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What Impact Does Disclaiming Material Have on My Trademark?

By Eric Misterovich

2000px-RegisteredTM.svg 2000px-RegisteredTM.svg Trademark registration is a valuable asset and when companies invest in securing federal trademark registration, they want to obtain a full registration of the exact mark submitted.

But many times businesses attempting to register a trademark and are meet with an Office Action requiring that certain components of the mark be disclaimed. In most cases this is not a major problem, but it is important to understand what a disclaimer means.

What Portions of Marks Are Usually Disclaimed?

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. See 15 USC § 1052(e)(1).

Further, business type designations and abbreviations such as “corporation,” “Inc.,” “Company,” and “Ltd.” must be disclaimed because they merely indicate the applicant’s business type or structure and generally have no source-indicating capacity. TMEP § 1213.03(d).

When an applicant disclaims certain potions of the mark, it does not affect the appearance of the mark or somehow physically remove those portions of the mark from the overall mark. See Schwarzkopf v John H. Breck, Inc. 340 F.2d 978 (CCPA 1965); TMEP § 1213. As a result, many applicants simply accept the disclaimers and move on to final registration.

Should I Disclaim Portions of My Mark?

But, disclaimers, by definition, limit the overall protection of the mark as applied for. And there could be situations that exist in which the applicant requires registration of the unitary mark as a whole, and does not wish to concede that any portion of the mark is not subject to registration. 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. See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981)

To determine whether you should accept a disclaimer, it is highly recommended to consult an experienced trademark attorney. You can contact Revision Legal’s trademark attorneys at 855-473-8474.

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