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.

James E. Lukaszewski, ABC, APR, Fellow PRSA

Tuesday, February 26, 2013 was a bright, cold, sunny day as I prepared to depart State College, Pennsylvania, the home of Penn State football, after participating the evening before in a really interesting and wide-ranging panel discussion; an exploration of the problems this University is facing, and continues to face, before 200 people. The program was called, “Integrity in Times of Crisis.”

By now, just about everybody reading this blog knows what I’m talking about, the sexual assault and rape of young boys by a coach, Jerry Sandusky, and perhaps others, who has since been sentenced to 60 years in prison.  Head coach, Joe Paterno, was fired and died soon after.  Among his dying words were, “I should have done more.”  These words still ring around the University.

The University itself is still going through extraordinary trauma.  Those in charge at the time of the crimes were fired, but were paid handsomely.  The next crew of managers brought in did their best to protect the reputation of those just fired, and began the collective forgetting process, which is always a part of the post-crime behaviors of corporate leadership.  The subsequent investigation by Louis Freeh, former head of the FBI, an independent observer and monitor, forced this second group of managers out, their having been complicit in a cover-up of the cover-up, and a new crew of leaders was installed.

After this much trauma, one would think that the folks at Penn State would be ready for a rest, and hopefully to begin the process of healing the organization.  But not this University.

Almost from the beginning there was pushback against the authorities, against the media, against anyone who would dare criticize the University’s athletic programs and the iconic coach, Mr. Paterno.  These emotions persist to this day.  But, there is more.