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Disclaiming a Term in a Federal Trademark Application

Posted by Unknown | Oct 19, 2020 | 0 Comments

What does it mean to disclaim a term when registering a Trademark

When you register a trademark, some terms may need to be disclaimed because they are merely descriptive or generic. Merely descriptive means the term(s) is commonly known to the general public to reference the good or service the trademark is associated with OR the term is so generic (common) that it needs to be disclaimed.

A descriptive term could be something like using “frothy” in a mark for latte products. A generic term is something like creating a product to compete with Kleenex, and using the word tissue in the mark. Another example of this is a brewery, wishing to register their mark “ABC Brewery.” The term “brewery” needs to be disclaimed because, without the disclaimer, no other brewery could use the term in their mark. “Brewery” is the most common way consumers associate a mark with “a place that makes beer.”

Even an extremely famous mark like “Dunkin' Donuts” has the word “Donuts” disclaimed.

From Dunkin' Donuts federal registration:

The reason a disclaimer is required is to show that the owner of the mark does not have an exclusive right to that specific term. This also allows another party to use that specific term within its own mark.

The statutory requirement to disclaim comes from the Trademark Act of 1946 (§6, 15 U.S.C. §1056). A registrant can disclaim the term when they apply, or the Trademark office may require you to disclaim certain terms. If the office requires you to disclaim a term, and you do not, it can lead to your mark being refused registration. However, it is possible to argue that the combination of words, both descriptive and non-descriptive together, take on an entirely new meaning. Note: this does not apply to completely generic terms.

Disclaiming a term does not take away any of the rights the mark owner has in their composite mark. It does mean you cannot keep others from using that specific part of the mark. After a mark is used for a period of time, and a disclaimed term becomes well-associated with the good or service, you might be able to register that specific term, as long as it is not completely generic. 

Sometimes disclaimers are required for certain words

The point of this is to keep trademark holders from having an unfair advantage. Sometimes they are necessary because of a word being so commonly used in the industry. Some symbols and business designations may also requirer disclaiming due to their commonality in multiple industries (e.g., Co., LLC, Bros, Rx, $).

How to avoid disclaiming

If the term that may need to be disclaimed can be shown to be so integral to the entire mark that it creates its own impression on a consumer, it is considered “unitary” by the Trademark Office and can be registered [TMEP 1213.05]. You show this by having a term in a mark that gives it a distinct meaning. 

For example: POPZ TOPZ "THE HAT THAT BRIDGES THE GAP for selling hats would be unitary, versus “BELLISSIMO HATS” which has disclaimed “hats”. In the first, “hat” is required to give meaning to the whole mark. Both sell hats.

Another method to avoid disclaiming is to have a compound wordmark, where two or more words are put together, where one of the words would normally have to be disclaimed or would be unregisterable on its own. Ex: BOOKCHOICE, PROSHOT, MAXIMCHINE.

Similarly, marks with multiple words but combine using their shared letter need not be disclaimed: ORDERECORDER, SUPERINSE, POLLENERGY. A Hyphen or asterisk between two words, one of which should be disclaimed, also serves this function: TIRE-X.

Ultimately, if you choose not to disclaim a term in your mark you might be able to convince the Trademark Office to allow your registration. However, you can also decide to choose an entirely different mark that is more fanciful or arbitrary (something that has no relation to the industry you are in), or you can disclaim a term and continue about your business.

By: Cameron Martin

Under Supervision by Sarterus Rowe WSBA #47010 

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