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 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.

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.

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.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.