TMEP 1213.05(a): Compound Word Marks

October 2017 Edition of the TMEP

Previous: §1213.05 | Next: §1213.05(a)(i)

1213.05(a)    Compound Word Marks

A compound word mark is comprised of two or more distinct words (or words and syllables) that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, and PULSAIR).

If a compound word mark consists of an unregistrable component and a registrable component combined into a single word, no disclaimer of the unregistrable component of the compound word will be required. See In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (finding that "[a] disclaimer of a descriptive portion of a composite mark is unnecessary... if the elements are so merged together that they cannot be regarded as separable elements... for example,... by combining two words or terms, one of which would be unregistrable by itself...").

If a composite mark consists of a compound word combined with arbitrary matter, and the compound word is unregistrable, a disclaimer of the compound word may be required. The form of the disclaimer of the compound word – that is, whether the disclaimed portion of the mark appears as one compound word or as two or more distinct words – should be consistent with the evidence of descriptiveness. If the compound word itself (with no spaces) is used descriptively, it should be disclaimed in that form. Otherwise, the disclaimed portion should appear as two or more distinct words, separated by spaces. See TMEP §1213.08(c) regarding disclaimer of misspelled words.

See TMEP §807.12(e) regarding drawings of compound word marks.