Trademark or Geography?

Penn State Happy Valley Edition – Part I

It appears to be Tuesday already, which means #TMTuesday. Welcome back to the Creative Law Studio Blog. Last week, I wrote as just a fun little introduction to this blog and all of the great things ahead. Today, we are going to dive into a little bit of the real fun – some real trademark law. I know – I’m real excited about this too. As also mentioned in the introductory blog, I will occaionally be writing about trademarks in the news, and this is where we begin today.

If you have checked out the “Meet Monica” page of the website, you may have seen that I am an alumnus of Penn State (insert a very loud, “We Are!” here.) As I worked on the finishing touches of this website and the entire concept of a web-based law firm, the intellectual property world was buzzing with news of the refusal of Penn State’s trademark application. I had planned to begin the blog with more basic concepts of trademark law. But I decided I didn’t want to miss the opportunity to discuss this very relatable news.

Penn State filed an application for the phrase “Happy Valley” in December of 2018. Just as with all trademark applications, the filing of the application began the prosecution process, where the examining attorney for the U.S. Patent and Trademark Office examined the application to decide whether it meets the prerequisites allowing it to move forward in the trademark process. If the examining attorney decides that the mark does not meet these qualifications, and they often make this decision, an office action is filed. Upon the issuance of an office action, the attorney representing the mark then has a chance for rebuttal.

Office actions are issued for various issues and deficiencies in a trademark applications. Some of them can be overcome with a simple filing, and others require more formal briefs and arguments. Some marks truly do not meet the requirements for trademark registration and others simply need clarification. Not every name and catch phrase is eligible for trademark registration and for good reason. If we were able to trademark any word, without proper qualification, we, as intellectual property practitioners would severely inhibit free speech. The laws defining exactly what can be granted trademark protection are found in The Lanham Act, which has been codified as 15 U.S.C. This could be the point where your eyes begin to glaze over, so back to the blue and white topic.

What in the world do the United States Code and the subject of geography have to do with Happy Valley and all of you “bleeding blue?”

The Happy Valley application has been initially refused on two separate sections of the Act. For purposes of this blog, we’ll focus on the geographic issue. The examining attorney has argued the term “Happy Valley” may be too geographically descriptive to become a trademark. One of the many reasons that a mark may be denied trademark registration is the fact that a proposed mark is simply descriptive of a geographic region. In some slightly more casual wording for purposes of this blog, 15 U.S.C. §1052 says that any good that is distinguishable from another should not be refused a trademark in the principal register. But we all know nothing in law is that simple.

The Act then provides a whole list of exceptions defining marks that are ineligible for trademark protection. In the Happy Valley case, the government’s examining attorney has argued that the phrase “Happy Valley” is not eligible for trademark because it is “primarily geographically descriptive” according to §1052(e)(2). It is well-established law that when a geographic location is commonly referred to by a nickname, that nickname will be treated the same as the actual geographic name, in terms of trademark law. And how does the U.S Patent and Trademark Office treat names of geographic regions?       Spoiler Alert –     They are not treated with the grant of trademarks. The examining attorney argues that the wording “Happy Valley” identifies a known geographic location; the goods originate in said location, and consumers will likely make a goods place association.

So what does this mean for all of you in the Happy Valley hoodies and tees? Will your blood travel around the color wheel from blue back to red? Is State College, PA now Unhappy Valley? Does Penn State have to stop using the term Happy Valley? If Penn State can’t use the term Happy Valley, then who can?

Well, to answer your first two questions, I doubt your blood will suddenly pump in tones of crimson due to this office action. It seems that Penn State has suffered much worse news over the last decade, that did not officially render the valley unhappy, so I doubt this will. More importantly, if this case ends in the final rejection of the mark, nothing actually changes. No one can tell Penn State that they can’t use the term “Happy Valley.” Penn State just won’t be able to stop others from using it. The whole purpose of obtaining a trademark on a good or service is to prevent someone else from selling the same good or service with the same name or logo. Penn State and several retailers have all been selling apparel with the Happy Valley phrase for many years. These sales were very successful for all retailers even without the existence of a trademark. But whether the co-existing sales by both Penn State and private retailers will continue, however, hinges upon the outcome of this case.

When one applies for a trademark, the owner of the mark does not have the expectation that they will take on exclusive rights across the span of all goods. This explains how Delta Airlines and Delta faucets are able to coexist with trademarks for the same name. When preparing the trademark application, the practitioner must evaluate the good and determine in which categories the mark belongs. Penn State’s attorney applied under International Class 25, which is reserved for headwear, shirts and sweatshirts. In the event the Happy Valley mark is ultimately rejected, Penn State can continue selling and using the phrase and so can everybody else.

However, if the trademark is granted, this means that Penn State University has the exclusive right to use the wording “Happy Valley.” This exclusive right is limited to the use on headwear, shirts and sweatshirts, because that is the only classification in which the application was submitted. Private retailers who print and sell Happy Valley apparel would feel the largest impact of a  successful trademark registration. Penn State would then have the right to prevent private retailers from continuing sales of such apparel. However, I would bet that it is in Penn State’s best interest for private retailers to continue selling and promoting Happy Valley apparel. This would simply be accomplished through licensing agreements, and consumers would never know the difference. But this initial rejection is not the end of the story. Like all areas of law, there are seemingly endless exceptions to every rule, which are very applicable to this case.

At this point, I’m sure the attorney representing the application is working hard on the rebuttal arguments to skillfully argue her way around this office action. In my opinion, the U.S. examining attorney was correct in the initial rejection of the Happy Valley trademark application. But blue bleeders worry not – I believe Penn State has a fantastic rebuttal and a very good chance of obtaining this trademark. After examining the office action, there is a great argument that I bet the attorney is using for her rebuttal. Though I’m looking forward to telling you all about it, I think this blog post is long enough. It appears that we have come to our first #TMcliffhanger Next week we’ll look at the argument I would use to rebut this type of case.

Disclaimer: This blog/website is intended to be published for educational and entertainment purposes and to give readers a general idea of the law of trademark. This blog/website is not intended to give any specific legal advice or to target a specific person. Readership of this blog cannot create an attorney-client relationship between you and the publisher. This blog should never be used to substitute the seeking out of personal, legal advice. The discussion of an existing or potential trademark shall not be taken as an endorsement by creative law studio, nor shall the same be taken as an endorsement of creative law studio. The discussion of specific trademarks does not mean that creative law studio is a record attorney for such trademarks.