As stated in section 1213.05 "Unitary" Marks of the Trademark Manual of Examination Procedure:

A mark or portion of a mark is considered "unitary" when it creates a commercial impression separate and apart from any unregistrable component. That is, the elements are so merged together that they cannot be divided to be regarded as separable elements. If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required.

The examining attorney must consider a number of factors in determining whether matter is part of a single or unitary mark: whether it is physically connected by lines or other design features; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp. v. Belvedere Int'l Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).

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. An example is the term "Black Magic," which 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.

In the following cases, marks were considered unitary: B. Kuppenheimer & Co., Inc. v. Kayser-Roth Corp., 326 F.2d 820, 822, 140 USPQ 262, 263 (C.C.P.A. 1964) (KUPPENHEIMER and SUP-PANTS combined so that they shared the double "P," making "an indivisible symbol rather than two divisible words"); In re Hampshire-Designers, Inc., 199 USPQ 383 (TTAB 1978) (DESIGNERS PLUS+ for sweaters held unitary; thus, no disclaimer of "DESIGNERS" deemed necessary); In re J.R. Carlson Laboratories, Inc., 183 USPQ 509 (TTAB 1974) (E GEM for bath oil containing vitamin E held unitary; thus, no disclaimer of "E").

In the following cases, marks were found not to be unitary: In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006) (trade dress 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, with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device held not unitary); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007) (ZOGGS TOGGS for clothing not unitary; requirement for disclaimer of "TOGGS" affirmed); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006) (GALA ROUGE for wine not unitary; requirement for disclaimer of "ROUGE" affirmed); Dena Corp., supra (EUROPEAN FORMULA above a circular design on a dark square or background considered not unitary); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (LEAN LINE for low calorie foods considered not unitary; requirement for disclaimer of "LEAN" held proper); In re IBP, Inc., 228 USPQ 303 (TTAB 1985) (IBP SELECT TRIM for pork considered not unitary; refusal of registration in the absence of a disclaimer of "SELECT TRIM" affirmed); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (UNIROYAL STEEL/GLAS for vehicle tires considered not unitary; requirement for disclaimer of "STEEL/GLAS" deemed appropriate); In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (PHACTS POCKET PROFILE, for personal medication history summary and record forms, considered 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 National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) (PRESTO BURGER for electrical cooking utensils not unitary; requirement for disclaimer of "BURGER" affirmed).

The examining attorney must exercise discretion in determining whether a mark or portion of a mark is unitary, in which case a disclaimer of a nondistinctive component should not be required. It is not always easy to articulate why matter is unitary. However, if one cannot spell out exactly why a mark is unitary, then the mark is probably not unitary and nondistinctive elements within the mark must be disclaimed. In general, a mark is unitary if the whole is something more than the sum of its parts.

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  • Definition: Unitary Mark.
    • In re Brown-Forman Corporation, Serial No. 78638129, (TTAB 2006).
      • A mark is unitary when "its elements are inseparable," i.e., they "combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements.
  • A trademark application may only seek to register a single mark.
    • In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002).
      • Under the Lanham Act and the rules promulgated thereunder, a trademark application may only seek to register a single mark. See In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999), and authority cited therein.
  • The "separated by registrable wording" standard is helpful in determining whether the matter in question is unitary; it is not in itself a dispositive rule of law or the end of the inquiry. The issue is whether the components form a grammatically or otherwise unitary expression, not whether they are contiguous.
    • In re Grass GmbH, Serial No. 76544861, (TTAB 2006).
      • As noted above, TMEP §1213.08(b) states that "…disclaimer of individual words separately will usually be appropriate only when the words being disclaimed are separated by registrable wording." We deem this "separated by registrable wording" standard to be a guideline that often will be helpful in determining whether the matter in question is unitary; it is not in itself a dispositive rule of law or the end of the inquiry. The issue is whether the components form a grammatically or otherwise unitary expression, not whether they are contiguous. In cases such as this, although the components in question are contiguous in the mark, they are not a unitary expression because each component retains its separate descriptive significance; the components do not merge to form a composite which has a single, unitary significance.
  • A mark which may vary in both color and pattern and is designed to vary is unacceptable in that it describes more than one mark.
    • In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002).
      • Because the charts which embody the applied-for mark not only will vary in color pattern, but are designed to vary, and because the description of the mark reflects this variation in pattern, the Examining Attorney asserts that applicants are seeking to register more than one mark, and thus the description is unacceptable. We affirm the refusal to register on the basis that applicants' description of the mark is unacceptable in that it describes more than one mark.
  • A mark make be found to refer to more than one mark based on such a claim in the description of the mark in the application.
    • In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002).
      • The description of the mark submitted by applicants refers to more than one mark. It specifically states that "the drawing shows a representative pattern of the colors claimed but no claim is made to a particular pattern of the three colors."
  • The test for unitariness requires a determination as to how the average purchaser would encounter the mark under normal marketing of such goods and also ... what the reaction of the average purchaser would be to this display of the mark.
    • In re Brown-Forman Corporation, Serial No. 78638129, (TTAB 2006).
      • In other words, a unitary mark must create a single and distinct commercial impression. This test for unitariness requires the Board to determine "how the average purchaser would encounter the mark under normal marketing of such goods and also ... what the reaction of the average purchaser would be to this display of the mark."" Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991), quoting from In re Magic Muffler Serv., 184 USPQ 1225, 126 (TTAB 1974).
  • A mark which exists and has meaning only as part of applicant's current marketing campaign or motif is not part of the mark sought to be registered, as it could be changed or abandoned at any time, leaving simply the words of the mark.
    • In re Brown-Forman Corporation, Serial No. 78638129, (TTAB 2006).
      • GALA ROUGE, by contrast, has no pre-existing and well-recognized meaning or significance, but exists and has meaning only as part of applicant's current marketing campaign as reflected on its website. That marketing campaign or motif is not part of the mark sought to be registered, and it could be changed or abandoned at any time, leaving simply the words of the mark, GALA ROUGE. Cf. In re The Place Inc., 76 USPQ2d 1467, 1471-72 (TTAB 2005)(trade dress and other marketing indicia which are not part of the mark sought to be registered (THE GREATEST BAR) cannot be considered in determining whether mark is a double entendre).
  • It is unavailing to argue that a mark should be considered as a single mark as long as all variations fit within the characterization of the description.
    • In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002).
      • We disagree with applicants' statement that a mark should be considered as a single mark as long as all variations fit within the characterization of the description, and we disagree that the Presley case is applicable only for the proposition that an applicant may register only a single mark in an application.
  • Case Finding: The mere grammatical coherence of "red gala" does not suffice to make GALA ROUGE a unitary expression in the eyes of purchasers.
    • In re Brown-Forman Corporation, Serial No. 78638129, (TTAB 2006).
      • Outside of applicant's marketing campaign, there is no such thing as a "red bash" or the concept of "partying red," and purchasers therefore are unlikely to accord that meaning to GALA ROUGE. The mere grammatical coherence of "red gala" does not suffice to make GALA ROUGE a unitary expression in the eyes of purchasers.
    • In re Brown-Forman Corporation, Serial No. 78638129, (TTAB 2006).
      • For these reasons, we find that purchasers will not view GALA ROUGE as a unitary expression. We instead find that purchasers encountering GALA ROUGE, as applied to wine, will view GALA as the brand name, and ROUGE as the color or type of wine. Applicant's combining of GALA with ROUGE does not suffice to eliminate or negate the merely descriptive significance of ROUGE as applied to wine, and ROUGE therefore must be disclaimed apart from the mark as shown.
  • Case Finding: We find that SNAP ON 3000 is not a unitary expression which must be disclaimed in its entirety.
    • In re Grass GmbH, Serial No. 76544861, (TTAB 2006).
      • Thus, our determination in this case hinges on whether SNAP ON 3000, as it appears in applicant's mark SNAP ON 3000 AIRMATIC, forms "a grammatically or otherwise unitary expression." Id.
    • In re Grass GmbH, Serial No. 76544861, (TTAB 2006).
      • We find that SNAP ON 3000 is not a unitary expression which must be disclaimed in its entirety. Unlike the expressions at issue in the previously-cited cases, i.e., GLASS TECHNOLOGY, MEDICAL DISPOSABLES, CERTIFIED HEARING AID AUDIOLOGIST, and THE RED CUP, which are grammatically coherent and intact phrases, SNAP ON 3000 is composed of two separable elements, i.e., the descriptive wording SNAP ON and the model number 3000. These two components are descriptive in different ways and for different reasons; they do not form a grammatically or otherwise unitary whole with a single descriptive significance. SNAP ON denotes a feature of the goods, and then, separately, 3000 denotes a model number for the goods. There is no grammatical or other inherent connection between the two terms.
  • Case Finding: A mark for "the likeness and image of Elvis Presley" was unacceptable because it encompassed more than one mark.
    • In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002).
      • In In re Elvis Presley Enterprises Inc., 50 USPQ2d 1632 (TTAB 1999), the applicant therein sought to register as a mark "the likeness and image of Elvis Presley." The Board found that a drawing consisting of such description, which would include all of the different poses of Elvis Presley, encompassed more than one mark and was, therefore, unacceptable.
  • In order to make this constructive notice meaningful, the mark, as registered, must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark.
    • In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002).
      • In any event, to the extent that there has been any inconsistency in Office practice with respect to such marks, that inconsistency has been put to rest with the Federal Circuit's decision in In re International Flavors & Fragrances Inc., supra. In that opinion the Court clearly stated that one of the primary purposes of federal registration is to provide notice to potential users of the same or a confusingly similar mark. In order to make this constructive notice meaningful, the mark, as registered, must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark. 51 USPQ2d at 1517.
    • In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002).
      • Although the Court was discussing the registration of "phantom" marks in that case, its reasoning applies to the present situation in which applicants are attempting to claim as their mark an unlimited number of pattern variations. "Phantom" marks with missing elements encompass too many combinations and permutations to make a thorough and effective search possible. The registration of such marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration.
In re Brown-Forman Corporation, Serial No. 78638129, (TTAB 2006) In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002) In re Ralph E. Hayes, Jr. and Gregory K. Clodfelter, DBA Alpha Consulting, Serial No. 75/554,641, (TTAB 2002) Grand Total
In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005) 1 1
In re Elvis Presley Enterprises Inc., 50 USPQ2d 1632 (TTAB 1999) 1
In re International Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513 (Fed. Cir. 1999) 1
Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991) 1
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) 1
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) 1
In re Magic Muffler Serv., 184 USPQ 1225 (TTAB 1974) 1
Grand Total 3 2 2 7
No Statutes Listed.