Are you applying for a trademark in the United States? The United States Patent and Trademark Office (hereinafter USPTO) has a disclaimer requirement. According to 15 U.S.C. §1052(e)(1), trademark registration shall be refused if it “[c]onsists of a mark which when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them.” According to 15 U.S.C. §1056, “The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.” To learn more about trademark registration disclaimers, continue reading.
What is a Disclaimer?
The USPTO states, “[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. The entire mark, however, cannot be disclaimed.”
Unregistrable Portions of a Trademark
As mentioned in What Impact Does Disclaiming Material Have on My Trademark?, “In general, portions of a mark that are generic, or that do not function as a mark, must be disclaimed. For example, in the fictional ACME IRON WORKS, INC., the IRON WORKS, INC. portion of the mark will likely need to be disclaimed before registration is granted. These words merely describe an ingredient, quality, characteristic, function, feature, purpose, or use of the applicant’s goods and services. As result, those words are unregisterable.”
Moreover the USPTO sets forth a list of portions of a mark that are not registrable and require a disclaimer. The list includes the following:
- Merely Descriptive Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services).
- Generic Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys).
- Geographic Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada).
- Business Type Designations: Designations that merely indicate information about the type or structure of your business, such as “Corporation,” “Inc.,” “Company,” “Ltd.,” “Bros.”
- Informational Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.
- Well-known Symbols: Symbols that provide information about your goods and/or services (such as the biohazard symbol for medical waste containers, the prescription symbol for medical goods, and the dollar symbol for financial services) or convey a social, political, religious, or similar kind of message (the recycling symbol on the front chest-area of a t-shirt indicating the wearer supports recycling or environmental causes).
- Deceptively Misdescriptive Words/Designs: Words/designs that describe your goods and/or services in a way that is both false and believable but will not materially affect a consumer’s decision to purchase the goods and/or services (for example, the mark SAL’S GLASS WAX for a glass cleaner that does not contain wax; that the goods do not contain wax would not necessarily change a consumer’s decision to purchase the cleaner).
For more information about disclaimers in trademark registration, contact Revision Legal’s experienced trademark attorneys through the form on this page or call (855) 473-8474.