart the two terms but would see the applied-for mark as a unitary term. Further, the Board found that the alliteration of the two first letters would reinforce the likelihood that consumers were likely to see the term as a composite and not rely on one term or the other as the dominant portion of the mark.

In conclusion, the Board found that the applied-for mark BIG BARK was a unitary mark, and an incongruous term “because the combination of ‘BIG’ and ‘BARK’ is illogical, out of place, or unexpected.” So, the Board reversed the §1056(a) registration refusal and found that the Applicant was indeed able to register the mark without disclaiming the term “bark,” as it was a component of a unitary mark.

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