Trademark Disclaimers: What are they and should you accept?
After you file a trademark application, the USPTO might issue an office action. Office actions identify one or more issues standing between you and registration of your mark. Some issues can be insurmountable. For example, some likelihood of confusion rejections are so strong that you will not persuade an examiner to withdraw the refusal. Other issues are less problematic and create no barrier to registration. Disclaimer requirements fall somewhere in between.
Per Trademark Manual of Examining Procedure §1213:
A disclaimer is a statement 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. . . .
The 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.
A disclaimer is a statement that you do not claim the exclusive right to use the disclaimed term(s) individually. It does not prevent you from using the disclaimed term(s) and it does not mean that the disclaimed term(s) is not part of your registration. Rather, the disclaimer is language that appears on certificate of registration that reads: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘_______’ APART FROM THE MARK AS SHOWN.” An example is shown below in the certificate of registration for U.S. Registration Number 1528456 for the mark
which identifies “hamburger sandwiches and cheeseburger sandwiches, hot coffee, and milkshakes for consumption on or off the premises” among other goods and services. Not surprisingly, the word “burger” is disclaimed.
Interestingly, USPTO’s trademark database indicates that there are 3278 records disclaiming the word “burger.” The large number of disclaimers is evidence that the term is widely used and should be disclaimed. The owner of this registration probably would not object to a competitor using the names DINOSAUR BURGER or SPACE SHIP BURGER.
Disclaimers are generally required for terms that are generic or descriptive. Recall, a term is not generic or descriptive in absolute terms, but instead in light of the goods/services. While preparing this blog post, I found an IN-N-OUT BURGER registration where the term “burger” is not disclaimed. The services were “Financial sponsorship of race cars and race car drivers.” Because the term “burger” is neither generic nor descriptive of those services, a disclaimer was not necessary for that registration.
Persuading an examiner to withdraw a disclaimer refusal is often a difficult task. Fortunately, simply accepting a disclaimer will satisfy the requirement. Before you accept a disclaimer, however, be sure to carefully consider whether the disclaimer is truly necessary and consider discussing with a trademark attorney.
