A “trademark disclaimer statement” is part of an application for registering a trademark that is filed with the U.S. Trademark Office. There is a specific section of the application that is provided for disclaimers. The statement is itself rather simple: “No claim is made to the exclusive right to use “________” apart from the mark as shown.” In the blank space, the applicant will list whatever words or design aspects of the proposed trademark that are being disclaimed. The purpose of a disclaimer is to indicate that the applicant does not claim — and will not have — exclusive rights to the disclaimed portion of the proposed trademark. Note that when the trademark is registered, the disclaimer is noted on official records and is printed on the resulting trademark registration certificate.

Generally, disclaimers are required when a proposed trademark uses generic or merely descriptive words or symbols. Trademarks create “micro-monopolies” in the sense that a trademark owner can sue another company and prevent the use of the trademark. So, disclaimers are required to prevent companies and businesses from having an unfair advantage in the marketplace. Consider, for example, the generic words FOUNTAIN PEN for a type of writing utensil. “Fountain pen” is the generic name consumers use to define a type of writing instrument. If a company making writing utensils were able to register the trademark FOUNTAIN PEN, then all other companies making fountain pens would be at a severe competitive disadvantage since they could be sued for trademark infringement by advertising their product as a “fountain pen.” So, in general, an applicant for registration would be required to disclaim FOUNTAIN PEN as part of their application.

Note that the rules with respect to disclaimers are not only a function of generic and descriptive words but are also a function of the class of goods that is selected. “Fountain pen” must be disclaimed for the trademark class involving writing instruments, but not for very different classes of goods — like, for example, automotive parts and accessories. Thus, FOUNTAIN PEN TIRES would not require a disclaimer for “fountain pen” (but would require a disclaimer for “tires”).

As can be seen, the trademark disclaimer rules are rather complex. It is probably wise to seek the legal advice and guidance of experienced trademark lawyers — like those at Revision Legal — before making a disclaimer. Matters are complicated further by exceptions to the disclaimer requirements. One exception is for “unitary marks.” As defined here, “[a] mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable.”

Do I Need to File a Trademark Disclaimer?

There are two “schools of thought” on whether — and when — to file a trademark disclaimer statement. One “school” suggests volunteering the disclaimer as part of the application when such is clearly warranted. The other “school” — probably the majority position — suggests withholding a disclaimer statement until the Trademark Examining Attorney asks for one. If the Trademark Office thinks a disclaimer is required, the Examining Attorney will send correspondence called an Office Action. At that point, you will know what disclaimer is being required and can agree or object.

Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Categories of Matter That Typically Require Disclaimers

The USPTO’s Trademark Manual of Examining Procedure (TMEP) identifies specific categories of matter that will ordinarily require a disclaimer as a condition of registration on the Principal Register:

• Generic terms. A generic term is the common name for the goods or services in the applied-for class. COMPUTER for computer hardware, PIZZA for a pizza restaurant — these must be disclaimed regardless of how they are combined with other elements. No amount of stylization makes a generic term registrable as a monopoly on the generic name would shut competitors out of the market.
• Merely descriptive terms. A term is merely descriptive if it directly and immediately conveys information about an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services. SPEEDY for a courier service, COLD for ice cream — descriptive and disclaim-required. Highly suggestive terms that require imagination to connect to the product are NOT merely descriptive and need not be disclaimed.
• Primarily geographically descriptive terms. Terms that primarily denote a geographic location associated with the source of goods must be disclaimed. MICHIGAN for Michigan-made furniture; PARIS for a perfume. An exception applies for marks that have acquired distinctiveness (secondary meaning) in the geographic term.
• Primarily merely a surname. Terms that consumers would primarily recognize as a last name must be disclaimed unless they have acquired distinctiveness.
• Non-distinctive design elements. Common geometric shapes, standard punctuation, and non-distinctive color combinations used as background elements may require disclaimer.

The Implications of a Disclaimer for Post-Registration Enforcement

A disclaimer has significant consequences for post-registration enforcement. First, a disclaiming party cannot later claim trademark rights in the disclaimed element as a separate, standalone mark. Courts and the TTAB have held that a disclaimer constitutes an admission that the disclaimed term is not inherently distinctive when used independently.

Second, when assessing likelihood of confusion with a later-filed mark, Examining Attorneys and courts give less weight to the disclaimed portion. If the registered mark is BLUE RIVER BANK (with BANK disclaimed) and the later-filed mark is GREEN RIVER BANK (with BANK also disclaimed), the comparison focuses primarily on BLUE RIVER vs. GREEN RIVER — the disclaimed element does not drive the analysis.

Third, in TTAB opposition and cancellation proceedings, a disclaimer can be used by an opposing party to argue that the applicant’s registration is weaker than it appears. A mark with multiple disclaimed elements and no remaining inherently distinctive components may be challenged as lacking the distinctiveness required for registration.

Responding to a Trademark Office Action Requiring a Disclaimer

If your trademark application receives an Office Action requiring a disclaimer of a specific element, you have three options:

• Accept the disclaimer. Submit the required disclaimer language in the response to the Office Action. This resolves the issue but has the downstream implications described above. If the required disclaimer is reasonable given the descriptive nature of the element, acceptance is often the most pragmatic approach.
• Argue against the disclaimer. If the element is not generic or merely descriptive but is instead suggestive or has acquired distinctiveness, a substantive argument can be submitted with supporting evidence — dictionary evidence, competitor usage evidence, and for acquired distinctiveness claims, evidence of long use, advertising expenditures, and consumer surveys.
• Amend to the Supplemental Register. In limited circumstances, moving the application from the Principal Register to the Supplemental Register may be appropriate. Supplemental Register registration does not require disclaimers but provides substantially fewer legal benefits — no presumption of validity, no constructive notice, and no incontestability.

Revision Legal’s trademark attorneys handle all aspects of trademark application prosecution, including Office Action responses involving disclaimer requirements. Contact us at (855) 473-8474.