When applying for a trademark with the United States Patent and Trademark Office (USPTO), you may encounter a trademark disclaimer. This can be a source of confusion for many applicants, but it’s an important part of the trademark registration process. A disclaimer ensures that you comply with trademark law by acknowledging certain limits to your exclusive rights.
Let’s explore what a trademark disclaimer is, why it’s required, and how to handle it in your application.
Table of Contents
What is a Trademark Disclaimer?
A trademark disclaimer is a statement included in your application that indicates you do not claim exclusive rights to a specific portion of your trademark. This typically applies to words or phrases that are:
• Descriptive: Words that describe a feature, quality, function, or characteristic of your goods or services.
• Generic: Terms that are common names for the goods or services (e.g., “Bread” for bakery goods).
• Geographic: Terms that indicate the origin of the goods or services (e.g., “California” for wines made in California).
• Common Phrases or Symbols: Phrases like “Inc.” or “symbols like “Company.”
By disclaiming a portion of the mark, you are still able to use the term, but you are acknowledging that others can use the disclaimed portion in connection with similar goods or services.
For example:
• If your trademark application is for “Sunny Day Organic Bread,” the USPTO may require a disclaimer for the words “Organic Bread” because they describe the type of product you’re offering. An example of the disclaimer language might read:
No claim is made to the exclusive right to use “Organic Bread” apart from the mark as shown.
Why Does the USPTO Require Disclaimers?
The USPTO requires disclaimers to protect fair competition. Words or phrases that are descriptive, generic, or commonly used should remain available for all businesses to use in connection with their goods or services. Allowing one business to exclusively own such terms would unfairly restrict others from accurately describing their products or services.
When is a Disclaimer Required?
A disclaimer is required when your trademark includes:
1. Descriptive Words
Words that directly describe your goods or services. For example:
• “Creamy” in a trademark for ice cream.
• “Quick” in a trademark for a fast delivery service.
2. Generic Terms
Generic terms are common names for goods or services. For instance:
• “Pizza” in “Tony’s Pizza.”
• “Shoes” in “Style Shoes.”
3. Geographic Terms
Names that indicate a location associated with your goods or services. For example:
• “Texas” in “Texas Barbecue Sauce.”
• “Paris” in “Paris Pastries.”
4. Entity Designations
Terms like “Inc.,” “LLC,” or “Corp.” that indicate the type of business entity. These are considered informational and are not protectable as trademarks.
5. Common Phrases or Symbols
Common phrases like “Made in the USA” or symbols like the dollar sign ($) are also not eligible for exclusive trademark rights.
Does a Disclaimer Affect My Trademark Rights?
With a disclaimer, you still have exclusive rights to your trademark as a complete unit. The disclaimer simply ensures that others can use the disclaimed portion in its descriptive or generic sense.
Using the earlier example, if your registered trademark is “Sunny Day Organic Bread”, the disclaimer for “Organic Bread” only means you can’t stop others from using “Organic Bread” to describe their products. If your application is successful, you’d still have exclusive rights to the trademark “Sunny Day Organic Bread” (in its entirety). This means that even though others might be able to use “Organic Bread,” they still can’t use “Sunny Day Organic Bread” to see similar goods.
How to Handle a Disclaimer in Your Application
1. Be Proactive
If you know your mark contains descriptive or generic elements, include the necessary disclaimer in your initial application. This can help avoid delays caused by a USPTO Office Action requesting a disclaimer.
2. Respond to Office Actions
If the USPTO issues an Office Action requesting a disclaimer, respond promptly and include the required disclaimer language. Failure to do so can result in the rejection of your application.
3. Consult an Attorney
Determining whether a disclaimer is required—or whether you can argue against one—can be complex. An experienced trademark attorney can evaluate your mark and help you craft a strategy to protect it effectively.
Sample Disclaimer Language
Disclaimers typically use the following language:
No claim is made to the exclusive right to use “_______” apart from the mark as shown.
The text within the quotation marks is the disclaimed language (e.g., “Company” or “Beauty” or “Inc.”).
Conclusion
A trademark disclaimer is a practical way to comply with USPTO requirements while protecting your brand. It acknowledges that certain parts of your mark, such as descriptive or generic terms, cannot be exclusively owned, but it doesn’t diminish your rights to use that language or your rights inthe trademark as a whole.
If you’re unsure whether a disclaimer is necessary for your trademark—or if you’ve received an Office Action requesting one—consult a trademark attorney. They can guide you through the process and ensure your application proceeds smoothly.