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.
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. To save time by avoiding an Office Action, you can voluntarily submit a disclaimer at the initial filing. Otherwise, the trademark examiner (“examining attorney”) may issue an Office Action to request the following statement:
No claim is made to the exclusive right to use “________” apart from the mark as shown.TMEP Section 1213
Why are trademark disclaimers required for certain words and symbols?
Disclaimers prevent trademark owners from gaining an unfair advantage by clarifying what is not proprietary in a mark. They are generally necessary when certain wording in a trademark has a generic meaning in relation to the goods or services. 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
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.
For example, we successfully argued against the need for a disclaimer of “SPEED” in our client’s mark 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.
Should you agree to or argue against a disclaimer requirement?
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. Disclaiming is also cheaper than arguing. If you believe a requested disclaimer is not warranted, you may submit arguments which will likely be significantly more expensive.
If a particular term is not generic or merely descriptive in relation to the goods or services, it might be worthwhile to argue that a disclaimer would not be warranted. The effectiveness of such an argument will depend on the particular facts of each case. It is critical to analyze the relationship between the term and the specific goods or services identified in the application.
For example, 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?
No, 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).