What is a Disclaimer in a U.S. Trademark Application?

Create Time 2018-04-20 12:04    Views:18747

If you have a pending trademark application, you may receive an Office Action or be otherwise contacted by a trademark Examiner who requires a “disclaimer” to be added to your application disclaiming certain words or designs included in your filed trademark. 

What is a disclaimer?

A disclaimer is a statement that you include in your application to indicate that you do not claim exclusive rights to an unregistrable portion of your mark. For example, if you sell hats and your mark includes the generic word "HATS," you could not object to someone else also using the word “HATS” as part of his/her mark. 

While it is sometimes possible to refute the allegation that a term is unregisterable by providing persuasive reasons to the Examiner, in the majority of cases, if you do not provide a required disclaimer, the USPTO may refuse to register your entire mark. 

A disclaimer may be required by the Trademark Examiner because some words and designs in a mark are considered unregisterable, because they are needed by other people or business to be able to describe their goods, services, and/or businesses.  As noted above, you cannot claim the exclusive right to use the term “HATS” as even a portion of your trademark, as this would prevent too many other individuals or business who work in the same industry.  A disclaimer in your registration makes it clear that the disclaimed terms may be used without the trademark applicant raising legal objections.

How does a disclaimer affect my trademark?

It should be noted that a disclaimer does not physically remove the unregistrable portion from your mark or affect the appearance of your mark or the way you use it. It is merely a statement that the disclaimed words or designs need to be freely available for other businesses to use in marketing comparable goods or services.  The word is still part of both marks, but no one is claiming exclusive rights in that word, because it is an unregistrable component of an overall mark.

Typically, the disclaimer statement that is added to the trademark application is as follows:

“No claim is made to the exclusive right to use ‘INSERT DISCLAIMED WORD(s)’ apart from the mark as shown.” 

Reasons for a disclaimer in a trademark application

This disclaimer statement will appear on the registration certificate and as part of the recorded history of the trademark application.  A disclaimer in your registration makes clear to others that they may use the disclaimed terms and that such terms on their own are not registerable.  Examples of portions of a mark that are not registrable and require a disclaimer include various “categories” of words such as:

·         merely descriptive words or designs (e.g. “Creamy” for yogurt)

·         geographical words (e.g. “American”, “Northern”) 

·         laudatory words (e.g. “the Ultimate”, “the Greatest”)

·         generic words (e.g. “hats” for a mark related to headwear or hats, “fruit” for a mark related to fruit snacks or fruit juice)

·         informational words (e.g. the year a business was established or net weight) or

·         business type designations (e.g. “Inc” or “Corp”).

There may be many other reasons why a disclaimer may be required and the list above is not exhaustive of all reasons.  For example, misspelled versions of wording, such as QUIK PRINT, may require a disclaimer of the correct spelling of the unregisterable term (e.g. which may need to be disclaimed as “QUICK PRINT”). 

Foreign terms may also be subject to a disclaimer requirement in the same way that the English version of the wording is subject to a disclaimer requirement if the word is descriptive, generic, geographic, or otherwise unregistrable.  (e.g. “Bueno” or “El Norte”). 

An important concept is that it is not possible for an entire mark to be disclaimed.  In such a situation, the mark is completely unregisterable and a disclaimer cannot cure the mark of its deficiencies. Notably, a disclaimer serves as a notice to the public that certain parts of the trademark are not considered “distinctive” on their own.  Thus, the combination of the mark as a whole has to have a minimal element of distinctiveness or potential to be acquired distinctiveness in order to be registerable on either the Principal Register or the Supplemental Register

In conclusion, it is important to note that many issued trademarks include disclaimer statements on their registration certificates.  Rest assured that having a disclaimer statement is not fatal to the registerability of a trademark.  In fact, it may be a necessary requirement for a trademark application to be allowed and ensures that trademarks include distinctive words or designs in their respective classes of goods or services.

Disclaimer:  This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney.  The information provided above is meant for informational purposes only and may be subject to change. 

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