Disclaimers are an inherent part of the trademark registration process. So what are “disclaimers”?
According to the USPTO, a disclaimer is when the applicant or registrant does not claim exclusive right over a specified element or elements of the mark in a trademark application or registration, but rather only over the entire mark as a whole. To break this down further – when you have a mark like XYZ CLOTHING for clothing, essentially the USPTO will require you to disclaim CLOTHING because that is directly generic for the products being sold with the mark. Now, what this means is that by adding this statement “No claim is made to the exclusive right to use “CLOTHING” apart from the mark as shown.” you are saying that you do not have exclusive rights over CLOTHING but only over the entire mark XYZ CLOTHING as a whole.
So are generic words all you need to worry about disclaiming? Nope. Which brings us to the next big question: what exactly do you disclaim? Generic words are only one type of words that are disclaimed. While there is no set list for this, words or design elements that are merely descriptive of the products and services or a characteristic or function thereof, may require a disclaimer. Also, laudatory words (ULTIMATE, GREATEST, BEST or the like), geographic places (New York, Texas, America, etc.), business type designations (INC, LLC, GROUP, etc.), foreign words (translations that would be any of the above) are just some of the other words that may require a disclaimer for the application to proceed to registration. Interestingly, even misspelt words of the above type must be disclaimed with their original spellings (e.g. PLAQUE for the mark PLAQ (dental products); CLOTHING for the mark KLOTHING (clothing products and so on).
Ah, if only that was all. It gets trickier from here. There are situations where even ^ such words need not be disclaimed. If the mark is “unitary”, then no disclaimer is required. But again, there are no strict guidelines for what is considered “unitary”. In general parlance, a mark is considered unitary when it is a complete phrase of sorts. Let’s take an example to understand this better – say the mark is “BECAUSE THERE’S NO PLACE LIKE HOME” for construction of homes). Typically, HOME would be a disclaimer because it is generic for the services being offered. However, in this mark, there will be no disclaimer because the entire mark reads as one complete element. This is because the commercial impression that it would form in the minds of the consumers is as a phrase.
There are others that may not require a disclaimer. Compound terms (two or more words that merge to form one term) may be considered unitary as well, and thus may not require a disclaimer. Some examples could be BOOKCHOICE, PROSHOT, MAXIMACHINE. Similarly, “telescoped” terms may also be considered unitary. What is a “telescoped” term? These are terms that consist of two or more words that share some common letters. For example: HAMERICAN, ORDERECORDER, SUPERINSE. It is also interesting to note that the word(s) must be some version of descriptive (or read paragraph 2 above) in order to be disclaimed, so if the word(s) were to have a double entendre or several meanings such that one of the meanings could only be considered “suggestive” as to the products and/or services and not merely descriptive, then a case could be made for why the disclaimer is not required.
But what about hyphenated words? Check out the next post and find out more >>>Trademark Disclaimers Part II: Why Should I be Concerned About a Disclaimer?
RENUKA RAJAN, is a NY-licensed trademark attorney in the Nagpur office at LegalForce RAPC. She specializes in trademarks, copyrights and office action responses. Renuka received her B.A. LL.B. (Hons.) degree from National Law University, Delhi and her LL.M. in IP from the George Washington University Law School (Washington, DC), where she was also a Thomas Buergenthal Scholar. When she is not busy advising her clients, she’s usually found either in the gym or singing along to different songs on her guitar with the same six chords. She is an avid Harry Potter fan and is always up for a healthy argument.