A trademark is a symbol that works as a brand identifier for a company’s products and services. Companies use their trademark to distinguish their unique products or services to gain exclusive trademark rights. It also provides legal protection against imitation, dilution, infringement; and saves companies from revenue loss. But, while a trademark is a symbol that helps to differentiate goods or services of a brand, its descriptive statement can have generic words. Under trademark laws of the USA, a generic word cannot be trademarked. Thus, to prevent such confusion and allow its usage but without any ownership, a trademark disclaimer is the best solution.
This article talks about trademark disclaimers, their need, application, use cases, and examples of USPTO using a trademark disclaimer.
What is a Trademark Disclaimer?
A trademark disclaimer statement shows that the applicant has no exclusive right to use a specific word (generic) of a trademark. If the applicant’s proposed mark contains any descriptive words, the USPTO will ask you to disclaim it. This also means that the applicant agrees that he/she doesn’t have exclusive right to use the generic term. For example, in Starbucks Coffee, only word “Starbucks” is trademark but coffee is not. Therefore, there is no claim on the exclusive right to use “coffee” apart from the mark as shown.
As the main purpose of a trademark is to allow consumers to distinguish between the brands’ products and services, the registration of trademarks is important. However, a trademark disclaimer is significant to ensure that someone doesn’t register something that may prevent others from describing their products and services.
Relevant Read: A Complete Guide to Trademarks in the USA
Why a Trademark Disclaimer is needed?
It is important to reduce the chances of unauthorized claims on the trademark registration’s score, so a trademark disclaimer is important to explain the owner’s rights. No one can trademark words or symbols belonging to some categories such as generic, descriptive, geographic, famous symbols. This is because other companies and businesses also need these generic words to describe their company’s products and services. Thus, a trademark disclaimer in registration clarifies that any person can use the disclaimed words or symbols without any legal action.
The following parts of a trademark need a disclaimer due to their non-registrable nature:
- Merely Descriptive
- Generic words or designs
- Laudatory words (Greatest of all Time, Coolest place, best item, most exceptional salon)
- Famous symbols (such as dollar sign, bio-hazard symbols, prescription symbols)
- Deceptively misdescriptive words or designs
- Geographic words or designs (best Italian leather, Glassware from Japan, Coffee from Brazil)
- Informational words (net volume, lists of contents, addresses, net weight, contact information, establishment year)
- Business type designations (Corporation, Inc., Company, Ltd., and Bros)
Relevant Read: The Importance of Trademark Monitoring in the USA
These terms are important for businesses to effectively convey their company’s message effectively to their audience. Thus, a trademark disclaimer ensures that these terms and symbols don’t become the proprietary domain of a party.
How Can One Disclaim a Misspelled, Compound, Foreign, or Unitary Wording?
- Misspelled Wordings: Wrongly spelled forms of a generic, geographic, famous, or just unregisterable word should be disclaimed. The reasons for misspelled words can be many including telescoped words and phonetic misspellings.
- Compressed Compound Wording: Compressed compound wording arises from a union of two or more terms or symbols that are generic, geographic, descriptive, or unregistrable in some other way.
- Foreign Wording: If you use a foreign word in an unregisterable trademark, you will need to disclaim it if its English version is subject to a trademark disclaimer.
- Unitary matter: Due to unitary matter, a grammatically unitary expression ends up forming that the applicant must disclaim. In unitary matters, the parts of a trademark are so intertwined that they can’t be separated.
The disclaimed symbols/words/terms do not impact the overall strength, reputation, appearance, and application of your trademark.
Relevant Read: Two Companies, Same Names: Is This Trademark Infringement?
How to Submit a Trademark Disclaimer?
The trademark examiner at USPTO can reject a trademark registration if the applicant does not adhere to the disclaimer compulsion. To reply to a trademark disclaimer requirement made by the USPTO’s examiner, the applicant responds by using a non-final Office Action using the Response to Office Action form made available by Trademark Electronic Application System (TEAS). Also, the applicant must answer the examiner’s disclaimer requirement in a final Office Action using the TEAS Request for Reconsideration after Final Action form.
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