TMEP 1213.05(b)(iii): Other Considerations

This is the October 2015 Edition of the TMEP

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1213.05(b)(iii)    Other Considerations

Even if none of the considerations discussed above apply, there may be something about the components of the mark that joins them together and transforms them into a unitary phrase or slogan. If other considerations, such as word pattern, double entendre, and incongruity (see TMEP §§1213.05(c)-1213.05(e)), or the context, rhetorical structure, or some other aspect of the mark creates a distinct meaning or commercial impression that is more than its constituent parts, the phrase should be deemed unitary for purposes of a disclaimer. For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning.

Example 1: BLACK MAGIC for “accessories for skateboards and snowboards, namely grip tape”

The wording “Black Magic” has a distinct meaning of its own as a whole. The word BLACK is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.

Example 2: NOT YOUR ORDINARY DINER for “restaurant services”

The combination formed by the familiar phrase NOT YOUR ORDINARY followed by a descriptive or generic term creates a unitary phrase. No disclaimer of DINER is required.

Example 3: CORPORATE FUEL for “business management and advisory services”

Here, the descriptive term CORPORATE and the arbitrary word FUEL combine to create a unitary phrase that is a play on actual types of fuel, like jet fuel or diesel fuel. No disclaimer of CORPORATE is required.

Note, however, that in the following examples, nothing about the components of the marks joins them together and transforms them into unitary phrases.

Example 4: SWEETER PEARS REGENCY ORCHARD for “pears”

The mark does not contain a verb, preposition, or punctuation. Except for REGENCY, all the terms are descriptive and inform about the goods, their nature, and the type of place where they are grown. That the arbitrary term REGENCY is in the middle does not connect all the words to create a unitary phrase. Therefore, SWEETER PEARS and ORCHARD must be disclaimed.

Example 5: AAMCO COMPLETE CAR CARE EXPERTS for “motor vehicle maintenance and repair services”

The arbitrary term AAMCO is not connected to the rest of the terms, since there is no verb, preposition, or punctuation. The wording COMPLETE CAR CARE EXPERTS, which is descriptive and a separable element from AAMCO, must be disclaimed.