Patent office to Penn State: ‘Happy Valley’ can’t be trademarked

Happy Valley may be lots of things to those who live and work within the orbit of Pennsylvania State University, but the federal government has decided on something it is not: A name that should be trademarked.

At least that is the initial ruling from an attorney with the U.S. Patent and Trademark Office, which refused the request.

The decision says the proposed mark does not pass muster as it is “primarily geographically descriptive” of the State College region.

“The primary significance of the mark is a generally known geographic place or location,” stated the correspondence Monday from Janet Peyton, an attorney writing on behalf of the federal office, informing the university of its decision.

In a Dec. 4 application, Penn State asked the U.S. Patent and Trademark Office to grant the university ownership of the mark in selling licensed products. An application met filing requirements and was assigned to Peyton, an examining attorney.

“We are reviewing the information from the U.S. Patent and Trademark Office,” said Penn State spokeswoman Lisa Powers. “Under the procedures outlined by the government, the university has six months to respond.”

The ruling is not the final word on the proposal, as Penn State can respond in a variety of fashions spelled out in the correspondence.

The university’s application did not specify a font, letter size, style, or color. It appears focused on use of the mark regarding gear including headwear, shirts, and sweatshirts.

Accompanying the proposal was an image that shows Happy Valley printed above an image of the Nittany Lion, the school’s mascot.

Josh Gerben, a trademark attorney in Washington, offered an analysis via Twitter of the geographic issue raised by the Patent Office and another reason the agency refused the application: The trademark as submitted was deemed “ornamental.”

He said both issues are correctable.

"Because Happy Valley is a commonly used nickname for State College, Pa., the trademark was really not registrable unless the university can show something called `acquired distinctiveness,' " Gerben said.

That entails a degree of market penetration that would associate the trademark with the university, even if it also suggests a geographic area. Use of the mark for five years or more by Penn State might be a way to do that, he explained.

Of the ornamental issue, he said, “I believe this is Trademarks 101 and it shocks me every time a large institution or organization gets it wrong.”

Using a T-shirt image as a trademark specimen is ornamental, unless the mark is also used on neck tags, price tags, or labels.

He said Penn State can revise its submission.