TMEP 1213.05(b)(ii)(D): Possessives

This is the October 2015 Edition of the TMEP

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1213.05(b)(ii)(D)    Possessives

Generally, the use of a possessive form of a word in a mark does not, by itself, merge the wording so as to create the commercial impression of a unitary phrase or slogan. However, if the mark contains the possessive form of a word as well as one of the considerations discussed above, this combination of the elements may result in a slogan or unitary phrase.

Example 1: BILL’S CARPETS for “retail carpet stores”

The possessive form of BILL’S alone is not sufficient to unite BILL’S with CARPETS such that the whole is more than the sum of its parts. Disclaimer of CARPETS is required.

Example 2: BILL’S IS CARPETS for “retail carpet stores”

The possessive BILL’S does not, by itself, unite BILL’S with CARPETS. However, the presence of the verb IS unites all the words to convey a complete thought that functions as a unit and expresses a fanciful state of being. No disclaimer of CARPETS is required.

Some other examples of wording in which the possessive does not create a unitary phrase and disclaimer of the descriptive wording is required are:

THE CHILDREN’S PLACE for “clothing”; “backpacks”; “retail stores” (disclaimer of CHILDREN’s required)

BARB’S BREAD BAKERY, INC. for “bakery services” (disclaimer of BREAD BAKERY, INC. required)

HUBER'S PREMIUM WORKWEAR for “clothing” (disclaimer of PREMIUM WORKWEAR required)