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Trademark or Geography?

Penn State Happy Valley Edition - Part II

Welcome back to Creative Law Studio #TMTuesday If you’re wondering what the updates on the Happy Valley trademark case are, you are not alone. I am also excited to read the rebuttal arguments, but we will likely wait this one out for a few months or more. The U.S. Patent and Trademark Office provides a six-month window for the submission of the rebuttal argument, so this is likely the last I will discuss this case until the rebuttal is submitted.

If you’re sipping your coffee and finding yourself confused about the last paragraph, check out last week’s blog post here. Last Tuesday’s post focused on Penn State’s trademark application for “Happy Valley” and the subsequent office action. At the end of last week, we left off with that very exciting #TMcliffhanger

You may recall that the trademark application for “Happy Valley” was met with an office action from the U.S. examining attorney. Office actions are incredibly common, and in fact, if this office action were placed on a trademark application for a less famous name, we wouldn’t even be discussing it. But because this is news of my alma mater and has made headline news, I would find myself remiss to not add it to this blog. And while office actions are common, I find this particular one quite interesting, as it blends several great legal areas, including federal statutes, common trademark law and trademark procedure.

As a reminder, Penn State’s Happy Valley trademark application was initially rejected because the applied-for mark is considered to be primarily geographically descriptive of the goods to be marked. On its face, it may seem that this case is cut and dry. If the law doesn’t allow geographic names (even geographic nicknames) to be registered as trademarks, then doesn’t Penn State just have a loser application?

While it may seem like the end of the road for the Happy Valley trademark, there is an exception to every rule. For most office actions, there is typically a section of The Lanham Act that can be used to rebut the examining attorney’s office action opinion. As mentioned last week, in my opinion, the examining attorney got this one correct. I agree, that “Happy Valley” is a nickname that commonly refers to a geographic region, and is therefore ineligible for trademark registration. But while this is true, it is also true that Penn State has been using the phrase “Happy Valley” for several years, and the phrase has become distinct and well known to consumers. Enter “Acquired Distinctiveness” stage right.

Acquired distinctiveness is personally one of my favorite arguments to rebut an office action with. Of course, it doesn’t work for all office actions, but it can be quite successful in several types of office actions. This argument says, “hey U.S. Trademark Office, maybe our applied-for mark doesn’t fit the requirements for trademark registration; but this mark is so distinct and has grown such a consumer following, that it would be poor policy to deny it registration.”

When argued and filed correctly, while meeting the required evidentiary standards, an acquired distinctiveness argument can be the best magic for otherwise ineligible marks. I have been able to successfully argue acquired distinctiveness in several different types of office actions, including for the revival of a cancelled trademark. Did you know that a trademark registration isn’t necessarily forever? I think this is a great topic for another day, but for purposes of this discussion, just know that every trademark has a maintenance schedule, and if deadlines are not met, the trademark will lapse.

Once upon a time, I inherited a case where the client’s prior law firm and attorney failed to file the required renewal of its mark. The trademark had lapsed, and the only option I had was to start with a whole new application. In my mind, this was an easy case: (i) the mark had prior registration; (ii) the mark had evidence of the prior registration; (iii) the mark continued in commerce throughout the life of the trademark; (iv) the mark continued in commerce after cancellation; and (v) no one else had asserted trademark rights over the same mark during the cancellation. Imagine my surprise when I received an office action containing nearly endless pages of evidence and exhibits to support the U.S. examining attorney’s case.

The examining attorney argued that the word mark was merely descriptive of the product, and therefore, did not meet trademark standards. As a little background, typically words that merely describe a good or service are not eligible for trademark registration. In reference to the discussion in last week’s post, this is to ensure registrations do not interfere with free speech and commerce. After reading the argument and mountains of evidence, I realized that even though this mark had prior registration, it really was just merely descriptive of the product. As I pondered how I would break the news to the client, who had several merchandising contracts riding on this trademark, I began forming the argument in my mind.

As I ran basic, online searches of the product, I found that this good had indeed acquired a great deal of distinctiveness. The product had a fan-base that was not just local to the client, but a fan-base writing glowing reviews of the product from all corners of the country. As much as I would love to discuss the details of the argument and the submitted evidence, I doubt most readers here want to know the ins and outs of the evidence, and secondly, I shouldn’t reveal my secrets. I submitted the office action response with no lack of supporting evidence that this product had acquired distinctiveness and to refuse the mark’s revival would be against public policy. Six months later, I received news that the mark had been approved for registration.

I tell this story for three reasons. First, it shows that even though “Happy Valley” is not eligible for registration on the base rule of law; it is likely eligible for registration under an exception to the law. Of course this is assuming acquired distinctiveness is argued correctly with substantial evidentiary support. Second, the story shows that trademark law is not a science, but an art that must be interpreted. As my case illustrated, one examining attorney might find an applied-for mark to be immediately register-able, while another examining attorney can find the opposite. Often times the success of an application depends on which desk at the U.S. Patent and Trademark Office the file lands on. And last, I have read plenty of discussions in the intellectual property world that have been quite critical of the attorney representing the mark. Let’s be clear that applying for a mark for “Happy Valley” was not wrong. Whether or not an examining attorney will find an applied-for mark sufficient or not is sometimes difficult to predict. All of us practicing in this area of law have received similar surprise office actions. I prefer to err on the side of not criticizing the work of other trademark attorneys. Viewing the case post-office action is a very different experience than viewing it pre-application.

As we come to the end the Happy Valley discussion, I reference one other part of last week’s post. You might recall that I mentioned the “Happy Valley” application was initially rejected on two separate grounds. In the interest of keeping this post shorter, I will simply state that the second ground was based on an insufficient specimen. Blue bleeders worry not – in comparison to the argument above, this will be the easy part for Penn State’s attorney.

In conclusion, please know that this and last week’s blog are substantially shallow discussions of the law involved in this case. As you might imagine, there are several factors in play and even several forms of law. I have restricted the post to statutory law, while there are certainly grand underpinnings of common law available for future arguments. In the event the trademark is granted and Penn State asserts rights against private retailers selling Happy Valley apparel, those retailers will likely have strong arguments to assert common law rights over the trademark. Also, while I might tag some posts as “substantive trademark law” it doesn’t mean I am attempting to publish a legal treatise or become a secondary research source. At this early point, I am writing mostly for my clients and future clients, and the “substantive trademark law” tag is simply to inform readers that they may learn a little something. It also alerts readers to the fact that the post is probably too long.

That being said, trademark or not – the Valley is Happy.

Disclaimer: This blog/website is intended to be published for educational and entertainment purposes and to give readers a general idea of the law of trademark. This blog/website is not intended to give any specific legal advice or to target a specific person. Readership of this blog cannot create an attorney-client relationship between you and the publisher. This blog should never be used to substitute the seeking out of personal, legal advice. The discussion of an existing or potential trademark shall not be taken as an endorsement by creative law studio, nor shall the same be taken as an endorsement of creative law studio. The discussion of specific

trademarks does not mean that creative law studio is a record attorney for such trademarks.

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