What is a trademark disclaimer?
Sometimes a trademark may include one or more words regarded as merely descriptive or generic in relation to the products or services covered in a trademark application. A trademark disclaimer is a statement made of record in a trademark application or registration to indicate that the owner does not claim any exclusive rights to the disclaimed portion of the mark.
For example, if I were to apply for the mark “Vic’s Donuts” to cover doughnuts and other such tasty goodies, a disclaimer of the term “donuts” will be required. If a disclaimer is not voluntarily submitted at the initial filing, you can expect an Office Action where the assigned trademark examiner will request the following:
No claim is made to the exclusive right to use “________” apart from the mark as shown.
Why are disclaimers required for certain words?
Disclaimers may also be required for well-known symbols (e.g., $, Rx) and business entity designations such as Corporation, Inc., Company, Co., Ltd., LLC, LLP, Bros., etc.
How to avoid a disclaimer
The exception to the rule is when the potentially descriptive/generic word is used in a unitary phrase. An example is “TIP YOUR HAT” for hat products. In this unitary mark, the verb integrates the word “hat” such that it becomes inseparable. A unitary mark must create a single and distinct commercial impression. Prepositions, punctuation and possesives may also create unitary marks that would not require disclaimers.
You also have the option to argue that a particular term is not generic or merely descriptive such that a disclaimer would not be warranted. The effectiveness of such an argument will depend on the particular facts of each case, and the relationship between the term and the specific goods or services identified in the application.
Should you agree to a requested disclaimer?
In most cases where the term to be disclaimed is generic or highly descriptive, it would be more expedient to provide the requested disclaimer so that the trademark application can quickly progress to an allowance and eventual registration.
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