By Ashley N. Barendse

Associate Attorney with Dunlap, Bennett & Ludwig that primarily provides client counseling on trademark registration issues.

 

The Pennsylvania State University recently learned that despite recognition by sports fans that “Happy Valley” refers to Penn State, the United States Patent and Trademark Office did not have to render a “Happy” decision when evaluating their proposed trademark for this phrase.

Penn State filed the current application on December 4, 2018, for “headwear; shirts; [and] sweatshirts.”  On March 11, 2019, the examining attorney for this application issued a substantive refusal for the trademark based on geographic descriptiveness – finding that the phrase “Happy Valley” was a commonly used nickname for the college’s location, State College, PA – and ornamental use, indicating that rather as a source indicator for the goods, “Happy Valley” was ornamental advertising for the name.  As in this case, an ornamental refusal is commonly issued when the proposed trademark is shown on the front of the clothing, not a label or tag that would serve to advise customers of the source of the goods.  A helpful guide for how to determine the best specimen for your application can be found here.

Penn State has until September 11, 2019, to file a response to this office action.  If no response is received, the application will be deemed “abandoned.”  In its application, Penn State alleged use in commerce from at least September 1, 2013.  Based on this usage, the examining attorney offered that the University could claim “acquired distinctiveness” for the name, meaning that the University understands that this is descriptive, but then claims that consumers in the marketplace would associate the phrase with Penn State.  This is often seen as a concession that the mark is not distinctive on its own, but this amendment would help keep the application on the Principal Register.  Otherwise, the University would be able to file arguments against the refusal to state why it is not geographically descriptive but otherwise used as a source indicator.

The phrase “Happy Valley” was previously trademarked by Nittany Embroidery & Digitizing, Inc. for similar goods.  This application also received a geographically descriptive refusal, but the owner opted for registration on the Supplemental Register.  Their registration lapsed after the owner failed to file maintenance documents showing that the name was still in use for these products.

As shown above, navigating trademark decisions can be less “Happy Valley” and more “Valley of the Shadow of Death.”  Trusting an experienced trademark attorney to help you make the best decision for your trademark helps you get the protection that you need to secure your mark in commerce.  The attorneys at Dunlap, Bennett & Ludwig are here to assist you with your trademark questions, big or small!

 

Posted in: Intellectual Property - Trademarks