The key concept to understand when considering trademark disclaimers is the fundamental, trademark doctrine of Distinctiveness. Remember, trademarks exist along a Spectrum of Distinctiveness and if the mark is not sufficiently distinct, it is ineligible for registration. In the event that part of the trademark is distinct (given the goods/services listed in the TM application) but a different part is not sufficiently distinct, the applicant will need to provide a “Disclaimer” on the non-distinct aspect of the mark.
TRADEMARK DISCLAIMERS ARE NOT ABSOLUTE
A trademark is a name, logo, slogan, or sound used in connection with the sale of a good/service. While some trademarks are absolutely distinct and straightforward, like NIKE, others have multiple word-elements, like a hypothetical, DINO ALPHA BBQ, trademark. In this case, if the owner of this prospective mark were to be in the BBQ business, DINO ALPHA would be considered distinct elements of the mark but “BBQ” serves merely a descriptive, if not generic, purpose. These words are therefore recognized as “disclaimed portions” of the trademark.
WHAT IS THE PURPOSE OF A TRADEMARK DISCLAIMER?
Remember, distinctiveness matters in trademark jurisprudence because a trademark ultimately acts as a source identifier. When a consumer sees NIKE written on tennis shoes, the purchaser understands that the shoes were produced by the NIKE corporation. However, a new startup shoe company would, of course, be denied a trademark on the word “SHOES” because this word is merely a generic representation of what it is that the company is selling; SHOES. This word would not in any way identify the source-company of the product because a million other companies also sell, Shoes. However, if this new tennis shoes startup were to apply for the trademark ZENO SHOES, it would be reasonable to allow the mark to proceed as long as its registration would not preclude other companies from also using the word SHOES in their branding.
The idea then behind a Trademark Disclaimer is to simultaneously allow an applicant to obtain proprietary rights to the distinct part of the prospective mark (ZENO) while ensuring the generic/descriptive portion of the mark (SHOES) remains open to public use. In this example, a disclaimer for “SHOES” would be required.
TRADEMARK DISCLAIMERS ARE ISSUED IN STANDARD FORMAT
A trademark disclaimer represents an applicant’s awareness and acquiescence to the legal reality that he or she holds no exclusive rights to the disclaimed portions of mark. The trademark disclaimer appears as a statement of record in a trademark application and the official trademark registration includes this disclaimer.
Should you fail to voluntarily submit such a disclaimer when you initially file, an Office Action will result in which the assigned trademark examining attorney will state something to the following effect:
“Applicant must disclaim the wording ZZZZ because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.”
The examinig attorney will then mandate the applicant’s of the following:
“No claim is made to the exclusive right to use “________” (in this case, “Shoes”) apart from the mark as shown.”
TRADEMARKS WHICH REQUIRE DISCLAIMERS
Remember, the essential purpose of the disclaimer requirement is to ensure that competitors can rightfully continue to use portions of your trademark that are not sufficiently distinct. Nearly ever trademark disclaimer requirement will arise in one of the following situations:
GENERIC WORDS/DESIGNS: Here, the designated word is simply a common name for the good/service listed in the trademark application (WOOD for a company that is in the lumber business)
MERELY DESCRIPTIVE WORDS/DESIGNS: Here, the designated word/design merely describes the goods/services listed in the trademark application (BRIGHT for a company that is in the light fixture business)
GEOGRAPHIC WORDS/DESIGNS: Here, the designated word/design merely describes the origin of the goods/listed in the trademark application which of course, is not an inherently distinct feature of a trademark (Houston for meat from Texas)
LAUDATORY WORDS/DESIGNS: Here, the designated word/design is simply a postive-adjective which characterizes the goods/services listed in the trademark application (THE TOP for accounting services)
INFORMATIONAL WORDS: Here, the word simply provides actually information about the goods/services listed in the trademark application. This information is instructive and therefore cannot serve as a source identifier. Informational words include addresses, lists, volume statements, net weights, historical data about the company etc.
FAMOUS SYMBOLS: Here, the symbol component of the trademark references and/or contains actual information about the goods/services listed in the trademark application (a money symbol for a company selling accounting services) and therefore, is insufficiently distinct to qualify for trademark registration.
DECEPTIVELY MISDESCRIPTIVE: Here, the designated portion of the trademark describes the goods/services listed in the trademark application in such a way as to potentially confuse a consumer about the nature of those goods. For example, APEX CRYSTAL MUGS for beer glasses that are not actually made out of crystal.
HOW TO DISCLAIM COMPOUND, FOREIGN, MISSPELLED, AND/OR UNITARY WORDS
Remember, the essential purpose of the disclaimer requirement is to ensure that competitors can rightfully continue to use portions of your trademark that are not sufficiently distinct. Nearly ever trademark disclaimer requirement will arise in one of the following situations:
FOREIGN WORDING: Wording contained within a trademark that would otherwise require a disclaimer in the English language similarly requires a disclaimer in a foreign language. For example, D’VASH, which means honey in Hebrew, would require a disclaimer if the goods sold included honey. The disclaimer must specifically designate the non-English wording. In the event that the foreign wording in the mark is in the language’s mother characters, which are non-Latin characters (Chinese), the disclaimer must also be for the non-Latin characters.
COMPRESSED COMPOUND WORDING: Wording contained within a trademark that consists of a combination of words that are both distinct and not distinct (from the perspective of trademark law) must be appropriately parsed so that the generic/descriptive wording is explicitly disclaimed.
MISSPELLED VERSIONS OF WORDING: It is entirely common for trademark applications to use trademarks which consists of words that are purposefully misspelled. In the event that the Misspelled words are descriptive/generic versions of the goods/services sold, they must be Disclaimed. For example, PHOOD for the sale of fruits and vegetables must be Disclaimed AND spelled correctly, as FOOD in the disclaimer statement.
TRADEMARK DISCLAIMERS ARE NOT ALWAYS NECCESARY
Trademark Disclaimers delineate which aspects of a mark are not proprietary, or in another form, are descriptive/generic. This prevents trademark owners from illigitmately cornering a market and (like SHOES) and pushing out competitors. The more descriptive and/or generic the feature of the prospective mark, the greater the likelihood the applicant will be required to acquiesce to a disclaimer.
Notably, there are several routes one can take to either escape the prima facie requirement of a Disclaimer or rebut an office action’s requirement of a disclaimer requirement.
Unitary Marks
In the event that your prospective trademark is a “Unitary mark and/or phrase”, you may very well not need to disclaim the suspect portion of the mark. “Unitary” means that the mark, to be coherent and meaningful, can only be viewed in its entirety rather than in isolated components.
“The Mark is ‘unitary’ when it creates a commercial impression separate and apart from any unregistrable component.” TMEP 1213.05
Examples include “TAKE THIS MEDICINE”, where the word “MEDICINE” would otherwise be considered generic, yet would not need a disclaimer because it is part of a Unitary phrase. Or, “FILING TAXES SO YOU DON’T HAVE YOU” – TAXES may superficially require a disclaimer and yet because it is part of an entire phrase, which must be viewed in its totally, does not presently demand a Disclaimer.
Grammatical forms such as possessives, prepositions, and punctuation can also denote a phrase as unitary and thereby avoid the disclaimer requirement.
Objecting to a Trademark Disclaimer Requirement
As we noted above, a trademark office action demanding a disclaimer requirement will say something to the effect of, “Applicant must disclaim the wording ZZZZ because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services…”. Your task, if you choose to accept it, is to argue why the suspect word is not descriptive and/or generic vis-à-vis the goods listed in the TM application. Depending on how effective and compelling of an argument the applicant’s trademark attorney can make, the examining attorney may or may not agree to withdraw the disclaimer requirement.
TRADEMARK DISCLAIMER: WHEN TO AGREE AND WHEN TO PUSH BACK
Does it make sense for an applicant to agree to a proposed trademark disclaimer? By and large, yes. In most circumstances, the term considered for a disclaimer is indeed generic or descriptive. Agreeing to the disclaimer, then, would expedite the application and hasten the trademark’s registration. Conversely, there are some legitimate circumstances whereby the trademark examiner just got it wrong and fighting a disclaimer requirement makes sense. This is particularly the case when the applicant applies for somewhat exotic goods (like CBD) and the trademark examininer may not understand how the term CBD reflects or doesn’t reflect the goods listed in the appication.
Ultimately, please remember that a disclaimer does NOT mean that the entire mark cannot be registered.
The disclaimer nearly always only applies to a portion of the mark, not the mark in its entirety. If a trademark examining attorney concluded that an entire mark was unregistrable, the complete and entire mark would very likely be rejected on the grounds that it is either generic or merely descriptive.
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