IP Law Daily, TRADEMARK—T.T.A.B.: Word disclaimer required to proceed with registration of mark saved by overall design, (Jun 25, 2025)

By Justin Marcus Smith, J.D.

The proposed mark’s overall distinctiveness was sufficient to overcome notable deficiencies on other DuPont factors.

An applicant’s composite mark required a disclaimer with respect to words EQUIPKEYCO, which were merely descriptive of goods; however, in the event the applicant would disclaim the words, the overall design made the mark sufficiently distinctive to save it from a Trademark Act Section 2(d) refusal to register for likelihood of confusion, held the Trademark Trial and Appeal Board (TTAB). The Board accordingly affirmed the examining attorney’s disclaimer refusal to register but reversed the likelihood of confusion refusal to register (In re EquipKeyCo, LLC, No. 97344289 (T.T.A.B. Jun. 10, 2025)).

Background. Trademark applicant EquipKeyCo, LLC (applicant) sought to register a trademark on the Principal Register for pre-fabricated metal ignition keys for construction and agricultural equipment (heavy equipment). The proposed mark was described as consisting of:

“a black and white stylized American flag waving above the words ‘EQUIPKEYCO’ where ‘EQUIP’ is in black, ‘KEY’ is in orange outlined in black, and ‘CO’ is in yellow outlined in black. The letter ‘Q’ in the mark forms a key in black. The remaining white areas in the drawing represent the transparent areas in the mark.”

Applicant claimed the colors yellow, orange, white and black as features of the mark.

The examining attorney issued a final refusal of registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) on the basis that the mark was likely to cause confusion with an existing Keyco mark for metal key blanks, lock cylinders, pad locks, and door locks. The Keyco mark consisted of the word “KEYCO” in an arc above a graphical representation of three keys on both a ball chain and a solid metal ring. Keyco disclaimed “The representation of a key”, and it did not claim color as a feature of the mark.

The examining attorney also refused registration of the applicant’s mark in the absence of a disclaimer of the words “EQUIP KEY CO,” not “EQUIPKEYCO,” where the dictionary meaning of the word “equip” was just an abbreviation of “equipment”; the word “key” or the words “equipment keys” referred to the applicant’s goods; and, the word “co” was a recognized abbreviation of the word company. The examining attorney accordingly found the mark wording was merely descriptive of the applicant’s goods. See Trademark Act Sections 2(e)(1) and 6(a), 15 U.S.C. §§1052(e)(1), 1056(a). The applicant appealed.

Disclaimer. The TTAB affirmed the examining attorney’s refusal based on the requirement for a disclaimer of the word EQUIP KEY CO. The TTAB analyzed each of the words in the applicant’s mark. The words EQUIP, KEY, and CO were all distinct terms as displayed with capital letters and in different colors, but they merely described a feature of the applicant’s goods, i.e., that they were equipment keys, sourced from an equipment key company. The TTAB analyzed that the composition of the three words together did not create a unitary mark with a non-descriptive meaning. The TTAB noted here that dictionary definitions and third-party use often support a finding that an abbreviation is itself merely descriptive.

The applicant countered that “EQUIP” was suggestive to the extent that particular abbreviation is broad and can cover construction and agricultural equipment. However, as the examining attorney pointed out, the TTAB said mere descriptiveness must be ascertained with respect to the applicant’s goods, “not in the abstract.” The expanded words “equipment key” appeared in the evidence as a class of key; therefore, they could not be a suggestive term.

The applicant attempted to implicate the graphical design elements of the proposed mark, but the TTAB noted in this context that the refusal was not because the entire mark was merely descriptive. The refusal only required that the mark wording must be disclaimed. Inclusion of the flag and key design was irrelevant to the examining attorney’s disclaimer requirement.

The TTAB held that failure to comply with the disclaimer requirement was a sufficient basis for refusal. However, the TTAB invoked its discretion to determine the merits of the Section 2(d) likelihood of confusion refusal for sake of “completeness and efficiency,” because, in its view, refusal should be set aside if the applicant would disclaim the words.

No confusion. The Board next found that confusion was unlikely in light of the DuPont factors. See In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The first DuPont factor, whether the marks were similar or dissimilar, was dispositive here. Overall dissimilarity simply outweighed all other DuPont factors.

Looking at the marks in their entireties, the design portions were very different overall, sufficiently so to overcome the conceptual weakness of the element “KEYCO” and other weaknesses. The TTAB opined consumers would look to other aspects of the two marks to distinguish source. The addition of “EQUIP” and other design elements of the applicant’s mark were also sufficient to distinguish it from the cited mark.

However, without that overall distinctiveness, the mark was weak specifically as to similarity of the nature of the goods. The applicant argued its goods were different because key blanks have to be formed into keys, and the incumbent trademark registration did not emphasize heavy equipment. However, the TTAB found other entities commonly provide key blanks and ignition keys for heavy equipment under a single mark and in the same channels of trade. The examining attorney’s screenshots to other key provider web pages showed the internet was a common trade channel, and that element by itself also favored finding a likelihood of confusion.

The TTAB also noted that buyers of the applicant’s and registrant’s identified goods also overlapped, and whether they were sophisticated appeared doubtful, hence buyer care and sophistication was a neutral DuPont element.

After considering all evidence and arguments, even though the goods were similar, trade channels and consumers overlapped, the goods were “low-cost” and did not require great buyer care, and the common term KEYCO did not provide much protection, the TTAB held the overall distinctiveness of the mark called for a finding that confusion was unlikely. The TTAB accordingly affirmed the disclaimer subject to set aside if the applicant submits the required disclaimer to the TTAB within 30 days; and, it reversed the Section 2(d) refusal to register.

The Case is Serial No. 97344289.

Judge: Zervas, A.

Attorneys: Rob L. Phillips (FisherBroyles LLP) for EquipKeyCo, LLC. Caitlin Cordani for the USPTO.

Companies: EquipKeyCo, LLC

Cases: Trademark USPTO