What is a Trademark Disclaimer?
Sometimes a trademark may include one or more words regarded as merely descriptive or generic when viewed in connection with 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.
Need help with your trademark filing? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you register your trademarks properly.
Why USPTO Examining Attorneys Require Trademark Disclaimers
Disclaimers prevent trademark owners from gaining an unfair advantage by clarifying what is not proprietary in a mark. Generally, they are necessary when certain wording in a trademark has a generic meaning in relation to the goods or services.
If the primary significance of a term to the relevant public is the class or category of goods or services on which it is used, then the term is generic. For example, if I were to apply for the mark “Vic’s Donuts” to cover doughnuts, a disclaimer of the term “donuts” would be required.
Trademark disclaimers may also be required for well-known symbols such as $ or Rx. Disclaimers may also be required for business entity designations such as Corporation, Inc., Company, Co., Ltd., LLC, LLP, Bros., etc.
How to Avoid Disclaimers
Unitary Marks
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.
For example, “TIP YOUR HAT” would be a unitary phrase 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.
Marks That Are Not Generic or Descriptive
Depending on your identified goods or services, you might have the option to argue that a disclaimer is not warranted because the particular term is not generic or merely descriptive. 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 Trademark Disclaimer or Argue Against It?
Keep in mind that none of this is legal advice. If you wish to seek professional legal advice, you should be prepared to retain a US-licensed trademark attorney and pay for a proper analysis of the particular issues in your trademark application.
Generally, trademark applications will take less time and money to get approved if the applicant agrees to a required disclaimer. This is not to say whether or not the disclaimer is warranted. US trademark applications typically progress to an allowance and eventual registration more quickly when disclaimers are submitted.
Drafting arguments against a disclaimer requires substantially more effort. In considering potential arguments against a required disclaimer, you need to factor not only the cost but also the strength of your arguments. Does the particular term for which a disclaimer is required have a descriptive meaning with respect to the identified goods or services?
If not, it might be worthwhile to argue that a disclaimer would not be warranted. The effectiveness of such arguments will depend on the particular facts of each case.
What You Surrender When You Submit a Disclaimer
When you submit a disclaimer, you will forfeit rights to go after someone who might use that term alone in connection with products or services similar to those in your trademark filing.
For example, if I were to submit a disclaimer of “donuts” in my mark for VIC’S DONUTS covering actual doughnut goods, I would not be able to go after someone else who uses “donuts” alone in connection with selling their doughnut product.
Hypothetically, it would be a different question as to whether or not I might be able to pursue a competitor for using VIK’S DONUTS.
How We Successfully Argued Against a Requested Disclaimer
We successfully argued against a required disclaimer of “SPEED” in our client’s trademark application for SPEED DEMON directed to shin guards.
When the meaning of a mark is incongruent or otherwise non-descriptive of the goods or services, a reasonable argument can be made that a disclaimer of a term should not be required.
Does a Disclaimer Mean that the Entire Mark is Unprotectable?
In most cases, a disclaimer applies to only a portion of the mark, not the mark in its entirety. If a trademark examining attorney felt that a word 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).
In a design mark application that includes both wording and some graphic or stylized elements, it is possible that a trademark examining attorney may require a disclaimer of the entire wording. In such cases, only the design elements would be protected.
