TMEP 1213.05(b)(ii)(C): Punctuation

October 2017 Edition of the TMEP

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1213.05(b)(ii)(C)    Punctuation

The use of punctuation, such as a question mark, exclamation point, colon, dash, or period, as well as the meaning of the punctuation itself, may be a factor weighing either in favor of or against a mark or a portion of a mark being a unitary phrase or slogan. Note, however, that the presence of punctuation in a mark comprising a slogan or phrase should not be confused with the significance of punctuation in a mark containing compound words that are formed using punctuation. See TMEP §1213.05(a)(ii). Punctuation may either unite or separate all or some of the words in the mark. Where punctuation unites all the words, the mark or phrase as a whole is likely unitary. Where punctuation separates some of the words, however, the result likely indicates a mark or phrase that is not unitary, requiring disclaimer or refusal of the unregistrable matter. Therefore, the punctuation in the mark must be considered in connection with an assessment of the specific arrangement of the words and the overall meaning and commercial impression of the slogan or phrase.

Example 1: CREATIVE NAILS? for "nail polish"

A question mark can be "used to indicate a direct question" or "express surprise, disbelief, or uncertainty." The Chicago Manual of Style ¶ 6.66 (16th ed. 2010). Here, the question mark at the end of the phrase joins the terms so that they function as a unit, thereby changing the commercial impression. No disclaimer of NAILS is required.

Example 2: GO! PUZZLE for "computer games software"

An exclamation point can be used to indicate "an outcry or an emphatic or ironic comment." Id. ¶ 6.71. It is usually placed at the end of a thought and indicates the conclusion of that thought. Here, the exclamation point is in the middle of the mark and physically separates GO and PUZZLE. The exclamation point also conceptually separates GO from PUZZLE because it gives GO a commanding and urgent connotation not applied to PUZZLE. Since PUZZLE is outside of the exclamatory statement and is descriptive for the goods, it is not united with GO. Disclaimer of PUZZLE is required.

Example 3: COMFY. COZY. COTTON for "bed sheets and blankets"

In this example, the period after each term physically and conceptually separates the terms such that each stands alone. Therefore, the wording does not comprise a unitary mark and a disclaimer of COTTON is required.

Example 4: NAA – NATIONAL ASSOCIATION OF ACCOUNTANTS for "association services, namely, promoting the interests of accountants"

Here, the punctuation physically and conceptually separates the wording in the mark. Moreover, the phrase NATIONAL ASSOCIATION OF ACCOUNTANTS is descriptive and must be disclaimed.

Example 5: BONDS – THE FUTURE OF INVESTING for "financial planning"

The punctuation physically and conceptually separates the wording in the mark and a disclaimer of BONDS is required. Note, however, that THE FUTURE OF INVESTING is a unitary phrase, avoiding a disclaimer of INVESTING.

In some cases, the use of punctuation in combination with a verb and/or preposition may combine to create a unitary phrase or a mark with a distinct meaning independent of the meaning of the separate elements, as shown below:

HAVE YOU HAD YOUR MEDS TODAY? for "prescription pills for diabetics"

PAPER FOR YOUR OFFICE. TO YOUR OFFICE. for "retail store services featuring office products"

WHERE SNACKS LOVE TO DIP! for "dips"

GO FOR GOLD! for "gold jewelry"