Trademark Disclaimers Can Avoid Trademark Refusals

(From uspto.gov/trademarks/DisclaimerPaper.doc)

A disclaimer states 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, apart from the mark as a whole.

One 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.  

In describing this purpose, the United States Court of Appeals for the Federal Circuit has noted that disclaimers may serve to “…facilitate the commercial purposes of the trademark law.” In re K-T Zoe Furniture Inc., 16 F.3d 390 (Fed. Cir. 1994).  Because disclaimers identify descriptive, generic, and informational components of marks, disclaimers may be relied upon when assessing marks for clearance purposes, in likelihood of confusion analyses in trademark prosecution or enforcement situations, and in assessing the availability to engage in fair use of the components.  Disclaimers may also impact trademark litigation by offering guidance to courts as to which elements are entitled to greater or lesser weight when comparing marks.

Some disclaimer to registration is filed in about 19.6 percent of  USPTO applications and registrations according to a 2013 USPTO study.  (Graham, Stuart J. H., Hancock, Galen, Marco, Alan C. and Myers, Amanda F., The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights (January 31, 2013)).

Trademark Disclaimers and Unitary Marks

The Trademark Act provides for a way for trademarks containing unregisterable matter to be registered on the Principal Register or Supplemental Register (In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980)) by requiring that the unregisterable part of the mark be disclaimed. Every rule has exceptions, if the unregisterable part and the registerable part together create a “unitary” mark, the otherwise unregisterable part does not have to be disclaimed. A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component (TMEP 1213.05).

Specific categories of unitary matter has emerged through case law and USPTO policy, such as compound word marks, telescoped words, hyphenated terms, slogans, double entendre, incongruity, and visual display of the mark conveying a unitary whole. See TMEP 1213 Disclaimer of Elements in Marks for more information. Unitary mark claiming can also eliminate problems with merely-desciptive refusals in some cases. See How to Analyze If A Trademark Is A Unitary Mark.

How Common are Problems With Disclaimers? Very Common

Between April 16, 2008 and October 16, 2010, approximately 29% of first Office actions (not including examiner’s amendments), 6% of final Office actions, and 5.5% of appeals to the Trademark Trial and Appeal Board contained a disclaimer requirement. (From uspto.gov/trademarks/DisclaimerPaper.doc)

Standard Disclaimer Form or Templates

The standardized disclaimer text is as follows:

No claim is made to the exclusive right to use ____________, apart from the mark as shown.

Where non-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:

No claim is made to the exclusive right to use ________ or ________, apart from the mark as shown.

The standard wording required for a design element is:

No claim is made to the exclusive right to use the design of “____” apart from the mark as shown.

For non-Latin characters, the following format is suggested:

No claim is made to the exclusive right to use the non-Latin characters that transliterate to “[specify Latin character transliteration]” apart from the mark as shown.  

Refusal to Register Because of Failure to Disclaim

 Registration may be refused if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). If an applicant fails to comply with the examining attorney’s requirement for a disclaimer, the examining attorney should make the requirement final if the application is otherwise in condition for a final action. TMEP 1213.01(b) Refusal to Register Because of Failure to Disclaim

Examples of Disclaimers Required/Not Required by the USPTO

Mark

TTAB Decision or Case

BEIN creates a different commercial impression than does BEIN SPORT. While SPORT may be descriptive and both parties disclaimed SPORT in the involved and pleaded applications, “a disclaimer with the Patent and Trademark Office does not remove the disclaimed matter from the purview of determination of likelihood of confusion.”

 BE SPORT, INC. v. AL-JAZEERA SATELLITE CHANNEL, 115 U.S.P.Q.2d 1765 (TTAB 2015)

In the context of computer goods, SOLUTIONS is a term that is used to describe the purpose of the computer to resolve a problem. In view thereof, we find that SOLUTIONS is descriptive of applicant’s goods and that the required disclaimer is appropriate.

In re Box Solutions Corp.  (TTAB 2006)

The generic top-level domain (TLD) “.com” merely indicates an Internet address for use by commercial, for-profit organizations and, in general, adds no source identifying significance and must be disclaimed unless it is part of a unitary expression.

In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1175-76, 71 USPQ2d 1370, 1373-74 (Fed. Cir. 2004); In re Hotels.com, L.P., 87 USPQ2d 1100, 1105 (TTAB 2008); see  TMEP §§1209.03(m).

BEER 1 with "BEER" disclaimer

Anheuser-Busch, Inc. v. Kelly J. Holt (TTAB 2009)

Mark comprising stylized lettering of BALSAM, with disclaimer of “BALSAM,” found registrable on Supplemental Register for hair conditioner and hair shampoo.

In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977)

Thistle design found synonymous to the word “thistle,” which is used in a descriptive sense to designate a class of sailboats. No claim is made to the exclusive right to use the design of “thistle” apart from the mark as shown.

Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504 (TTAB 1978)

Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must be disclaimed because an entity designation has no source-indicating capacity.

In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006)

The familial business structure of an entity (e.g., “& Sons” or “Bros.”) must be disclaimed because an entity designation has no source-indicating capacity.

In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006)

PRESS as applied to a printing or publishing establishment, “is in the nature of a generic entity designation which is incapable of serving a source-indicating function.”

In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000)

PAINT PRODUCTS CO. is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company.

In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988)

DESIGNERS PLUS+ for sweaters held unitary; thus, no disclaimer of “DESIGNERS” deemed necessary.

In re Hampshire-Designers, Inc., 199 USPQ 383 (TTAB 1978)

AMERICA’S FRESHEST ICE CREAM for flavored ices, etc., held incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register.

In re Carvel Corp., 223 USPQ 65 (TTAB 1984)

WHY PAY MORE! held to be an unregistrable common commercial phrase.

In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984)

GALA ROUGE is NOT a unitary mark, such that the admittedly descriptive word ROUGE need be disclaimed. Purchasers encountering GALA ROUGE, as applied to wine, will view GALA as the brand name, and ROUGE as the color or type of wine.

In re Brown-Forman Corporation (TTAB 2006)

SNAP ON 3000 AIRMATIC (in standard character form) for various items of furniture hardware and fittings. The requirement for a disclaimer of “SNAP ON 3000” reversed and “SNAP ON and 3000” were required to be disclaimed.

In re Grass GmbH (TTAB 2006)

ALPHA ANALYTICS directly and immediately informs the investor/purchaser of applicant’s investment advisory and mutual fund investment services that a salient feature or characteristic of those services is that applicant, in determining the desirability of a potential investment for the investor/purchaser and in order to maximize the investor/purchaser’s return on investment, performs “analytics” of the “alpha” of the potential investment.

In re Alpha Analytics Investment Group, LLC (TTAB 2002)

If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA)!

How can USPTO TESS be used to determine if a trademark term is generic or merely descriptive?

Generic or merely descriptive terms (without acquired distinctiveness) are required to be disclaimed in registrations on the Principal Register. Searching for terms that have been subject in the past to disclaimers in the [ds] field on USPTO TESS searches can let a trademark applicant know if a disclaimer should be considered. Note that if all of the terms are generic or merely descriptive that a term might not be trademarkable.

Examples of trademark disclaimers

TESS freeform

Search for live marks with this term disclaimed

How often has this disclaimer occurred in currently LIVE marks?

(As of 01/31/2023))

co or company

(co or company)[ds] and live[ld]

23212

inc or incorporated

(inc or incorporated)[ds] and live[ld]

11146

service

(service)[ds] and live[ld]

10345

group

(group)[ds] and live[ld]

10282

design

(design)[ds] and live[ld]

8409

health

(health)[ds] and live[ld]

8396

home

(home)[ds] and live[ld]

7961

solutions

(solutions)[ds] and live[ld]

7650

center

(center)[ds] and live[ld]

7067

LLC

(llc)[ds] and live[ld]

5907

food

(food)[ds] and live[ld]

5547

coffee

(coffee)[ds] and live[ld]

5188

management

(management)[ds] and live[ld]

4545

sports

(sports)[ds] and live[ld]

4459

association

(association)[ds] and live[ld]

4452

since

(since)[ds] and live[ld]

4106

brand

(brand)[ds] and live[ld]

4078

institute

(institute)[ds] and live[ld]

4006

bar

(bar)[ds] and live[ld]

3893

natural

(natural)[ds] and live[ld]

3875

energy

(energy)[ds] and live[ld]

3768

american

(american)[ds] and live[ld]

3514

media

(media)[ds] and live[ld]

2863

school

(school)[ds] and live[ld]

2761

fitness

(fitness)[ds] and live[ld]

2734

pet

(pet)[ds] and live[ld]

2731

organic

(organic)[ds] and live[ld]

2680

green

(green)[ds] and live[ld]

2509

smart

(smart)[ds] and live[ld]

1352

cloud

(cloud)[ds] and live[ld]

1088

.com

(.com)[ds] and live[ld]

840

safe

(safe)[ds] and live[ld]

517

sustainable

(sustainable)[ds] and live[ld]

396

This list is by no means complete or all inclusive. These are just examples.

Generic or merely descriptive terms (without acquired distinctiveness) are required to be disclaimed in registrations on the Principal Register. Searching for terms that have been subject in the past to disclaimers in the [ds] field on USPTO TESS searches can let a trademark applicant know if a disclaimer should be considered. Note that if all of the terms in an application are generic or merely descriptive that term might not be trademarkable.

Generic Words and Phrases generally have disclaimer requirements and are NOT Typically Trademark-able unless some other part of the phrase is distinctive

The two major reasons for not protecting [not allowing registration of] descriptive or generic marks are:  (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant.  [Not allowing registration of descriptive and generic words and phrases] enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.  In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).

Exception: When the Brand Name of a Thing Is Not a Trademark for That Thing

• APPLE is a generic name for the edible fruit of the apple tree, but is a trademark for computers;

• BICYCLE is a generic name for the two-wheeled vehicle, but has been a trademark since 1885 for playing cards;

• CATERPILLAR is a generic name for the larva of a butterfly, but is a trademark for earth moving equipment;

• DIESEL is a generic name for a type of engine, but is a trademark for wearing apparel;

• HARP is a generic name for a stringed musical instrument, but is a trademark for lager brewed in Ireland by the Guinness Group;

• IVORY is a generic name for the material forming the tusks of elephants and walrus, but has been a trademark since 1879 for soap sold by Procter & Gamble;

• OPIUM is a generic name for a drug, but is a trademark for a fragrance sold by Yves St. Laurent;

• SANDALS is a generic name for warm-weather footwear, but is a service mark for a chain of Caribbean resort hotels;

• SHELL is a generic name for the covering of an egg, the covering of a sea creature and for a part of an explosive projectile, but is a trademark for petroleum products.

§ 12:1.Name of a thing cannot identify a source, 2 McCarthy on Trademarks and Unfair Competition § 12:1 (5th ed.)

Exception: When the generic word or phrase is used with a distinctive element (word(s) or graphic(s)) and the generic portion is disclaimed

• APPLE SNAPS (RN 5272586) for Breakfast cereals; Ready-to-eat cereals with a disclaimer of “apple”
• BICYCLE FIT GURU (RN 5165405) for Coaching in the field of sports with a disclaimer of “bicycle fit”
• METACO CATERPILLAR NET (RN 3237757) for Nonmetal mesh insect screens with a disclaimer of “caterpillar net”
• DIESEL THUNDER (RN 5094759) for Entertainment services in the nature of automobile racing and exhibitions with a disclaimer of  “diesel”
• HARP TRAIN (RN 4862800) for Musical instrument amplifiers with a disclaimer of “harp”
• IVORY SWIRL (RN 4555695) Natural stone and stone tile; Non-metal floor tiles with a disclaimer of “ivory”
• [Sorry, no examples for OPIUM]
• SANDAL TOTE, INC (RN 5088145) Sandal shaped plastic belt clip used to hold sandals with a disclaimer of “sandal” and “Inc”
• SHELL BOX (RN 5415550) Cases for smartphones with a disclaimer of “shell box”

HOW TO SEARCH TO SEE IF A TERM IS GENERIC OR MERELY DESCRIPTIVE

The USPTO requires generic or merely descriptive terms to be disclaimed. So searching for disclaimed terms, when used with similar goods, will give a good indication if a term that you want to use is generic or merely descriptive.

Example: The Vitamin Shoppe for retail sales of vitamins. Is VITAMIN descriptive or generic? A USPTO TESS freeform search (with search terms underlined including quotation marks) of  (vitamin)[GS]  and  (vitamin)[DS] and live[ld] and `RN > "0" yields over 200 LIVE registrations where VITAMIN has been disclaimed in a registered term. The same basic facts but where VITAMIN was not disclaimed: the USPTO TESS freeform search (vitamin)[bi] and (vitamin)[GS]  not  (vitamin)[DS] and live[ld] and `RN > "0" yields a little bit less BUT a few of these are registered under Section 2(f) as having acquired distinctivness ((vitamin)[bi] and (vitamin)[GS] not (vitamin)[DS] and live[ld] and (-2(f))[rg]and `RN > "0").

Example: Is SHOPPE descriptive in that example? This is a little harder  to search reliably because the applicant doesn’t necessarily have to describe their shop as being retail.  The USPTO TESS search (shoppe or shop)[bi] and (retail or shop)[GS]  and  (shoppe or shop)[DS] and live[ld] and `RN > "0" yields over 900 results. The USPTO TESS search (shoppe or shop)[bi] and (retail or shop)[GS]  not  (shoppe or shop)[DS] and live[ld] and `RN > "0" yields over 500 records but it is apparent from looking at the results that SHOP is often used as a verb rather than a noun in these results. Strategy Matters!

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