Reason 1: Other Merchants Who Used the Trademark First Can Challenge Penn State’s Trademark Application
In trademark law, priority of use wins. Trademark Law asks: Who was first to use the mark without abandoning it? That is, who was first to continuously use the HAPPY VALLEY trademark for apparel? A simple google search shows a significant number of prior users – merchants who sell HAPPY VALLEY in the apparel category. Arguably, each prior user of HAPPY VALLEY can challenge Penn State’s trademark application before the TTAB or a federal Court. There are weaknesses for the prior users. These prior-user-merchants do not use HAPPY VALLEY in a branding sense. Rather, the merchants use HAPPY VALLEY as ornamentation on the apparel. (For example, HAPPY VALLEY is simply emblazoned across the front of the shirt.) Ornamentation is not enough to acquire prior common law trademark rights. The prior use must be a genuine use that identifies HAPPY VALLEY as an apparel brand. (Sewn in labels and hang tags are the best evidence of source identifying use for apparel.)
Reason 2: HAPPY VALLEY Is a Geographically Descriptive Name That Can’t Be Trademarked
Trademark law denies exclusive rights to names that identify a particular location. Primarily Descriptive names are to be rejected per Trademark Office Procedure.
Quoting the exact words of the Trademark Office: “HAPPY VALLEY” is a well-known nickname for State College, Pennsylvania as well as the surrounding immediate area. As such, Penn State’s trademark application for HAPPY VALLEY should be rejected on this basis. Alternately, third parties can contest Penn State’s trademark application on descriptive grounds by petitioning the TTAB or a federal Court.
Advocating the opposite position, there are ways Penn State can overcome the geographically descriptive rejection. One includes amending the application to the Supplemental Trademark Register. In fact, that’s what Nittany Embroidery did to get the trademark application allowed back in 2012. The downside to the Supplemental Trademark is that it has much less weight regarding enforcement of the trademark. It’s effectively a placeholder in the Trademark Office records, and carries little to no weight in court.
Alternately, Penn State may argue that the mark should be registered on the Principal Register (under Section 2(f)) based on Penn State’s claimed prior use (back to 2013) of the HAPPY VALLEY trademark for apparel items. This should be tough for Penn State: A Section 2(f) claim requires a verified statement that Penn State’s use of HAPPY VALLEY has been substantially exclusive and continuous for the past 5 years. I don’t think the evidence supports such a statement. Just google HAPPY VALLEY shirts. You will find plenty of other sellers.
Reason 3: HAPPY VALLEY Cannot Function as a Trademark
The Third Reason, and probably the weakest argument, why Penn State Can’t trademark HAPPY VALLEY is “failure to function”.
If the proposed trademark is so widely used that it can’t identify a single business as the owner, it should be rejected for failure to function as a trademark.
Some names include political, social, religious, or similar messages that are in widespread use or widely understood. In this category are messages that become Pop Culture – widely used after a recent newsworthy event or occurrence. The name is then spread through print and television media coverage, and social media appearances such that it’s publically known as relating to the original event or location. PHILLY SPECIAL trademark is an example.
The function of a trademark is to indicate a single source of goods or services. These “viral” pop-culture names generally are not attributed to a single brand. Thus, they fail to function as a trademark.