IP Law Daily, TRADEMARK—TTAB: ‘Colorado State University Global’ mark can't be registered without disclaiming ‘State University,’ TTAB rules, (Jan 24, 2025)

By Steven Melendez

The term "state university" is generic, the Board found, but the mark can be registered if the Colorado State University system agrees to disclaim that subphrase.

The Colorado State University System can't register the mark "COLORADO STATE UNIVERSITY GLOBAL" for university services unless it disclaims the exclusive right to "STATE UNIVERSITY," the Trademark Trial and Appeal Board (TTAB) ruled. A trademark examining attorney properly found that the phrase was generic (In re Board of Governors of the Colorado State University System, No. 97719690 (T.T.A.B. Jan. 7, 2025)).

The Board of Governors of the Colorado State University System sought registration on the Principal Register under Section 2(f) of the mark COLORADO STATE UNIVERSITY GLOBAL (in standard characters) for “Education services in the nature of courses at the university level; Educational services, namely, conducting distance learning instruction at the university level” in International Class 41. The university system claimed that the mark, in its entirety, has become distinctive of the recited services as evidenced by its ownership of active U.S. Registration No. 4266799 on the Principal Register for the standard-character mark COLORADO STATE UNIVERSITY-GLOBAL CAMPUS for the identical services. The examining attorney accepted the university system’s Section 2(f) claim based on its ownership of its prior registration with the caveat that the applicant was required to disclaim the exclusive right to use the term “STATE UNIVERSITY” in the mark. However, the university system was only willing to disclaim the word “UNIVERSITY." The examining attorney refused registration on the ground that the mark was generic when used in connection with the recited services. The university system appealed.

The TTAB upheld the examining attorney’s decision, finding "state university" to be a generic term. If the university system agrees to disclaim that phrase within 30 days, the full mark can be registered, the Board ruled.

The Trademark Act allows the U.S. Patent and Trademark Office to require an "applicant to disclaim an unregistrable component of a mark otherwise registrable,” such as a generic component, according to the ruling. And a term is deemed generic if it "refers to the class or category"—or genus—of good and services.

The university system argued that "university" is effectively the genus of the services, not simply "state." But, the TTAB found, the examining attorney never claimed that "state" alone was the genus of the services, and there's no legal reason that both "state" and "state university" can't be generic terms.

In confirming that "state university" is a generic term, the Board looked to the term's definition in The Merriam-Webster Dictionary and references in Wikipedia and on various other websites, all of which use it generically to refer essentially to a public university associated with a U.S. state.

The university system also designated its "entity type" in the registration application as "state university," another sign the term is generic, according to TTAB. "It has long been recognized that business entity indicators are generic and without trademark significance," the Board ruled.

The TTAB also pointed to two prior registrations by the university system for "COLORADO STATE UNIVERSITY," in which it disclaimed "STATE UNIVERSITY"—further evidence, it determined, the system considered the phrase generic at the time. Third-party registrations for other specific state university names also disclaimed the two-word subphrase, according to the ruling.

While the Colorado State University System pointed to five registrations for state university names that didn't disclaim "STATE UNIVERSITY," the TTAB noted the decades-long age of some of those registrations and the fact that terms can become generic over time.

"Furthermore, it is well settled that each case must be decided on its own facts and the Board is not bound by prior decisions involving different records," according to the ruling.

The Case is Serial No. 97719690.

Judge: Lebow, M.

Attorneys: Pamela N. Hirschman (Sheridan Ross P.C.) for Board of Governors of the Colorado State University System. Kim Teresa Moninghoff for the USPTO.

Cases: Trademark USPTO