TMEP 1213.05(h): Unitary Marks: Case References

This is the October 2015 Edition of the TMEP

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1213.05(h)    Unitary Marks: Case References

In the following cases, marks were considered unitary: B. Kuppenheimer & Co., v. Kayser-Roth Corp., 326 F.2d 820, 822, 140 USPQ 262, 263 (C.C.P.A. 1964) (holding that KUPPENHEIMER and SUP-PANTS were combined so that they shared the double “P,” making “an indivisible symbol rather than two divisible words”); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) (finding that purchasers would regard LIGHT N’LIVELY as a unitary mark); In re Hampshire-Designers, Inc., 199 USPQ 383, 384 (TTAB 1978) (holding DESIGNERS PLUS+ for sweaters unitary); In re J.R. Carlson Labs., Inc., 183 USPQ 509, 511 (TTAB 1974) (holding E GEM unitary for bath oil containing vitamin E ).

In the following cases, marks were found not to be unitary: In re Slokevage, 441 F.3d 957, 963 78 USPQ2d 1395, 1400 (Fed. Cir. 2006) (holding not unitary trade dress mark for clothing consisting of a label with the words “FLASH DARE!” in a V-shaped background and cut-out areas located on each side of the label); Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052 (holding EUROPEAN FORMULA above a circular design on a dark square or background not unitary); In re Ginc UK Ltd., 90 USPQ2d 1472, 1476 (TTAB 2007) (holding ZOGGS TOGGS for clothing not unitary and affirming requirement for disclaimer of “TOGGS”); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006) (holding GALA ROUGE for wine not unitary and affirming requirement for disclaimer of “ROUGE”); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (holding LEAN LINE for low calorie foods not unitary; requirement for disclaimer of “LEAN” held proper); In re IBP, Inc., 228 USPQ 303 (TTAB 1985) (holding IBP SELECT TRIM for pork not unitary; refusal of registration in the absence of a disclaimer of “SELECT TRIM” affirmed); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (holding UNIROYAL STEEL/GLAS for vehicle tires not unitary; requirement for disclaimer of “STEEL/GLAS” deemed appropriate); In re EBS Data Processing, 212 USPQ at 966 (TTAB 1981) (holding PHACTS POCKET PROFILE, for personal medication history summary and record forms, not unitary; refusal to register in the absence of a disclaimer of “POCKET PROFILE” affirmed. “A disclaimer of a descriptive portion of a composite mark is unnecessary only where the form or degree of integration of that element in the composite makes it obvious that no claim other than of the composite would be involved. That is, if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary.”); In re Nat’l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977) (holding PRESTO BURGER for electrical cooking utensils not unitary; requirement for disclaimer of “BURGER” affirmed).