If you have heard of Penn State, you have probably heard the phrase “Happy Valley.” The school, the students, and the media regularly use “Happy Valley” in reference to the school and the surrounding community. The school considers the association so strong that Penn State recently applied to register HAPPY VALLEY as a trademark for clothing – and received a refusal to register.

The Trademark Office examining attorney assigned to the application refused registration on the ground the phrase “Happy Valley” is geographically descriptive. This means that the examining attorney concluded the public will see the phrase simply as describing the geographic area where the school is located. The school’s own website seems to confirm the examining attorney’s concerns, as it describes “Happy Valley” as an “also known as” name for the town, State College.

But don’t worry Penn State fans. The university has a strong chance to overcome the refusals so long as Penn State can demonstrate the HAPPY VALLEY trademark has acquired distinctiveness in the minds of consumers. Marks that may initially be considered geographically descriptive or may become distinctive after sufficient use of the mark in commerce.

For example, use of a trademark for five years or longer may be sufficient to overcome a refusal on this ground. In fact, the examining attorney expressly references this option in the Office Action. Accordingly, chances are good Penn State can overcome this refusal simply by submitting a declaration that the university has used the mark in commerce for more than five years. However, the Trademark Office will also consider other evidence such as widespread advertising efforts, significant sales numbers, and substantial media attention and publicity.

As a fellow alum of a Big Ten university (which university isn’t important), I wanted to provide some assistance in gathering evidence in support of Penn State’s potential claim of acquired distinctiveness for the HAPPY VALLEY trademark.

If you’ve heard of Penn State, you know they receive a lot of publicity for their college sports teams. For example, this ESPN article prominently uses HAPPY VALLEY to refer to Penn State with its headline “Iowa silences No. 5 Penn State in Happy Valley.”

The Penn State wrestling program is also among the best in the country. Historically, the Happy Valley-based wrestling squad has the third-most successful program in the country, with 8 (!!) NCAA national championships , just slightly trailing Iowa’s 23 national championships.

Last, but certainly not least, Penn State can point to a visit last month from the Big Ten Tournament Champions and presumptive NCAA ’s basketball player of the year Megan Gustafson. Yet again Penn State received some great publicity associating the claimed HAPPY VALLEY mark with the University, as media ran with the headline “Iowa Cruises in Happy Valley.”

With all this evidence, Penn State fans should feel good about the likelihood they’ll soon be able to purchase HAPPY VALLEY t-shirts with a ® symbol adjacent to the phrase (exclusively from a licensed retailer). Of course, if they need more evidence, I’m sure I can find some fellow Big Ten organizations that would be happy to add some new headlines in 2019.

–Dan Kelly, Attorney

It has been some time since we have visited AlphaWatch, and today we turn our attention to an ad I spied on ESPN’s website this week:

This takes me back to law school and a Latin phrase common in legal parlance, res ipsa loquitur, which is commonly translated, “the thing speaks for itself.”  The legal principle arises in negligence cases, for instance, when a surgeon leaves a sponge or other tool inside of a patient after a surgery.  That sort of thing does not happen without someone having dropped the ball.  Some overzealous lawyers, though, stretch the phrase res ipsa loquitur beyond its proper meaning, prompting others to expand, “res ipsa loquitur, sed quid in infernos dicet?”  (“The thing speaks for itself, but what in the hell is it saying?”)

So, ESPN is now getting aboard the bandwagon that has not worked very well for Gatorade, and even has Gatorade aboard as a “founding partner.”  (Could be a case of the blind leading the blind.)  Standing alone, given the willowy curves of the W, I first thought that this might have been a roll-out for ESPN W for “women,” but then I spied this banner ad:

Wait a minute.  ESPN “Within”?  Maybe an amateur site?  Don’t know.  At this point, I’ve had to think waaay too much for being on the ESPN site, and I’m off clicking somewhere else.  They had about 3-5 seconds to hook me, and I just ended up confused.  (And it looks like my initial surmise was correct, but now I don’t get “because we all have an athlete within.”  Now I’m really confused.)

This is the problem with single-letter branding.  One letter says a lot, but what in the hell is it saying?