How to Satisfy a Disclaimer Requirement

 

What Is a Disclaimer?

A disclaimer is a statement that you include in your application to indicate that you do not claim exclusive rights to an unregistrable portion of your mark. For example, if you sell shirts and your mark includes the generic word "SHIRTS," you could not object to someone else also using the word “SHIRTS” as part of his/her mark.  The word is still part of both marks, but no one is claiming exclusive rights in that word, because it is an 'unregistrable' component of an overall mark. (See below for typical examples of unregistrable matter that must be disclaimed.)

A disclaimer does not physically remove the unregistrable portion from your mark or affect the appearance of your mark or the way you use it. It is merely a statement that the disclaimed words or designs need to be freely available for other businesses to use in marketing comparable goods or services.

A disclaimer may be included in an application at the time of filing or may be added by amendment, e.g., to comply with a requirement by the examining attorney. If you do not provide a required disclaimer, the USPTO may refuse to register your entire mark.

The following is the disclaimer statement that you will need to add to your application record (use quotation marks for disclaiming wording in the mark and no quotation marks for disclaiming designs):

No claim is made to the exclusive right to use "______" apart from the mark as shown.

The disclaimer statement will appear on the registration certificate.

If the disclaimer applies only to particular goods or services, or a particular international class of goods or services, the disclaimer must be modified to specify that information.

You may not disclaim the entire mark.

If you provide a voluntary disclaimer in the mistaken belief that a disclaimer would be required when, in fact, USPTO policy would not require a disclaimer, then you may withdraw the disclaimer. See TMEP §1213.01(c)

For more information about disclaimers, see TMEP §§1213 et seq. Also see 15 U.S.C. §§1052(e)(1), 1056(a); Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Owatonna Tool Co., 231 USPQ 493, 494-95 (Comm'r Pats. 1983).

Why Do I Need to Submit a Disclaimer?

Some words and designs in a mark are not registrable because they are needed by other people/businesses to be able to describe their goods, services, and/or business. A disclaimer in your registration makes clear to others that they may use the disclaimed terms without raising legal objections.

Typically, portions of a mark that are not registrable and require a disclaimer are the following:

  • Merely Descriptive Words/Designs: Words/designs that describe your goods and/or services (CREAMY for yogurt; or a realistic picture of a cue stick and eight ball for billiard parlor services).
  • Laudatory Words that describe an alleged superior quality of the goods and/or services
    (GREATEST OF ALL TIME for beer, or THE ULTIMATE for beauty salon services)
  • Generic Words/Designs: Words/designs that are the common name of your goods and/or services (ASPIRIN for pain relief medication; or a realistic picture of a yo-yo for toys).
  • Geographic Words/Designs: Words/designs that describe the origin of your goods or the location where your services are provided (VENICE for glassware from Venice, Italy; or a realistic map of Canada for air charter services originating from Canada).
  • Business Type Designations: Designations that merely indicate information about the type or structure of your business, such as "Corporation," "Inc.," "Company," "Ltd.," "Bros."
  • Informational Words: Words that merely provide information about your goods, services, or business, such as net weight, volume statements, lists of contents, addresses and contact information, and the year the business was established.
  • Well-known Symbols: Symbols that provide information about your goods and/or services (such as the biohazard symbol Biohazard symbolfor medical waste containers, the prescription symbol Prescription Symbolfor medical goods, and the dollar symbol Dollar sign for financial services) or convey a social, political, religious, or similar kind of message (the recycling symbol Recycling symbol on the front chest-area of a t-shirt indicating the wearer supports recycling or environmental causes).
  • Deceptively Misdescriptive Words/Designs: Words/designs that describe your goods and/or services in a way that is both false and believable but will not materially affect a consumer's decision to purchase the goods and/or services (for example, the mark SAL'S GLASS WAX for a glass cleaner that does not contain wax; that the goods do not contain wax would not necessarily change a consumer's decision to purchase the cleaner).

Descriptive, generic, geographic, or otherwise unregistrable wording, designs, or symbols are needed by other people/businesses to describe or market their goods and/or services (in advertising, on the web, etc.) or to convey a message. Additionally, businesses often include in their mark business identifiers that others may need to use to describe their businesses. Because these words and/or designs need to be used by others, they should not become the proprietary domain of any one party and must be disclaimed.

For more information about why disclaimers are required and the portions of a mark that are not registrable, 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); TMEP §§1213, 1213.03.

How Do I Disclaim Misspelled, Compound, Foreign, or Unitary Wording or Matter?

Misspelled versions of wording in a mark that is descriptive, generic, geographic, or otherwise unregistrable must also be disclaimed. The misspelling could result from terms that are "telescoped" (terms that share letters, such as SUPERINSE in which the words "super" and "rinse" are combined and would be disclaimed as two separate words) or terms that are phonetic equivalents of particular words but spelled in a manner that varies from the ordinary spelling of the words (such as JAY'S QUIK PRINT, in which QUIK is misspelled and would be disclaimed as QUICK PRINT). You must spell correctly the misspelled wording in the disclaimer statement.

Compressed compound wording in a mark, consisting of a combination of two or more words compressed into one word, that is descriptive, generic, geographic, or otherwise unregistrable must also be disclaimed. You must separate the words that make up the compressed wording in the disclaimer statement (for example, the mark KATE'S COOLPACK.COM for insulated containers would be disclaimed as COOL PACK.COM, because COOLPACK is a compressed compound term in the mark and the .COM suffix is a top-level domain that provides no source-indicating significance).

Foreign wording in a mark that is descriptive, generic, geographic, or otherwise unregistrable must also be disclaimed in the same way that the English version of such wording is subject to disclaimer (for example, GALA ROUGE for wine; the French term ROUGE means "red" and would be disclaimed as merely descriptive of red wine). The disclaimer must refer to the non-English wording and not the English translation.

If the foreign wording in a mark is in non-Latin characters (such as Japanese or Hebrew characters), then the disclaimer must be of the non-Latin characters and their transliteration in Latin characters (that is, the phonetic spelling, in corresponding Latin characters, of the words in the mark that are in non-Latin characters). For example, if there are Japanese characters for the word "optical" in a mark used with optical goods such as lenses, the disclaimer would be for the non-Latin characters that transliterate to "Kogaku."

Unregistrable unitary matter that creates a grammatically or otherwise unitary expression must be disclaimed as a whole. The key to determining unitariness is whether various parts of a mark are so integrated or merged together that they cannot be regarded as separable; they are read together as a single unit. Parts of a mark are unitary if those parts create a single commercial impression or have a distinct commercial impression independent of the separate parts. For example, you could be required to provide a disclaimer of an entire unregistrable unitary phrase instead of the individual words that create the phrase (for example, the mark PETE'S PIZZA PARLOR for a pizza restaurant in which the unitary phrase PIZZA PARLOR must be disclaimed as a unit rather than the words PIZZA and PARLOR separately).

For more information about how to disclaim misspelled, compound, foreign, or unitary wording and matter, see TMEP §§1213.05 et seq., 1213.08(c)-(d), 1215.07.

How Do I Submit a Disclaimer?

You should respond to a disclaimer requirement in a nonfinal Office action by using the Trademark Electronic Application System (TEAS) "Response to Office Action" online form, which includes any required statement and supporting declaration language referenced in the Office action. You should respond to a disclaimer requirement in a final Office action by using the TEAS "Request for Reconsideration after Final Action" form.

TEAS online form instructions: Answer "Yes" to form wizard question #3. In the "Additional Statements" section, type the wording or design description to be disclaimed in the text entry box for a disclaimer. To satisfy the trademark examining attorney's disclaimer requirement, the entry in this box should match precisely what was specified in the Office action. Do not enter the wording or design description in the standardized format referenced above because the additional text in that disclaimer statement is already included in the TEAS form. For technical assistance, contact TEAS@uspto.gov.