What Are Unitary Trademarks

Unitary Trademarks

A unitary trademark is a type of trademark the collective meaning or commercial impression of which is independent of the individual meanings of its parts. Unitary phrases might have one or more unregistrable words or elements; however, to be registrable as trademarks, they must have at least one distinguishing part that allows the phrase in toto to be registered.

Types of Unitary Marks

The examining attorney has to consider some things before deciding whether a mark is single or unitary e.g. the location of the elements in the mark, the connotations of the words used in relation to the brand,and the meaning of the mark as a whole. Several different kinds of terms and phrases can make for registrable unitary marks. The most common ones are as follows.

1. Compound Words: The new word formedd by the combination of two or more distinct words is called a compound word. Its meaning might be entirely new or related to the words from which it is derived. Such a word can be registered as a unitary mark if at least one of its elements is registrable. For example, Maximachine, Proshot, and Pulselight. The elements of these words do not require to be disclaimed.

2. Telescoped Terms: A telescoped word is formed by the merging of two distinct words such that some of their letters are shared in the final combined word. They can also be registered as trademarks. The individual elements of such marks do not need disclaimers. For example, Vitaminsurance, Chocone, and Superinse.

3. Double Entendres: A double entendre is a phrase or term that can be interpreted in multiple ways. One of the connotations is apparent, whereas the other is less obvious and is often intended to be humorous. If such a mark is to be registered, at least one of the meanings must be non-generic. This meaning should be such that the customers can readily make a connection between the mark and the brand upon seeing the former. For example, The Soft Punch and Sugar and Spice are double entendres for non-carbonated soft drinks and bakery products, respectively.

4. Marks That Create an Incongruity: Some marks consist of elements that would not be registrable under ordinary circumstances. However,when used together, the elements form an incongruity i.e. these words would normally not be used together in a single term. For example, Sno-rake and Urban Safari are trademarks for a handheld snow-removing tool and recreational parks, respectively.

Trademark Disclaimers

In relation to trademark prosecution, disclaimers are official statements recorded in the application by the applicant to declare that he or she does not lay claim to any exclusive rights to the indicated portion of the mark. It indicates that some part/s of your mark can not be registered.  Descriptive, generic, and nonspecific parts of a mark are often the ones to be disclaimed. Disclaimers make it harder to enforce your trademark rights. So, steering clear of disclaimers is an important step in getting a strong trademark registered. The following are the two main ways in which this can be done.

1. If an application has been rejected, or you are required to disclaim portions of the mark, the best bet is to contend that the mark is unitary. This mark should go to the Principal Register pursuant to the Trademark Manual of Examining Procedure §1213.05. For example, a word that is merely descriptive may be combined with a term that is distinctive in connection with the brand or company and the services they offer. The unitary mark formed by this combination will then be considered registrable. This principle was made clear in the case of J. R. Carlson Laboratories, Inc. in 1974. The bath oil named E Gem was named so because it contained vitamin E. The company argued that this name was unitary, thus, there was no need to disclaim the “E”. However, if the combination does not create a distinct commercial impression, the requirement of a disclaimer still stands. For example, in the legal case of Lean Line, Inc in 1986, the phrase Lean Line used as a mark for a range of low-calorie eatables was declared to be not a unitary mark. Thus, the word “Lean” needed to be disclaimed.

2. If your mark lacks even a single registrable term, it must have a unique and distinguishing design or logo. Something must be added to the unregistrable parts of the mark to meet the requirements of registration.

Determining which parts of a mark are distinctive and whether a mark qualifies as a unitary mark is extremely difficult for the inexperienced to judge prior to trademark prosecution. So, hiring a trademark counsel for advice is always a good idea to avoid problems during this process. If you need help in filing your application at the USPTO, do consider contacting us at Trademark Counsels for a courtesy consultation.