Penn State Receives Initial Rejection for ‘Happy Valley’ Trademark Claim

The U.S. Patent and Trademark Office (USPTO) has initially rejected Penn State’s trademark application for the term “Happy Valley,” which it filed for officially-licensed merchandise in December.

The refusal was based on the fact that the term is geographically descriptive and the use of it is “ornamental,’ as explained by Washington, D.C.- based trademark attorney Josh Gerben, who is not affiliated with the case, in a video posted to Twitter.

Penn State has six months to respond to the non-final office action refusing the trademark, which was issued Monday by USPTO trademark attorney Kelley Wells.

The trademark office noted that the primary significance of the term “Happy Valley” is a commonly used nickname for State College and that the university is merely located in the region.

Penn State’s trademark application for HAPPY VALLEY has been initially refused by the USPTO.

Here is my analysis of the ‘Office Action’ issued yesterday. #HappyValley#PennState pic.twitter.com/N3lanI8x7B

— Josh Gerben (@JoshGerben) March 13, 2019

The issue with the “ornamental” use is that the term is represented on Penn State clothing examples as a slogan instead of an actual mark of representation.

“With respect to clothing, consumers may recognize small designs or discreet wording as trademarks, rather than as merely ornamental features, when located, for example on the pocket of breast area of a shirt” the USPTO office action reads. “Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.”

Penn State has the option to resubmit the trademark application if it has evidence that its use of the term can address its two shortfalls that led to the initial rejection.

The university would have to show it has claims to “acquired distinctiveness” — which it would be able to claim by showing the term has been used in conjunction with the university’s goods for more than five years.

It would also have to address the “ornamental” objection, which would require that the university was using the term on tags or labels instead of just slogans on t-shirts, according to Gerben.

A Penn State spokesperson said in January that the previous ‘Happy Valley’ trademark holder decided not to renew decided not to renew it, and Penn State officials believed it was important to register the term to protect it from improper uses. She also said that if successful the university would not charge local entities already using it on apparel.