Sometimes, those seeking to register a trademark with the US Patent & Trademark Office (“USPTO”) are required to file a “disclaimer statement.” Generally speaking, a “disclaimer statement” is a statement included with your trademark registration application or separately provided that states legally that you disclaim any trademark legal protection for some part or portion of your trademark. That is, you agree that some part or portion of your trademark cannot be registered as a trademark and you agree that you cannot enforce trademark rights with respect to that portion of your trademark.

For example, if your business sells apples and the word APPLES is part of your trademark slogan or design, you would file a disclaimer statement with respect to the word APPLES. The word APPLES is too common, descriptive and generic to be registered as a trademark for a business selling apples. For this reason, including the word as part of a larger trademark design or word mark jeopardizes registration. Thus, the USPTO will ask for a disclaimer statement with respect to that unregistrable component of the trademark.

Note that filing a disclaimer statement does not remove that part or portion from the trademark or change the appearance of the trademark. Rather, a disclaimer statement means that you cannot sue in court for trademark infringement with respect to that part of the trademark.

What does a disclaimer statement look like?

Usually, a disclaimer statement is made as part of the application. Sometimes, at the request of the USPTO, it is made in a separate document. The statement itself is a simple one-liner, something like: “No claim is made to the exclusive right to use “APPLES” apart from the mark as shown.” According to the USPTO, any disclaimer statement made will appear on the Certificate of Registration that is eventually issued.

Example of typical words or components that must be disclaimed

For word marks, these are examples of types of words that must generally be disclaimed:

• Descriptive words — such as “fluffy” for stuffed animal toys
• Boastful or laudatory words — such as “The Best” or “the Greatest”
• Generic words — that, for example, might describe an industry
• Geographic words — such as use of a city name as part of a trademark or design
• Corporate form identification words — such as “Corporation,” “Inc.,” “Company,” etc.
• Informational words — such as the word “business” in a design logo or the date established information
• Well known symbols — such a dollar sign

For design marks, a similar set of limitations apply to aspects of the design. For example, a realistic geographic representation of a city or state would require a disclaimer. Likewise, if the design depicts a realistic photo or drawing of an apple, then a disclaimer might be required for that component of the trademark design.

If you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

The Legal Authority for Disclaimer Requirements

The USPTO’s authority to require disclaimer statements is grounded in 15 U.S.C. § 1056, which provides that the USPTO may require the applicant to disclaim an unregistrable component of a mark as a condition of registration. The examining attorney issues a disclaimer requirement through an Office Action when the trademark application contains an element that, standing alone, would not be registrable—typically because that element is generic, descriptive, geographical, or a corporate identifier. The disclaimer does not prevent registration of the overall mark; it merely excises the unregistrable component from the scope of the trademark registration.

The Trademark Manual of Examining Procedure (TMEP) § 1213 provides detailed guidance on when disclaimers are required. Failure to comply with a disclaimer requirement results in abandonment of the trademark application. However, applicants can contest a disclaimer requirement by submitting evidence that the component is not descriptive or that it has acquired distinctiveness through secondary meaning. This type of argument is governed by 15 U.S.C. § 1052(f) and typically requires substantial evidence of long, exclusive use.

Design Marks and Disclaimer Requirements

Disclaimer requirements arise not only in word marks but also in design marks that incorporate textual elements. When a design mark includes words or phrases that are descriptive, generic, or otherwise unregistrable, the USPTO may require a disclaimer of those words even though the overall design is registrable. The disclaimed words remain visible in the mark as registered—the disclaimer does not alter the mark’s appearance—but the trademark owner cannot assert trademark rights in those words standing alone.

Common design mark disclaimer scenarios include:

• A stylized logo that includes the word ‘Restaurant’ or ‘Cafe’ for a food service business — the design may be registrable but the common descriptive word must be disclaimed
• A trademark design that includes a city name or geographic reference — geographic terms are generally not registrable absent acquired distinctiveness, so they must be disclaimed
• A logo that includes the word ‘Legal’ or ‘Law’ for a law firm — descriptive of the type of service provided and typically subject to disclaimer
• A trademark that includes ‘Inc.,’ ‘LLC,’ or ‘Corp.’ — corporate identifiers are routinely disclaimed as they do not identify the source of goods or services but merely the entity form

What a Disclaimer Does and Does Not Do for Enforcement

The practical enforcement consequences of a disclaimer are significant. A trademark owner who has disclaimed a component of their mark cannot rely on that component alone to establish likelihood of confusion in infringement litigation. Under 15 U.S.C. § 1115(b)(4), a disclaimed element is treated as a weak or unprotectable element when evaluating the overall strength of the mark. Courts will focus their likelihood of confusion analysis on the non-disclaimed elements of the mark.

This does not mean that disclaimed elements are irrelevant to infringement analysis. Courts still consider the totality of the marks, including disclaimed elements, when comparing the marks as a whole. A disclaimed geographic term, for example, might still contribute to the commercial impression of the overall mark. The key is that the trademark owner cannot claim that the disclaimed element alone creates confusion, nor can they prevent competitors from using that element in other contexts.

Strategic Considerations: When to Fight a Disclaimer Requirement

Trademark applicants should not automatically accept disclaimer requirements. In some cases, the examining attorney’s assessment that an element is merely descriptive or generic is debatable, and a well-reasoned response to the Office Action can persuade the examiner to withdraw the requirement. Key strategic considerations include:

• Evidence of acquired distinctiveness — If the element has been in continuous and exclusive use for five or more years, a claim under Section 2(f) may allow registration without a disclaimer
• Consumer survey evidence — A consumer survey showing that the relevant purchasing public does not perceive the element as descriptive can support an argument against disclaimer
• Third-party registrations — Evidence that the USPTO has registered similar elements without requiring disclaimers in comparable contexts supports an argument for inconsistent examination
• Competitive impact — If the disclaimer would significantly weaken the mark’s enforcement value, the cost-benefit analysis may favor contesting the requirement through appeal to the Trademark Trial and Appeal Board

Navigating Disclaimer Requirements With Experienced Trademark Counsel

Whether you are filing a new trademark application, responding to a disclaimer requirement, or evaluating the enforcement impact of a disclaimed element in your registered trademark, the trademark attorneys at Revision Legal have the experience to guide you. We can evaluate your mark, assess the strength of any argument against disclaimer, and develop the registration and enforcement strategy that best protects your brand. Contact us today.