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Penn State’s attempt to trademark the term “Happy Valley” lost its first round with the U.S. Patent and Trademark Office.
In an initial decision this week, Kelley Wells, an attorney with the office, refused the trademark application from the university, finding in part that the words are geographically descriptive of the State College area.
Penn State filed its application in December after the trademark’s previous owner, Nittany Embroidery & Digitizing, did not renew a registration. “Happy Valley” would be used on headgear, shirts and sweatshirts, according to the university’s application.
The idea is to “protect against possible improper use” of the term by a third party, Rachel Pell, the university’s associate vice president for strategic communications, has said.
Reached Tuesday, Penn State spokeswoman Lisa Powers said the university couldn’t comment on the refusal from the trademark office because it had yet to review the decision. Janet Peyton, the attorney who filed on the university’s behalf, said she was not permitted to speak about the application.
Penn State has six months to respond to the refusal or the application will be abandoned, according to Wells’ filing.
Wells also cast the proposed trademark usage as “ornamental.” Such findings generally mean the desired usage would not “clearly identify the source of your goods and distinguish them from the goods of others,” according to the office’s website.
“With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt,” Wells wrote in the refusal. “Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a T-shirt.”
Wells could not be reached Tuesday for comment.
Trademark attorney Josh Gerben, who is not involved in the Penn State matter, said the university shouldn’t have ownership rights over “Happy Valley” because the term refers to an area where the institution happens to be situated. He called the application a “land grab.”
Additionally, he said averting concerns over “ornamental” use amounts to “Trademarks 101.” Penn State has to demonstrate significant marketplace penetration showing consumers think of the university when they hear “Happy Valley,” Gerben said.
He also voiced concern the university could create difficulties for small businesses — should the application be granted — because trademark battles are “expensive to fight.”
Pell has said the university “does not plan to charge those local entities that currently use ‘Happy Valley’” on apparel. Powers reaffirmed that position Tuesday.