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What is a Trademark Disclaimer (with regards to a USPTO trademark application)? (From uspto.gov/trademarks/DisclaimerPaper.doc) A disclaimer states that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration, apart from the mark as a whole. One purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant’s right with respect to certain elements in the mark. In describing this purpose, the United States Court of Appeals for the Federal Circuit
has noted that disclaimers may serve to “…facilitate the commercial purposes of the
trademark law.” In re K- Some disclaimer to registration is filed in about 19.6 percent of USPTO applications and registrations according to a 2013 USPTO study. (Graham, Stuart J. H., Hancock, Galen, Marco, Alan C. and Myers, Amanda F., The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights (January 31, 2013)) Trademark Disclaimers and Unitary Marks The Trademark Act provides for a way for trademarks containing unregisterable matter to be registered on the Principal Register or Supplemental Register (In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980)) by requiring that the unregisterable part of the mark be disclaimed. Every rule has exceptions, if the unregisterable part and the registerable part together create a “unitary” mark, the otherwise unregisterable part does not have to be disclaimed. A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component (TMEP 1213.05). Specific categories of unitary matter has emerged through case law and USPTO policy,
such as compound word marks, telescoped words, hyphenated terms, slogans, double
entendre, incongruity, and visual display of the mark conveying a unitary whole.
See TMEP 1213 Disclaimer of Elements in Marks for more information. Unitary mark
claiming can also eliminate problems with merely- How Common are Problems With Disclaimers? Very Common Between April 16, 2008 and October 16, 2010, approximately 29% of first Office actions (not including examiner’s amendments), 6% of final Office actions, and 5.5% of appeals to the Trademark Trial and Appeal Board contained a disclaimer requirement. (From uspto.gov/trademarks/DisclaimerPaper.doc) Standard Disclaimer Form The standardized disclaimer text is as follows: No claim is made to the exclusive right to use ____________, apart from the mark as shown. Where non- No claim is made to the exclusive right to use ________ or ________, apart from the mark as shown. The standard wording required for a design element is: No claim is made to the exclusive right to use the design of “____” apart from the mark as shown. For non- No claim is made to the exclusive right to use the non- Refusal to Register Because of Failure to Disclaim Registration may be refused if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). If an applicant fails to comply with the examining attorney’s requirement for a disclaimer, the examining attorney should make the requirement final if the application is otherwise in condition for a final action. TMEP 1213.01(b) Refusal to Register Because of Failure to Disclaim |
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Examples of Disclaimers Required/Not Required by the USPTO |
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Mark |
TTAB Decision or Case |
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The generic top- |
In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1175- |
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BEER 1 with "BEER" disclaimer |
Anheuser- |
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Mark comprising stylized lettering of BALSAM, with disclaimer of “BALSAM,” found registrable on Supplemental Register for hair conditioner and hair shampoo. |
In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977) |
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Thistle design found synonymous to the word “thistle,” which is used in a descriptive sense to designate a class of sailboats. No claim is made to the exclusive right to use the design of “thistle” apart from the mark as shown. |
Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504 (TTAB 1978) |
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Words or abbreviations in a trade name designating the legal character of an entity
(e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must be disclaimed because an entity
designation has no source- |
In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006) |
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The familial business structure of an entity (e.g., “& Sons” or “Bros.”) must be
disclaimed because an entity designation has no source- |
In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006) |
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PRESS as applied to a printing or publishing establishment, “is in the nature of
a generic entity designation which is incapable of serving a source- |
In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) |
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PAINT PRODUCTS CO. is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company. |
In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) |
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DESIGNERS PLUS+ for sweaters held unitary; thus, no disclaimer of “DESIGNERS” deemed necessary. |
In re Hampshire- |
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AMERICA’S FRESHEST ICE CREAM for flavored ices, etc., held incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register. |
In re Carvel Corp., 223 USPQ 65 (TTAB 1984) |
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WHY PAY MORE! held to be an unregistrable common commercial phrase. |
In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) |
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GALA ROUGE is NOT a unitary mark, such that the admittedly descriptive word ROUGE need be disclaimed. Purchasers encountering GALA ROUGE, as applied to wine, will view GALA as the brand name, and ROUGE as the color or type of wine. |
In re Brown- |
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SNAP ON 3000 AIRMATIC (in standard character form) for various items of furniture hardware and fittings. The requirement for a disclaimer of “SNAP ON 3000” reversed and “SNAP ON and 3000” were required to be disclaimed. |
In re Grass GmbH (TTAB 2006) |
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ALPHA ANALYTICS directly and immediately informs the investor/purchaser of applicant’s investment advisory and mutual fund investment services that a salient feature or characteristic of those services is that applicant, in determining the desirability of a potential investment for the investor/purchaser and in order to maximize the investor/purchaser’s return on investment, performs “analytics” of the “alpha” of the potential investment. |
In re Alpha Analytics Investment Group, LLC (TTAB 2002) |
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Call us at 1- To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps: 4) Verify the potential mark (as currently used) Functions As A Mark, and 5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. *We don’t stop here but this is a good start! Our rates are very reasonable and we support your application all the way through a normal prosecution including responding to refusals for the fixed application price. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm just to answer a USPTO Office Action Refusal at an hourly rate. If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA). If someone is using your trademark in a way that harms you, we may be able to stop them through an opposition or a cancellation proceeding. If you are being opposed or are threatened with cancellation, we may be able to help as well. Timing is very important for a bunch of reasons: Opposition times are very short, times to answer Petitions to Cancel are only 40 days from when the petitions are filed, times to answer Oppositions can be very short, and sitting on your rights in general can cause problems. Don’t delay calling. We can help. |
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