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 to indicate that the applicant does not claim any exclusive rights to the disclaimed portion of the mark [see TMEP 1209.01(c)]. The disclaimer would be printed on the resulting trademark registration.
The test for whether a term is generic is if its primary significance to the relevant public is the class or category of goods or services in connection with which it is used.
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 examining attorney will request the following statement:
No claim is made to the exclusive right to use “________” apart from the mark as shown.
Why are disclaimers required for certain words and symbols?
To prevent trademark owners from gaining an unfair advantage, a disclaimer clarifies what is not proprietary in a mark. The reasons why disclaimers are necessary is because trademarks may often have generic wording. 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 generic word is used in a unitary mark, such as a unitary phrase [see TMEP 1213.05]. A unitary phrase is a group of words used together to form an expression.
An example of a unitary phrase 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. In contrast, a mark such as VIC’S HATS would not form a unitary phrase, thereby requiring HATS to be disclaimed.
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.
A disclaimer does not mean the entire mark is unregistrable
A disclaimer applies to a only a portion of the mark, and not the mark in its entirety. If a trademark examining attorney felt that a mark was entirely unregistrable, a disclaimer would not be required. Instead, the entire mark would be rejected (e.g., for reasons such as incapable of function as a source identifier).
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