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.