Media Design School

Trademark Trial and Appeal Board

Oct 3, 2017

No. 86451638 (T.T.A.B. Oct. 3, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: October 3, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Media Design School
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Serial No. 86451638
_____

Rebecca Liebowitz, of Venable LLP
for Media Design School.

Seth Dennis, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Wellington, Kuczma and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Media Design School (“Applicant”) seeks registration on the Supplemental
Register of the mark MEDIA DESIGN SCHOOL (in standard characters, SCHOOL
disclaimed) for
Educational services and on-line educational services,
namely, providing courses of instruction at the college,
university and graduate school level, none of the foregoing
including courses in the theory and application of the
design of products, services and environments; educational
services, namely, providing courses of study both in person
and on-line, at the college, university and graduate school
level, none of the foregoing including courses in the theory
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and application of the design of products, services and
environments; educational services and on-line
educational services, namely, providing courses of
instruction at the college, university and graduate school
level in the fields of professional development, art,
architecture, digital media, software engineering, film,
animation and visual effects, creative technologies and
creative advertising; educational services, namely,
providing courses of study both in person and on-line, at
the college, university and graduate school level in the
fields of professional development, art, architecture, digital
media, software engineering, film, animation and visual
effects, creative technologies, creative advertising, and
design; educational services, namely, providing continuing
professional education courses in the field of art,
architecture, digital media, software engineering, film,
animation and visual effects, creative technologies,
creative advertising and design in International Class 41.1

The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 6(a), 15 U.S.C. §1056(a), on the basis that Applicant
must disclaim the wording DESIGN SCHOOL because the wording is a generic
designation for the services under Trademark Act Section 23(c), 15 U.S.C. §1091(c),
and under Trademark Act Section 2(a), 15 U.S.C. §1052(a), on the basis that the

1 Application Serial No. 86451638 was filed on November 12, 2014, on the Principal Register
based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act. On June 19, 2015, Applicant filed an amendment to allege
use based upon Applicant’s claim of first use anywhere and use in commerce since at least as
early as January 2014, which the Examining Attorney accepted. On August 13, 2015,
Applicant amended the application to seek registration on the Supplemental Register, also
claiming ownership of Reg. No. 4779233 for the mark MEDIA DESIGN SHOOL OF DIGITAL
ARTS, also on the Supplemental Register. On February 11, 2016, Applicant provided a
disclaimer of “school.” During prosecution, Applicant sought an amendment to the
identification of services, which the Examining Attorney found unacceptable in part.
Applicant then sought to withdraw the proposed amendment and revert to an earlier
identification of services, which the Examining Attorney did not allow due to the amendment,
in part, exceeding the scope of a previously accepted amendment.
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applied-for mark consists of or includes deceptive matter in relation to some of the
identified services.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We reverse the refusals to register.
I. Arguments and Analysis
A. Whether DESIGN SCHOOL is a separable component of the phrase
MEDIA DESIGN SCHOOL
The Examining Attorney’s requirement of a disclaimer and his position on the
Section 2(a) refusal depends on a finding that DESIGN SCHOOL is separable from
the term MEDIA. Therefore, we consider, whether DESIGN SCHOOL is the unitary
portion of the mark.
A phrase qualifies as unitary in the trademark sense only if the whole is
something more than the sum of its parts. Dena Corp. v. Belvedere International Inc.,
950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN
FORMULA and design for cosmetic products not unitary). The Court of Appeals for
the Federal Circuit has set forth the elements of a unitary mark:
A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a unitary
mark, these observable characteristics must combine to
show that the mark has a distinct meaning of its own
independent of the meaning of its constituent elements. In
other words, a unitary mark must create a single and

2 In the final Office Action, the Examining Attorney stated that the refusal was a “Section
2(a) deceptive partial refusal” with respect to Applicant’s services which contained the
limitation “none of the foregoing including courses in the theory and application of the design
of products, services and environments.” September 17, 2016 Office Action, p. 1.
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distinct commercial impression. Dena Corp., 21 USPQ2d at
1052.
Thus, the test for what constitutes a unitary phrase involves an inquiry into
whether the elements of a mark, or portion thereof, are so integrated or merged
together that they cannot be regarded as separable. See In re EBS Data Processing,
212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983).
A focus is placed on “how the average purchaser would encounter the mark under
normal marketing of such goods [or services] and also ... what the reaction of the
average purchaser would be to this display of the mark.” Dena Corp., 21 USPQ2d at
1052 (quoting In re Magic Muffler Service, Inc., 184 USPQ 125, 126 (TTAB 1974)).
The Examining Attorney argues that MEDIA is separable from DESIGN,
contending that design schools are educational institutions teaching the theory and
application of design of a particular subject matter such as graphics, fashion or
interiors. 6 TTABVUE 15. However, Applicant argues that “consumers will
understand the wording ‘MEDIA DESIGN’ in Applicant’s Mark as referring to the
field or subject matter of Applicant’s services. This is because Applicant is not a
‘DESIGN SCHOOL’ in the field of ‘MEDIA’, but, rather, is a ‘SCHOOL’ in the field of
‘MEDIA DESIGN.’” 4 TTABVUE 11. Evidence in the record for MEDIA DESIGN
includes the following:
Media design schools offer prospective students a number of diploma options.
March 11, 2015 Office Action, p. 5, educationchoices.com.

[M]edia design schools often provide concentrations in a variety of subjects,
including 3-D animation, media art and corporate communications.
March 11, 2015 Office Action, p. 6, study.com.

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By visiting the unique online school page for the accredited online interactive
media design school displayed below, you’ll be able to obtain comprehensive
info to help you make an informed decision about where to enroll. March 11,
2015 Office Action, p. 12, onlineeducation.net.

Media design is not only contained to a projector beaming digital images, but
also combines visual, aural, technological, computer, theatrical, temporal and
architectural forms.
August 25, 2016 Response to Office Action, p. 11, howlround.com.

The Media Design master of fine arts degree program provides an in-depth
look at design and the role it plays in bridging the gap between the creative
studio and the Board room. You’ll study the concepts that drive successful
design campaigns -- including research client communications and team
dynamics. Coursework focused on psychological and motivational theories will
deepen your understanding of consumers and trends.
August 25, 2016 Response to Office Action, p. 14, fullsail.edu.

Media design prepares graduates for leadership in the diverse and evolving
media environments of the 21st century. As a student in media design, you can
focus on advertising copywriting, advertising art direction or user experience
design.
August 25, 2016 Response to Office Action, p. 25, Colorado.edu.

The Media Design Program offers students the skills and training needed to
work as a digital media professional through the creation of appealing and
engaging content. Our hands on approach gives the student the communication
production and technical proficiency training techniques needed to make
sophisticated choices in the creation of digital media art.
August 25, 2016 Response to Office Action, p. 26, seminolestate.edu.

We find that the unitary portion of Applicant’s mark is MEDIA DESIGN, not
DESIGN SCHOOL. MEDIA DESIGN is a unitary phrase that describes the field of
study, while the separable term SCHOOL names the type of educational institution.
The record reflects use of the phrase MEDIA DESIGN as a field of design, with sub-
fields such as interactive media design, educational/instructional media design,
digital media design or multimedia design. March 11, 2015 Office Action pp. 5-17;
August 25, 2016 Response to Office Action, pp. 9-18, 23-26. The record also shows
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that other fields of design include, among others, graphic design, fashion design,
interior design, environmental design, urban design, industrial design, and game
design.3 March 3, 2016 Office Action, pp. 6-8, 38, 43, and 44; September 17, 2016
Office Action, p. 4-5, 7-9, 11, 23-24, 26-29, 33-34, 47, 58, 62-70. Therefore, consumers
are conditioned to see the term “design” modified by another term in connection with
fields of design, and likely to view MEDIA DESIGN, as with other fields of design, as
a unitary phrase. Cf. Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1772 (TTAB
2007) (finding the CINNAMON TOAST portion of CINNAMON TOAST CRUNCH,
which had, in prior registrations been disclaimed, as a unitary term describing a
specific type of toast and a cereal flavor, while the term CRUNCH was separable,
connoting a characteristic of the cereal).
B. Deceptiveness
We turn next to the Section 2(a) refusal. In accordance with Section 2(a) of the
Trademark Act, registration must be refused if a mark is deceptive of a feature or an
ingredient of the identified services. In re Budge, 857 F.2d 773, 8 USPQ2d 1259, 1260
(Fed. Cir. 1988). Section 2(a) is an absolute bar to the registration of deceptive matter
on either the Principal Register or the Supplemental Register. See In re Charles S.
Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975). The test for deceptiveness is
whether all three of the following criteria are met:

3 We further note that the record reflects that individuals who work in these fields are called
fashion designers, interior designers, graphic designers, environmental designers, urban
designers, industrial designers, and game designers. Additionally, the record shows that
those who study media design are called media designers.
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(1) The applied-for mark consists of or contains a term that
misdescribes the character, quality, function, composition,
or use of the goods and/or services;
(2) Prospective purchasers are likely to believe that the
misdescription actually describes the goods and/or
services; and
(3) The misdescription is likely to affect a significant
portion of the relevant consumers’ decision to purchase the
goods and/or services.
In re Budge, 8 USPQ2d at 1260.

In analyzing the first and second factors of the Budge test, evidence of use and of
recognition by consumers and the trade can be considered. In re Woolrich Woolen
Mills Inc., 13 USPQ2d 1235 (1989) (holding WOOLRICH for clothing not made of
wool found not to be deceptive under Section 2(a), due to consumer and trade
recognition of WOOLRICH as a trademark as a result of applicant’s long and
extensive use).
There is no requirement that the entire mark be deceptive in order to refuse
registration under section 2(a). A mark may be held deceptive if it merely “comprises
. . . deceptive . . . matter,” even if other elements of the mark are not deceptive. Many
compound marks have been refused registration based on the deceptiveness of one
element of the mark. See, e.g., In re White Jasmine LLC, 106 USPQ2d 1385, 1391-92
(TTAB 2013) (WHITE JASMINE for tea and spice products that do not contain white
tea); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (SUPER SILK
for silk like fabric); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW
YORK for goods from North Carolina); In re Budge Mfg. Co., 8 USPQ2d 1790 (TTAB
1987), aff’d 8 USPQ2d 1259 (Fed. Cir. 1988) (LOVEE LAMB for simulated sheepskin);
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In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (SILKEASE for polyester dresses);
American Speech-Language-Hearing Association v. National Hearing Aid Society,
224 USPQ 798, 808 (TTAB 1984) (CERTIFIED HEARING AID AUDIOLOGIST as
part of a collective membership mark for hearing aid dealers that were not certified
audiologists ); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983)
(CEDAR RIDGE for siding not made of cedar). However, “[m]isdescriptiveness of a
term may be negated by its meaning in the context of the whole mark inasmuch as
the combination is seen together and makes a unitary impression.” In re Budge, 8
USPQ2d at 1261, (citing A.F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc.,
135 USPQ 459, 460 (TTAB 1962) (COPY CALF not misdescriptive, but rather
suggests imitation of calf skin)); In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1748 (TTAB 2016) (although “Section 2(a), … permits a narrower focus
on the allegedly deceptive matter, a refusal to register may not be based on a term
taken out of context when doing so would change its significance in the mark”). See
also In re Sharky's Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB 1992) (reversing
refusal under Section 2(a) for a geographically deceptive mark seeking registration of
PARIS BEACH CLUB because in context, PARIS is part of an incongruous and
humorous phrase, and would not be understood as the geographic origin of the goods).
There are essentially three parts to the Examining Attorney’s argument. First,
the Examining Attorney asserts that the term DESIGN SCHOOL is a separate
element in the mark. 6 TTABVUE 15. Second, the Examining Attorney asserts that
consumers will understand the term DESIGN SCHOOL to be a reference to “design
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education” which is described in the Wikipedia article as “the teaching of theory and
application in the design of products, services and environments.” 6 TTABVUE 19-
20. And finally, the Examining Attorney asserts that this area of study, i.e., the theory
and application in the design of products, services and environments, is not included
in Applicant’s college, university and graduate level courses, and/or courses of study.
The Examining Attorney notes that Applicant characterizes itself as being a design
school on its webpages, but has excluded the services provided by design schools in
the recitation of services.4 6 TTABVUE 19-20, 23. To support his arguments, the
Examining Attorney has provided separate dictionary definitions for “MEDIA,”
“DESIGN,” and “SCHOOL,”5 a Wikipedia definition for “Design Education” as the
basis for his argument that design education must include the teaching of the theory
and application in design for products, services and environments, Wikipedia pages
relating to “Software Engineering,” “Art School,”6 and Internet excerpts from blogs,

4 The Examining Attorney points to Applicant’s advertising material wherein applicant
characterizes itself as being a “digital design school” and “unlike any other design school.” 6
TTABVUE 14, referencing September 17, 2016 Office Action, pp. 85-88.
5 The Examining Attorney has provided the following definitions: “Media,” defined as “the
main means of mass communication (especially television, radio, newspapers and the
Internet regarded collectively)”; “Design,” defined as “the art or action of conceiving of and
producing a plan or drawing” and “School,” defined as an institution at which instruction is
given in a particular discipline. March 11, 2015 Office Action, pp. 2-4. Oxford Dictionaries,
http://www.oxforddictionaries.com/us/definition/american_english/media.
6 The Board gives guarded consideration to evidence taken from the collaborative resource
Wikipedia, bearing in mind the limitations inherent in this reference work, so long as the
non-offering party has an opportunity to rebut the evidence by submitting other evidence
that may call its accuracy into question. See In re IP Carrier Consulting Group, 84 USPQ2d
1028, 1032 (TTAB 2007). As the Board noted in a case involving evidence from a collaborative
online dictionary, such evidence may carry less weight in connection with a Section 2(a)
refusal. Cf. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2061 n.3 (TTAB 2013) (treating
the evidence from the collaborative Urban Dictionary the same as Wikipedia evidence as to
probative value, and in noting the limitations of this evidence, stating “further, in the context
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news articles, and websites of third-party education service providers to show that
the wording DESIGN SCHOOL in the applied-for mark means a type of school that
provides the teaching of theory and application in the design of products, services and
environments. September 1, 2015 Office Action, p. 2; September 17, 2016 Office
Action, p. 115; September 1, 2015 Office Action, pp. 3-14; March 3, 2016 Office Action
pp. 2-49; September 17, 2016 Office Action, pp. 2-114, 116-156.
Applicant points out that the Wikipedia evidence provides two definitions for
design education, the other definition being “learning how to apply practical methods,
prior knowledge, and natural talent to solve new problems” and submits that “the
Examiner has arbitrarily chosen one definition and applied it as inconvertible fact.”
4 TTABVUE 10. Applicant also submits that the definition provided by the
Examining Attorney for DESIGN SCHOOL constitutes an “unreasonable approach”
as the definition is overbroad and could encompass “a host of other academic or
vocational disciplines” as well as “most programs of study in engineering,
management, art, advertising.” Id. Although “Applicant acknowledges that design
schools offer the services the Examiner has identified … [and] that the services it
provides may be broadly construed to include the services the Examiner identified,”
id., Applicant argues that “it is a school for media design and not a design school” and
that “‘MEDIA DESIGN’ is a recognized field of study.” Id. at 11, 13. Applicant further
argues that “the description and mark are not deceptive because the correct

of a Section 2(a) refusal involving the ‘immoral or scandalous’ portion of the statute, we
recognize that while a definition in Urban Dictionary may be indicative of what a term means
to a composite of the general public, we are less sure that it represents the meaning to a
substantial composite, given that just one person can submit a proposed definition.”).
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interpretation of ‘DESIGN’ in the mark will lead consumers to the correct conclusion,
namely, that the mark refers to a school for media design, and not a design school.”
Id. at 16.
Although the Examining Attorney has focused on the DESIGN SCHOOL portion
of the mark in connection with the first inquiry in the Budge test, the commercial
impression of a mark is necessarily derived from the mark as a whole. By
concentrating only on DESIGN SCHOOL the Examining Attorney has neglected to
consider the mark as a whole as well as the commercial impression created by the
unitary phrase MEDIA DESIGN. In the present case, the Examining Attorney has
never indicated that the words MEDIA DESIGN have any misdescriptive meaning or
connotation whatsoever when applied to Applicant’s university, collegiate and
graduate school services.7 Although Applicant acknowledges that the university,
collegiate and graduate school services it provides may be broadly construed to
include the design school services the Examining Attorney identified, i.e., the
teaching of theory and application in the design of products, services and
environments, nevertheless, when the mark is considered in its entirety, it is not
deceptive of these services, as any deceptive significance of the term DESIGN

7 In response to a request for information, the Applicant indicated that the subject matter of
at least some of its services “are more broadly categorized as being in the field of, or types of,
media design” and that at least some of the subject matter in the identification pertain to
types of media and to “various types of design e.g., MEDIA DESIGN.” August 25, 2016
Response to Office Action, p. 3. The Examining Attorney has acknowledged that Applicant’s
identified subject matter includes digital media and that the evidence of record “characterizes
MEDIA DESIGN as being design education in the field of digital media or media.” 6
TTABVUE 15-16. We note that Applicant’s identification includes digital media as the
subject matter of its services.
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SCHOOL is lost by its combination with the word MEDIA. Accordingly, we find that
any misdescriptiveness of the term DESIGN SCHOOL is negated by its meaning in
the context of the whole mark MEDIA DESIGN SCHOOL inasmuch as the
combination is seen together by consumers.
We further note that even if DESIGN SCHOOL was found to be a separable
component of the phrase MEDIA DESIGN SCHOOL there is not sufficient evidence
to establish that a DESIGN SCHOOL must include the teaching of the theory and
application of design for products, services and environments.8 Because we have
found that the first of the three Budge questions must be answered in the negative,
we stop our analysis here. We find that the term DESIGN SCHOOL does not
misdescribe the character, quality, function, composition, or use of the services, in
relevant part, and, therefore, Applicant’s mark is not deceptive when used in
connection with “educational services and on-line educational services, namely,
providing courses of instruction at the college, university and graduate school level,
none of the foregoing including courses in the theory and application of the design of
products, services and environments; educational services, namely, providing courses
of study both in person and on-line, at the college, university and graduate school

8 The Internet evidence shows that design schools offer varied curriculum in connection with
design education and many of these web pages do not specifically indicate that the theory
and application in the design of products, services and environments is taught as part of the
curriculum. The web pages from the AIGA, the professional association for design, note that
design programs vary in their curriculum and point of view, in their “method of delivery,
intended purpose and institutional type,” and in their “degree types, methods of study, and
accreditation levels.” September 1, 2015 Office Action, p. 9. This is borne out by the record
which shows only a few of the design programs offered by institutions specifically state that
the theory and application in design for products, services and environments is part of the
curriculum for that particular design program.
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level, none of the foregoing including courses in the theory and application of the
design of products, services and environments.”
The partial refusal to register Applicant’s mark under Section 2(a) of the
Trademark Act is reversed.
C. Disclaimer
The Director of the USPTO “may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.” Trademark Act Section
6(a). Generic words are considered unregistrable and, accordingly, an examining
attorney may require the disclaimer of these terms as components of otherwise
registrable marks. In re White Jasmine LLC, 106 USPQ2d at 1394. For applicants
seeking registration on the Supplemental Register, a disclaimer is only required if a
component of the mark is incapable of becoming a trademark, e.g., generic. See In re
Carolyn's Candies, Inc., 206 USPQ 356, 359-60 (TTAB 1980). Failure to comply with
such a disclaimer requirement is a ground for refusing registration. See In re
Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005).
As stated, a mark or portion of a mark is considered “unitary” when it creates a
commercial impression or meaning separate and apart from any unregistrable i.e.,
descriptive or generic component. Disclaimers of generic words should not be required
if they may be considered an integral part of a unitary term or phrase.
Because, as stated above, MEDIA DESIGN creates a single unitary phrase apart
from the word SCHOOL, no disclaimer of the phrase DESIGN SCHOOL is required.
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The refusal to register based on the requirement for a disclaimer of DESIGN
SCHOOL is reversed. The disclaimer of SCHOOL stands as currently set forth in the
record.
Decision: The Section 2(a) refusal to register Applicant’s mark MEDIA DESIGN
SCHOOL in connection with some of the services is reversed. The requirement of a
disclaimer of DESIGN SCHOOL is reversed, and the application, with its disclaimer
of SCHOOL, will proceed to registration on the Supplemental Register.