A Guide to Trademark Disclaimers
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It should come as no surprise that we at Trademarkia love to talk about… well, trademarks.
But there’s a little-known yet important detail in the trademark registration process that we hadn’t written about till now:
A trademark disclaimer.
This is a vital part of your trademark application. So, we’ve put together this guide to help you understand it and use it to your advantage.
What is a trademark disclaimer?
Disclaimers are an inherent part of the trademark registration process for trademark filing in the USA.
According to the US Patent and Trademark Office (USPTO), a trademark disclaimer is when the applicant or registrant doesn’t claim exclusive right over specific elements of a mark in a trademark application or registration but rather over the mark as a whole.
To break this down further with an example. Maybe you’re applying for a mark like XYZ CLOTHING for clothing garments.
The USPTO requires that you “disclaim” the word CLOTHING. That’s because it’s a generic word for the products sold, which cannot belong to a single person.
Now, what this means is that you have to add a trademark disclaimer statement to your application.
The statement should be something like — “No claim is made to the exclusive right to use “CLOTHING” apart from the mark as shown.” By adding this, you’re clarifying that you’re not claiming exclusive rights over CLOTHING but only over the entire phrase “XYZ CLOTHING” as a single mark.
This means that someone else can trademark or use the name ABC CLOTHING. But they may not use XYZ CLOTHING as you hold that trademark.
What should you disclaim?
Generic words are only one type of words that are disclaimed in an application for trademark registration. While there’s no set list for this, here are some examples:
- Words or design elements that describe products and services.
- Informational words.
- Anything that describes a characteristic or function of a product or service.
- Laudatory words, e.g., ULTIMATE, GREATEST, BEST, etc.
- Geographic locations, e.g., New York, Texas, America, etc.
- Business type designations, e.g., INC, LLC, GROUP, etc.
- Foreign words, including translations of the above.
(A disclaimer about the last disclaimer: the rules for foreign wording are different when applying for international trademark registration. This needs to be checked on a case-by-case basis.)
- Even misspelled words of the above categories must be disclaimed with their original spellings. E.g., PLAQUE for the mark PLAQ or CLOTHING for the mark KLOTHING.
When is a trademark disclaimer not required?
Sometimes, a trademark disclaimer may not be required for your trademark application.
If the mark is “unitary,” then no disclaimer is required. But again, there are no strict guidelines for what’s considered “unitary.” In general parlance, a mark is considered unitary when it’s a complete phrase.
Let’s take an example to understand this better. Let’s say the mark is “BECAUSE THERE’S NO PLACE LIKE HOME” for the construction of homes. HOME would typically need a trademark disclaimer because it’s generic for the services offered.
However, there’s no need for a trademark disclaimer in this mark 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 evident. So, it may not require a trademark disclaimer.
Compound terms (two or more words that merge to form one term) may also be considered and thus may not require a trademark disclaimer. Some examples could be BOOKCHOICE, PROSHOT, MAXIMACHINE.
Similarly, “telescoped” terms are also considered unitary. A “telescoped” term consists of two or more words that share some common letters. For example, HAMERICAN, ORDERECORDER, SUPERINSE.
It’s also interesting to note that the word must be some version of descriptive to be disclaimed. So what if the word were to have a double entendre or several meanings, including any that could be considered “suggestive” as to the products and/or services? Then, a case could be made for why the trademark disclaimer is not required.
What about hyphenated words?
Since the rules for hyphenated words are loosely defined, it’s difficult to have set rules about this in trademark applications. The USPTO examining attorney may then consider what the mark would look like without the hyphen.
A trademark disclaimer would still be required if the mark (or parts thereof) is descriptive. For example, if the mark is LAWZZZ SOFT-TOYS (for plush toys), then the fact that SOFT-TOYS is hyphenated would not change the trademark disclaimer analysis. The USPTO will still require a disclaimer of SOFT TOYS/SOFTTOYS in its original spelling.
Essentially, the USPTO is looking for something more than the disclaimed component of the mark that would permit it to register. So if your mark comprises just elements that are descriptive, generic, or the like, odds are the mark won’t register in the Principal Register.
A trademark disclaimer simply removes any confusion. It highlights the unique elements of your mark. This helps the USPTO examining attorney ensure that there’s no trademark infringement for a prior registered mark.
This is also why having a logo mark is useful. So, even if all the literal elements are disclaimed, the design element in the mark may be unique enough to carry the entire mark through to registration. A helpful clue is how other similar marks have fared before the USPTO.
How does a disclaimer affect the mark?
A trademark disclaimer doesn’t physically remove the word from the mark. Nor does it alter the appearance of the mark in any way.
It’s merely a statement in your trademark application that “disclaims” exclusive rights over that particular word.
Trademark 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.
So, the USPTO issues disclaimer requirements to prevent a false impression that the owner of a mark has the exclusive right to use a descriptive or generic term. So, your disclaimer statement has to be very clear about what part of your trademark is disclaimed.
Remember, though, that you don’t want to disclaim any word or set of words 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.
Hiring a trademark attorney
One way to avoid this confusion is to hire a trademark attorney to help you file your application. Trademark attorneys will help you keep your mark’s commercial impression separate from the generic portion you must disclaim.
Trademark law can be complicated, and the application process can sometimes be confusing. Apart from the mark, a trademark attorney will also be able to help you avoid delays and mistakes in the other information in your application and even help you with trademark registration online.
What are three things that determine trademark infringement?
To prove trademark infringement, the person suing should demonstrate that:
- They have a valid and legally protectable mark.
- They own the mark.
- The defendant’s use of the mark to identify goods or services causes a likelihood of confusion.
Is a trademark disclaimer mandatory in a trademark application?
No, a disclaimer is not mandatory in a trademark registration application. You don’t need a trademark disclaimer if your mark doesn’t include certain types of generic or common-use words or phrases.
What should be included in a trademark disclaimer?
The following is the sample disclaimer statement that you’ll need to add to your application for trademark registration:
No claim is made to the exclusive right to use “______” apart from the mark as shown.
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Amrusha is a versatile professional with over 12 years of experience in journalism, broadcast news production, and media consulting. Her impressive career includes collaborating extensively with prominent global enterprises. She garnered recognition for her exceptional work in producing acclaimed shows for Bloomberg, a renowned business news network. Notably, these shows have been incorporated into the esteemed curriculum of Harvard Business School. Amrusha's expertise also encompassed a 4-year tenure as a consultant at Omidyar Network, a leading global impact investing firm. In addition, she played a pivotal role in the launch and content strategy management of the startup Live History India.
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