TMEP 1213.03(d): Entity Designations

October 2017 Edition of the TMEP

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1213.03(d)    Entity Designations

Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) or the familial business structure of an entity (e.g., "& Sons" or "Bros.") must be disclaimed because an entity designation has no source-indicating capacity. See In re Piano Factory Grp., Inc., 85 USPQ2d 1522 (TTAB 2006) (holding VOSE & SONS primarily merely a surname); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (finding "PRESS," as applied to a printing or publishing establishment, "is in the nature of a generic entity designation which is incapable of serving a source-indicating function"); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("’PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company"); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) ("the element ‘INC.’ [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark evaluation, to have no source indication or distinguishing capacity" (citing In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) )). Further, such designations must also be disclaimed in marks seeking registration on the Principal Register under §2(f) or on the Supplemental Register.

However, a disclaimer should not be required when the entity designation is used in an arbitrary manner and thus has trademark significance (e.g., THE LTD. or KIDS INCORPORATED for clothing or CHUCKLE BROS. for a comic strip). See Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as "a known word used in an unexpected or uncommon way"); TMEP §1209.01(a). Likewise, a disclaimer is unnecessary when the entity designation is part of a unitary, registrable whole (e.g., "T-MarkeyInc."). See TMEP §§1213.05–1213.05(h).