Picking Pickled Peppers: Alliteratives, Rhymes, Slogans, Double Entendres, and Incongruous Word Combinations as Trademarks
The U.S. Patent and Trademark Office (USPTO) continues to deny registration to many slogans, rhyming word combinations, double entendres, incongruous word combinations and alliterative expressions on descriptiveness grounds. In many instances, such rejections are unwarranted. However, the USPTO Examining Attorneys will not advise applicants of the ways in which such refusals of registration may be overcome.
The Trademark Manual of Examining Procedures (TMEP), the guide used by Trademark Examining Attorneys at the USPTO, has several sections that deal directly with registration of word combinations. TMEP §§ 1202.03(f)(i), 1202.04 and 1213.05(b) - (e). Those TMEP provisions can be confusing, but they often provide the basis for removing slogans, rhyming words, double entendres and alliterative word combinations from the “descriptive” category of very weak marks and placing them into the “suggestive” group of stronger ones.
One of those TMEP sections provides that slogans are generally treated as “unitary” marks. TMEP §1213.05(b). This means that the Trademark Office cannot force the owner of a slogan that is used as a trademark to break up the words and disclaim some as descriptive. As a result, slogans such as “THE MILK CHOCOLATE MELTS IN YOUR MOUTH – NOT IN YOUR HAND” by Mars and the “CAN YOU HEAR ME NOW? GOOD.” mark of Verizon Wireless have been registered without disclaimers.
Similarly, marks consisting of words that create a double entendre are susceptible to registration without disclaimer. TMEP §1213.05(c). This has permitted registration of marks such as LIGHT N’ LIVELY [In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983)] and SHEER ELEGANCE [In re Symbra’ette, Inc., 189 USPQ 448 (TTAB 1975)]. Other examples cited in the TMEP include SUGAR & SPICE for bakery products (In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968)), THE HARD LINE for mattresses and bed springs (In re Simmons Co., 189 USPQ 352 (TTAB 1976)), THE SOFT PUNCH for noncarbonated soft drinks (In re Delaware Punch Co., 186 USPQ 63 (TTAB 1975)), and NO BONES ABOUT IT for fresh pre-cooked ham (In re National Tea Co., 144 USPQ 286 (TTAB 1965)).
Marks that create an incongruity, such as URBAN SAFARI, are also considered unitary and distinctive, requiring no disclaimer of descriptive elements. TMEP §1213(d).
Marks that form rhyming patterns, use alliteration or otherwise create a distinctive auditory impression may also escape disclaimer requirements. TMEP §1213.05(e). Again, the LIGHT N’ LIVELY mark is one example of such unitary marks, as are POLY PITCHER, SOFT SMOKE, BETTER BAKED, BETTER THAN BACON, and YOU CAN’T BAG A BETTER BEAN. See e.g., In re Kraft, supra; Philip Morris Inc. v. R. J. Reynolds Tobacco Co., 207 USPQ 451, 455 (TTAB 1980) (SOFT SMOKE is suggestive, not descriptive) and Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55, 60-61 (2nd Cir. 1961) (POLY PITCHER is a suggestive mark, not descriptive).
However, not every word combination that presents an interesting linguistic twist is capable of trademark protection. Slogans or words used as mere ornamentation on products such as t-shirts and cups are denied registration. For example, in In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) the Trademark Trial and Appeal Board found that “YOU ARE SPECIAL TODAY” used on ceramic plates did not serve a trademark function. Similarly expressions such as SUMO on t-shirts and DAMN I’M GOOD on bracelets have been found to be merely decorative and not used as marks.
Likewise, expressions that are merely informative will not meet the test of constituting trademarks. Therefore, an effort to register DRIVE SAFELY failed In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998)], as did one to register THINK GREEN [In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992)].
So long as the distinctive word combination presented for registration is neither merely informative nor used in a decorative or ornamental manner, there is a good chance of overcoming a “descriptiveness” refusal of registration. Moving a mark, or its components, from the realm of descriptiveness to the stronger position of being considered suggestive or even arbitrary provides better registration rights that can be used more effectively in court when the mark needs to be protected against infringement.