Our Analysis of Penn State’s Happy Valley Trademark Refusal

Penn State University’s trademark application on ‘Happy Valley’ was initially refused on March 11, 2019 by the trademark office. The office action, USPTO code for refusing an application initially, was given for two main reasons.

1. The trademark office found the trademark to be geographically descriptive.

As ‘Happy Valley’ is a commonly used nickname for State College, Pennsylvania, the trademark is not registerable unless the university can show acquired distinctiveness. Acquired distinctiveness, under trademark law, means that there is a certain amount of market penetration that suggests people would associate a trademark with a specific company or institution, even though it may just identify a geographic area. The university could prove they have acquired distinctiveness by showing that the mark has been used for five, or more, years. If done successfully, they would be able to get around this portion of the refusal.

2. The trademark office found the mark to be ornamental.

If you follow me, you’ll know that I believe this is ‘Trademarks 101’ and it shocks me every time a large institution or organization gets it wrong. You cannot just submit a specimen in a trademark application that shows you’re using a trademark on the front of a t-shirt. It must be used on tags, like hangtags, price tags, or labels. If you just show it on the front of a t-shirt, this is not trademark use. So, unless the university has been using it on tags, this refusal should stand. However, the university can still submit another specimen to show that they are using it properly.

If you have any questions regarding trademarks, please reach out.

You can follow me on Twitter: @JoshGerben

• SHARE THIS ARTICLE ON:

Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.