IP Law Daily, TRADEMARK—TTAB: Refusal to register MONKIE KID marks reversed, (May 11, 2022)

By Ursula Furi-Perry, J.D.

The composite marks’ elements combined to form an inseparable whole and were exempted from the disclaimer requirement.

Applicant sought registration of two composite marks that contained the words “MONKIE” and “KID,” in stylized red, and yellow fonts, with a black outline, along with the non-Latin characters “WU KONG XIAO XIA” which it claimed translated to ‘MONKIE KID’ in English. In each application, the examining attorney required a disclaimer of the wording “KID” and the non-Latin characters that, according to applicant, transliterate to “Xiao Xia,” and mean “kid” in English. In a precedential decision, the TTAB reversed the examining attorney’s refusal to register the marks, holding that that in both marks, the word “KID” and its equivalent that transliterates as “XIAO XIA,” combined with the other elements of the mark to form an inseparable whole and were exempted from the disclaimer requirement (In re Lego Juris A/S, May 9, 2022, Lynch, C.).

The applicant sought registration of two composite marks in a number of International Classes, many of them geared towards children, such as children’s DVDs, publications, and amusement places. The first mark contained the words “MONKIE” and “KID,” in stylized red, and yellow fonts, with a black outline. The applicant claimed those colors to be a feature of the mark. Between those two words was a stylized illustration of a monkey’s head outlined in yellow and black and a red highlight. The application also contained a statement that the non-Latin characters in the mark transliterated to “WU KONG XIAO XIA” and “this means ‘MONKIE KID’ in English.” The second mark was similar but also consisted of yellow vertically aligned non-Latin characters outlined in black.

In each application, the examining attorney required a disclaimer of the wording “KID” and the non-Latin characters that, according to applicant, transliterate to “Xiao Xia,” and mean “kid” in English. The applicant refused the disclaimer, and its reconsideration request was denied by the examining attorney. The applicant’s request for a remand was granted by the TTAB, during which the examining attorney’s previous final decision was maintained. The applicant appealed to the TTAB.

Analysis. Under Section 6(a) of the Trademark Act, an applicant may be required to disclaim an unregistrable component of a mark that is otherwise registrable. Failure to provide the required disclaimer constitutes a ground for refusing registration. However, if the elements of a composite mark are so merged together that they cannot be viewed as separable elements, the mark is considered unitary, which then renders a disclaimer unnecessary.

In this case, the TTAB found that the elements of each composite mark merged together in a way that conveyed a unitary impression: the words MONKIE and KID were physically connected to the design of a monkey’s head, which touches and slightly overlapped with some of the letters. The TTAB rejected the examining attorney’s argument that the monkey head design functioned as a space between the words; indeed, the Board noted, connecting elements with a design feature tended to show unitariness.

“When encountering the mark, potential purchasers likely would not perceive the English language word KID, or its foreign equivalent, as a reference to the intended users of the goods and services,” the Board stated in its decision. “The monkey-related design elements and the connection of the various features combine to give the impression of a “monkey kid” creature. Thus, potential purchasers are likely to understand KID, and its foreign equivalent, to refer to the MONKIE KID creature named and depicted in the mark.”

The Board found that in both marks, the word “KID” and its equivalent that transliterates as “XIAO XIA” combined with the other elements of the mark to form an inseparable whole and were exempted from the disclaimer requirement.

Board action. The Trademark Trial and Appeal Board reversed the refusals to register the applicant’s marks.

The case is Serial Nos. 88698784 and 88698804.

Attorneys: Michael J. Antonucci, Charles T.J. Weigell, and Roxana Monemdjou (Fross Zelnick Lehrman & Zissu PC) for Lego Juris A/S. Matthew P. Howell for the UPTSO.

Companies: Lego Juris A/S

Cases: Trademark USPTO GCNNews