Geographically Descriptive

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

If you are not familiar with Pendleton, Oregon, you may have heard of it.  Pendleton is home to an annual rodeo known as the Pendleton Round-Up, and Pendleton’s most famous exports are probably the wool and clothing goods of Pendleton Woolen Mills.  The two have grown up together for more than a hundred years, but last week they came to blows:  Pendleton Woolen Mills sued the Round-Up Association over rights to the PENDLETON trademark for use in connection with fragrances.  Portland Business Journal coverage is here and here (PDF of complaint here).

As probably every resident of Pendleton could attest, this is a sad turn of events for the city of 18,000 and two of its greatest corporate residents.  The city’s own website demonstrates that the Round-Up and the Woolen Mills are nearly synonymous with the town.  It hits close to home for me, too, as I have the good fortune to be married to a Pendleton export (ok, more like a Pendleton expat).

Yet, while sad for the local discord of this story, the trademark attorney in me cannot see this suit going the distance, for two reasons.  First, the fight is about the rights to the PENDLETON mark in connection with fragrances.  Fragrances do not appear to be core goods for either company, and it does not make much business sense to fight a war over ancillary goods.

Second, the fight centers on rights to a geographic term.  Terms that are primarily geographically descriptive are like descriptive trademarks:  they are weak and cannot function as trademarks unless they acquire distinctiveness in connection with the goods on which they are used.  Pendleton Woolen Mills probably has a slight edge in this regard, as it is not uncommon to see clothing manufacturers also produce fragrances, so there may be an argument that the acquired distinctiveness of the PENDLETON brand for clothing–which may be substantial–should extend to fragrances.  (On the other hand, if Smith & Wesson can extend to cologne, maybe it is not such a stretch for a rodeo.)

If you read the complaint, check out paragraph 15, which discusses how the Round Up Association must know about the Woolen Mills’ rights in the PENDLETON mark through a co-branding arrangement that each has with a mutual third party.  I bring this up as I think I ran across the co-branded product just days ago:

P.S.  It’s actually pretty good whisky–for Canadian, at least.

(H/T Michele Vaillancourt)