What if you hyphenate the words? A mere hyphen would not dilute the descriptive nature of the words. The USPTO analysis would then be: what would the mark look like without the hyphen? If the answer to this question is that the mark (or parts thereof) is descriptive, then a disclaimer would still be required. For example: if the mark is LAWZZZ SOFT-TOYS (for plush toys), then the fact that SOFT-TOYS is hyphenated would not change the disclaimer analysis. The USPTO will still require a disclaimer of SOFT TOYS in its original spelling.
So what have we learnt so far? Essentially, the USPTO is looking for something over and above the disclaimed component of the mark that would permit the mark to register. So if your mark comprises just elements that are descriptive, generic or the like, odds are the mark will not register in the Principal Register. This is also why having a logo mark is useful because even if all the literal elements are disclaimed (for any of the aforementioned reasons), the design element in the mark may just be unique enough to carry the entire mark through to registration. An often helpful clue is to see how other similarly marked registrations have fared before the USPTO.
Okay, so maybe you have to disclaim some word(s) in your mark. You may now ask – how does a disclaimer affect the mark? A disclaimer does not physically remove the word(s) from the mark or alter the appearance of the mark in any way. It is after all merely a statement that disclaims exclusive rights over those particular word(s). Disclaimers are generally for words that are necessary for everyone’s use, both consumers and other sellers, in the interest of fair competition. So your mark, in its entirety, will still be exclusively yours. The right you would not have any more is to prevent others from using those specific disclaimed words. For e.g. our first mark from before, XYZ CLOTHING. While you can prevent someone else from using XYZ for clothing, you cannot prevent someone from using CLOTHING for clothing. You already see the reason why not. The word is generic and it would be against the interests of fair competition to deny this generic term for use in common parlance AND also blatantly unfair to give one person exclusive rights over the word clothing(!!!).
So the USPTO issues disclaimer requirements to prevent a false impression that the owner of a mark has exclusive rights to a descriptive or generic term. Do remember though that you do not want to disclaim any word or set of words if the disclaimed portion is crucial to the brand. Because once disclaimed, this is freely available to the public and other competitors for their use in describing/identifying other brands. So disclaimers, while they may seem fairly straightforward at first glance, can be risky for the brand. Bottom line: be smart, hire an attorney and do it right!
Check out >>> Trademark Disclaimers Part I: What is 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.