1213.05(b) Unitary Phrases
A phrase is “a group of words that are used together in a fixed expression,” “two or more words in sequence that form a syntactic unit that is less than a complete sentence,” and “a sequence of two or more words arranged in a grammatical construction and acting as a unit in a sentence.” MacmillanDictionary.com, search of “phrase,” http://www.macmillandictionary.com/dictionary/american/phrase (Jan. 31, 2012); The American Heritage Dictionary of the English Language 1324 (4th ed. 2006); Random House Webster’s Unabridged Dictionary 1460 (2nd ed. 2001). Acting as a “single idea” or a “syntactical unit,” however, does not necessarily mean that a phrase is “unitary” in the trademark sense. A phrase qualifies as unitary in the trademark sense only if the whole is something more than the sum of its parts. 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”).
Even where it includes an otherwise unregistrable component, a unitary phrase as a whole will have “some degree of ingenuity in its phraseology as used in connection with the goods; or [say] something a little different from what might be expected to be said about the product; or [say] an expected thing in an unexpected way.” Ex parte Mooresville Mills, Inc., 102 USPQ 440, 441 (Comm’r Pats. 1954) (holding FROM FIBER TO FABRIC FOR THE STYLE CONSCIOUS MILLIONS for fabrics capable of registration on the Supplemental Register).
Phrases must be analyzed on a case-by-case basis to determine whether their meaning and commercial impression indicate an inseparable whole. As noted above, a unitary phrase derives its meaning when viewed as a whole, with the combination of the components having a distinct commercial impression that is independent of the constituent elements. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052 (noting that the proximity of the words EUROPEAN FORMULA to the design feature “does not endow the whole with a single, integrated, and distinct commercial impression”). In some cases, in addition to the mark itself, the specific arrangement and placement of all the elements of the phrase and the manner of use and presentation on the specimen, on applicant’s website, in promotional materials, and in connection with other goods or services may all demonstrate how the phrase is presented to and perceived by consumers.
Some considerations for determining whether a phrase that comprises a mark or part of a mark is unitary are set forth below.