Jan 16 | 2019

Disclaimer Or No Disclaimer: That Is The Question

General Principles:

When a trademark – in relation to the goods and services tendered in an application – comprises descriptive, generic or otherwise unregistrable matter, the United Patent and Trademark Office (“PTO”) is apt to request a disclaimer.  While typically implicating descriptive or generic words, disclaimers also apply to pictorial representations of descriptive matter, primarily geographic terms, merely informational elements and entity designators such as “Corporation,” “Corp.” and “LLC.”

A disclaimer serves as an admission that the applicant and eventual registrant does not claim exclusive rights in the disclaimed matter alone.  In form, a properly worded disclaimer will appear in the permanent application record and registration certificate as follows:

No claim is made to the exclusive right to use [insert disclaimed element] apart from the mark as shown.

Accordingly, in a hypothetical application to register MINDY & MORK BICYCLES for “bicycles,” a disclaimer of “BICYCLES” is definitely in play.  This is the case for at least two reasons: 1) the goods at issue are “bicycles” and 2) bicycle makers possess a competitive need to call their products “bicycles.”  With the applicant and the PTO agreeing, the following disclaimer statement would appear in the MINDY & MORK BICYCLES “bicycles” application:

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

Procedural Items:

An applicant can volunteer a disclaimer or adopt one after receiving a request from the PTO to do so.  The PTO prompts a disclaimer, after examining the application, by way of a written Office Action or, if there are no other significant issues, over the telephone with the applicant or the applicant’s attorney.  Should the applicant fail to comply with a disclaimer requirement or is unable to persuade the PTO to withdraw it, the application will be denied registration.  

Disclaiming any matter, including “BICYCLES” in the aforementioned, does not eliminate this word from the mark.  So, even with the disclaimer, MINDY & MORK BICYCLES would register in full as constituted (assuming all other issues have been resolved) and be displayed in commerce  as MINDY & MORK BICYCLES® after registration.  For trademark use and marking tips, please see the September 14, 2018 Dunner Law Blog, “Power-Up Your Mark: Depiction, Marking and Consistency,” located at http://dunnerlaw.com/blog/.

Arguing Against:

For unitary marks, those where the elements are integrated or merged together that they cannot be regarded separately, a disclaimer is unnecessary.   In determining whether matter is part of a single or unitary mark, the PTO considers multiple factors, among them: whether the matter is physically connected by lines or other design features; the relative location of the elements in the mark; and the meaning of the terminology as used on or in connection with the goods or services.  See Trademark Manual of Examining Procedure (“TMEP”) Section 1213.05   (October 2018 Ed). 

Compound word marks (BOOKCHOICE for “books”), telescoped marks (VITAMINSURANCE for “vitamins”), marks formed by hyphens (TIRE-X for “tire cleaner”), prepositional phrases (MANGOES FOR THE EARTH for “fresh mangoes”), slogans comprising verbs (HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE for “hair tinting, dyeing, coloring preparations”) and double entendre marks (NO BONES ABOUT IT for “pre-baked hams”) have escaped a disclaimer or would not be subject to one because they are unitary.  See TMEP Sections 1213.05(a)-(h).  Nonetheless, if a unitary mark is still descriptive, ornamental or informational for example, it will be refused in its entirety on the appropriate basis.

On occasion, alliterative marks, those with rhyming or similar sounds patterns, have been considered unitary too.  Of the arguments to the PTO and the Trademark Trial and Appeal Board (TTAB) against disclaiming, alliteration appears to be the least convincing.   In In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590 (TTAB 2018), the TTAB recently reversed the PTO’s misdescriptive and deceptive refusals of CANINE CAVIAR for “animal foodstuffs, pet foods, edible pet treats.”  However, despite expert testimony from a linguist that CANINE CAVIAR is alliterative and therefore unitary – with identical beginning cadences – the TTAB upheld the PTO’s requirement to disclaim “CANINE.”  According to the TTAB, “the relevant public will immediately understand” the word “CANINE” as still “separable” and “that it is merely descriptive thereof and has not acquired distinctiveness.” 

Disclaimers may only apply to certain classes or specific goods and services.  So, especially in a multi-class application, an applicant could argue that the disclaimer requirement should be limited to only those goods and services for which the element in question is descriptive, generic or unregistrable.      

Additional Considerations:

In the US, an entire mark cannot be disclaimed; there must be something in the overall mark to qualify it for registration on the Principal or Supplemental Register.  If not, the entire mark will be subject to an outright refusal.

While afforded discretion in requesting a disclaimer, the PTO generally behaves guardedly and will request a disclaimer.

Conversely, some countries, including the United Kingdom, do not require disclaimers.

Depending upon the nature of the disclaimed matter and its length of use, disclaimed matter is eligible to register at the PTO with sufficient proof of acquired disctiveness, under Section 2(f).

In order to sidestep a disclaimer, consider how the mark will appear in the application.  While a bit awkward in appearance, CANINECAVIAR (no space between CANINE and CAVIAR) and CANINE-CAVIAR (terms united with a hyphen), likely would have avoided disclaiming “CANINE.”  Similarly, if filed as MINDY&MORKBICYCLES (no space between the words) and MINDY & MORK-BICYCLES (hyphen between MORK and BICYCLES), a disclaimer of “BICYCLES” appears unncessary.

Even if a descriptive, generic or unregistrable matters is not disclaimed, it does not mean that its owner has exclusive rights in the matter.  Ultimately, the markeplace and the component’s meaning will determine if others are free to use it without infringing.    

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