Posts Tagged ‘Disclaimers’

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

Sunday, August 22nd, 2021

In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the refusal to register the mark BIG BARK for “tree care services,” unless the term BARK was disclaimed.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

Merely Descriptive/ Disclaimer Requirement – DANK TANK

Tuesday, May 11th, 2021

In a 2021 non-precedential decision, the Trademark Trial and Appeal Board affirmed a disclaimer requirement for the term DANK in the proposed mark DANK TANK for “Ale; Beer.” The Board found the term to be merely descriptive of the applicant’s goods, and therefore without the disclaimer, the proposed mark was unregistrable under §2(e)(1) and §6(a) of the Trademark Act.

Under §2(e)(1), the determination of descriptiveness of an Applicant’s mark, or portion of one, is based on three elements: (1) The relation of the term to the Applicant’s goods or services, (2) The context in which the mark is being used and (3) the possible significance the mark would have to the average purchaser because of the manner of its use or intended use, not in the abstract or on the basis of guesswork. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). If the term is found to be merely descriptive of an Applicant’s goods or services, it is considered to be an unregistrable component of the mark and must be disclaimed.

The Applicant attempted three arguments: First, the Applicant argued that neither the term DANK nor the unitary mark DANK TANK conveyed an immediate idea of the characteristics of the goods, but rather was suggestive of “a beer or ale product that does not include cannabis.” The Applicant reasoned that “customers must apply multiple mental steps, first associating the term ‘tank’ with a beverage and then associating the unitary mark ‘DANK TANK’ with a particular beverage (beer, ale) that does not include cannabis, demonstrates the suggestiveness of the mark.” Second, the Applicant argued that DANK TANK was a unitary mark for the goods at issue and therefore, it should not be dissected in order to require a disclaimer for the term DANK. In its third and final argument, the Applicant maintained that the proposed mark DANK TANK was a double entendre, because “the term ‘dank’ is used by some to refer to cannabis.”

Starting with the Applicant’s first argument, the Board turned to the definition of the term “dank” submitted by the Examining Attorney, and a third-party usage of the term, which was in line with the submitted definition. As defined on, the term “dank” “means or refers to ‘…sticky, juicy, very pungent and of a high level’ and ‘[v]ery hoppy, cloudy IPAs with high alcohol content and flavors with a very funky taste.’” Further, the Examining Attorney submitted an article from the Washington Post website that said, “…you see, cannabis and hops are relatives, and both get their flavors and aromas from compounds called terpenes. That’s why brewers like to describe super-hoppy IPAs the way that they might talk about marijuana: ‘dank,’ ‘resinous,’ ‘sticky.’” Regarding the submitted definition, the Board stated that simply because no traditional dictionary contained a definition for the term “dank,” it did not mean that the term was not merely descriptive. See In re Thomas Collators, Inc., 158 USPQ 297, 298 (TTAB 1968). Ultimately, in terms of the Applicant’s first argument, the Board concluded that the term was indeed merely descriptive of the listed goods.

Turning the Applicant’s second argument, which held that DANK TANK was a unitary mark, the Board maintained that “A mark is considered unitary when it creates a single and distinct commercial impression separate and apart from the meaning of its constituent elements.” See Dena v. Belvedere, 21 USPQ2d at 1052. Further, “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.” See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981). When looking at the Applicant’s proposed mark DANK TANK, the Board found that prospective purchasers who viewed the proposed mark would know that DANK was descriptive of the listed goods, and TANK was defined as “a usually large receptacle for holding, transporting, or storing liquids (such as water or fuel).” So, they would easily find that the proposed mark was comprised of two separate terms. Therefore, the Board concluded that the proposed mark DANK TANK was not a unitary mark and could indeed be dissected for the purpose of a required disclaimer.

Finally, the Board briefly looked at the Applicant’s last argument that the proposed mark was a double entendre. As stated in the Trademark Manual of Examining Procedure (TMEP), “For trademark purposes, a ‘double entendre’ is an expression that has a double connotation or significance as applied to the goods or services. … The multiple interpretations that make an expression a ‘double entendre’ must be associations that the public would make fairly readily.” The Applicant’s argument that the term “dank” was occasionally used to refer to cannabis was not strong enough for the Board to find a double entendre. It found that when the term “dank” was combined with “tank,” it maintained its descriptive significance in relation to the Applicant’s listed goods. So, the Board stated, “Therefore, “DANK” would be perceived by purchasers of Applicant’s ale and beer as signifying a quality, feature or characteristic of those goods resulting in no unitary meaning or double entendre imparted by DANK TANK.”

In conclusion, the Board found that the proposed mark DANK TANK was merely descriptive of the Applicant’s listed goods, it did not create a unitary mark and it did not form a double entendre, therefore, the Board affirmed the disclaimer requirement of the term “dank” under §2(e)(1) and §6(a) of the Trademark Act.

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