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-T Zoe Furniture Inc., 16 F.3d 390 (Fed. Cir. 1994).  Because disclaimers identify descriptive, generic, and informational components of marks, disclaimers may be relied upon when assessing marks for clearance purposes, in likelihood of confusion analyses in trademark prosecution or enforcement situations, and in assessing the availability to engage in fair use of the components.  Disclaimers may also impact trademark litigation by offering guidance to courts as to which elements are entitled to greater or lesser weight when comparing marks.

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))


Is the Evidence Conclusive and Persuasive That A Disclaimer is Required?

What About Third Party Registrations?

Third-party registrations can be used by a trademark examiner in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“Said third party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection. Used in this limited manner, ‘third party registrations are similar to dictionaries showing how language is generally used.’”) In re Box Solutions Corp.  (TTAB 2006).

But each case must be decided on its own merits and what is descriptive and requiring a disclaimer in one case does not necessarily hold for another.

TMEP 1209.03(a)   Third-Party Registrations

Third-party registrations are not conclusive on the question of descriptiveness. Each case must stand on its own merits, and a mark that is merely descriptive must not be registered on the Principal Register simply because other such marks appear on the register. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1067 (TTAB 2011) (holding .music merely descriptive for, inter alia, on-line social networking services, domain registration services, interactive hosting services, electronic publishing, recording, and production services, online retail store and promotional services, and downloadable files and recordings despite the presence of third-party registrations for marks consisting of “dot ____” or “.____”); In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977) (holding SCHOLASTIC merely descriptive of devising, scoring, and validating tests for others despite the presence of other marks on the Register using the word “Scholastic”). The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (holding ULTIMATE BIKE RACK merely descriptive of “bicycle racks” despite the presence of “ultimate” without a disclaimer in other marks on the Principal Register); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in software development and deployment where the Board found that changes in the vocabulary of the field reduced the relevance of third-party registrations).



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-desciptive refusals in some cases. See How to Analyze If A Trademark Is A Unitary Mark.


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-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:

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-Latin characters, the following format is suggested:

No claim is made to the exclusive right to use the non-Latin characters that transliterate to “[specify Latin character transliteration]” apart from the mark as shown.  


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


Examples of Disclaimers Required/Not Required by the USPTO

Mark

TTAB Decision or Case

In the context of computer goods, SOLUTIONS is a term that is used to describe the purpose of the computer to resolve a problem. In view thereof, we find that SOLUTIONS is descriptive of applicant’s goods and that the required disclaimer is appropriate.

In re Box Solutions Corp.  (TTAB 2006)


The generic top-level domain (TLD) “.com” merely indicates an Internet address for use by commercial, for-profit organizations and, in general, adds no source identifying significance and must be disclaimed unless it is part of a unitary expression.

In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1175-76, 71 USPQ2d 1370, 1373-74 (Fed. Cir. 2004); In re Hotels.com, L.P., 87 USPQ2d 1100, 1105 (TTAB 2008); see  TMEP §§1209.03(m).

BEER 1 with "BEER" disclaimer

Anheuser-Busch, Inc. v. Kelly J. Holt (TTAB 2009)

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)

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)

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-indicating capacity.

In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006)

The familial business structure of an entity (e.g., “& Sons” or “Bros.”) must be disclaimed because an entity designation has no source-indicating capacity.

In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006)

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-indicating function.”

In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000)

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)

DESIGNERS PLUS+ for sweaters held unitary; thus, no disclaimer of “DESIGNERS” deemed necessary.

In re Hampshire-Designers, Inc., 199 USPQ 383 (TTAB 1978)

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)

WHY PAY MORE! held to be an unregistrable common commercial phrase.

In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984)

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-Forman Corporation (TTAB 2006)

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)

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)


Call us at 1-651-500-7590 to help eliminate problems with disclaimers. Our Not Just Patents Five-Step Verification identifies issues before application in order to prevent problems and assure speedy registration.  


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:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 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.

©2008-2014 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590   or email: info@notjustpatents.com. This web site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client.  Privacy Policy Contact Us             See us at NotJustPatents.com

Call 1-651-500-7590 or email info@notjustpatents.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Patents

Trademarks

Steps to a Patent    How to Patent An Invention

Patent Search Steps

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal  Standard TTAB Protective Order

Patent Field of Search

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step   Trademark Fixer

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals   ApplyToTrademark.com

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

info@notjustpatents.com


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


TrademarkDisclaimer.com

Tie It Up

Securing the Right IP