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A Minnowsotan Perspective on TM Disclaimers

Posted in Advertising, Articles, Branding, Marketing, Trademarks, USPTO

There is at least one more 2018 Rapala billboard out there, just netted this one over the weekend:

Rapala’s clever Minnowsotan billboard inspired me to cast a few lines about the law concerning trademark disclaimers, as they often reel in some great questions from branding professionals.

Tim did a helpful post on trademark disclaimers, guiding why the USPTO requires them, their legal implications, and encouraging brand owners to properly resist them when they are unwarranted.

Let’s suppose Rapala sought to register Minnowsotan as a trademark for fishing lures. Putting aside wondering whether this little fish might ever attack, Rapala should lose no sleep wondering whether it would be required to disclaim “minnow” from the would-be Minnowsota trademark. No.

While it is true that “minnow” is an element of Minnowsotan, and there should be little debate that “minnow” is either descriptive or generic for a fishing lure depicting a minnow, a disclaimer is not required under the law by the USPTO when the applied-for mark is unitary (TMEP 1213.05):

“The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable.”

“A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.”

Using Minnowsotan as a trademark school hypothetical, it would be a pretty clear example of unitariness — with no need for a disclaimer, but what about Minnow Spoon for fishing lures?

In other words, is Minnow Spoon unitary for a fishing lure that depicts a minnow on a spoon lure?

Perhaps a cloudier answer than for Minnowsota, but usually two-word marks without compression, telescoping, or hyphenation, will require disclaimers of any descriptive or generic wording.

As it turns out, Minnow Spoon once adorned the Supplemental Register, as a merely descriptive composite mark, only capable of being distinctive, with no disclaimer of the generic “spoon” word.

Reading between the lily pad leaves, it appears the USPTO twice has considered Rapala’s Minnow Spoon to be unitary, as it allowed Rapala to federally-register the two-word mark on the Principal Register too, without a disclaimer of the obviously generic second term “spoon” for fishing lures.

Yet, that consistent disclaimer treatment appears inconsistent with the USPTO’s previous disclaimer requirement for “spoon” with the four-word Rapala Weedless Minnow Spoon mark.

Without getting too tangled up in the weeds at the USPTO, while generic matter must be disclaimed from marks registered on the Supplemental Register and the Principal Register (even under a showing of acquired distinctiveness, as was the case with Minnow Spoon), a disclaimer should not be required by the USPTO, if the composite mark is unitary.

Given that guidance, what would you expect with the “Original Finnish Minnow” mark? Well, that one was treated as not unitary, it appears, since a disclaimer of “minnow” was required. And, the same is true for Minnow Chaser and Clackin’ Minnow, as each one had “minnow” disclaimed.

The crazy thing about the “minnow” disclaimer for Clackin’ Minnow is that it was a Supplemental Registration, so the disclaimer should mean that “minnow” actually is generic for fishing lures.

A school of minnows in trademark class might be left thinking that both of the terms “minnow” and “spoon” are generic for lures, highlighting the importance of resisting them when appropriate.