After you file your trademark application with the United States Patent and Trademark Office (USPTO), you may receive a trademark office action requesting that you provide a disclaimer of a particular element of your trademark. Usually, the requested disclaimer is for words or phrases that comprise a portion of your trademark, but the request could also be to disclaim a design or portion of a design. The good news is that dealing with a such a request is generally quite straightforward and non-controversial.
What is a USPTO Disclaimer?
A disclaimer is a written statement that becomes part of a trademark application. The disclaimer indicates that the owner of the trademark is not claiming exclusive rights to a specific portion of the trademark. The standardized USPTO disclaimer format is as follows:
“No claim is made to the exclusive right to use [insert disclaimed portion] apart from the mark as shown.”
Now, if you know that a disclaimer will be required, you can enter it during the course of preparing your trademark application. If you don’t, then the trademark examining attorney will simply issue an office action requesting a disclaimer and you can submit it at that time. However, if you fail to comply with the request, then the examining attorney will refuse registration of your trademark and issue a final office action.
What Kinds of Matter Must Be Disclaimed?
The following is a list of matter that is most often the subject of a requirement for a disclaimer:
- Generic words
- Merely descriptive words/phrases
- Geographically descriptive words/phrases
- Deceptively misdescriptive words/phrases
- Entity designations (e.g. LLC, Corp., Ltd.)
What if You Believe a Disclaimer is Unnecessary?
Every once in a while, the trademark examining attorney requests a disclaimer but you believe that such a disclaimer isn’t legally necessary. In that event, you have the opportunity to present evidence and arguments to attempt to persuade the examining attorney to withdraw the request. If you’re successful, then the examining attorney will no longer require the disclaimer. On the other hand, if you fail to convince the examining attorney that you’re correct, then a final office action will issue and you will have the option of (1) entering the disclaimer, (2) filing a Request for Reconsideration, or (3) filing a trademark appeal with the Trademark Trial and Appeal Board (TTAB). Of course, sometimes it’s just easier, cheaper, and quicker to comply with the examining attorney’s request for a disclaimer even if you strongly disagree that one is necessary.
If you’ve been continuously using a merely descriptive, geographically descriptive, or deceptively misdescriptive word/phrase for over five years in connection with the advertising and sale of your products/services, you may be able to avoid a disclaimer requirement by making a claim of acquired distinctiveness under what is known as Section 2(f). If the examining attorney accepts your 2(f) claim, then a disclaimer would no longer be required.
Did the USPTO Request a Disclaimer After Reviewing Your Trademark Application?
I’m experienced US trademark attorney Morris Turek. If you’ve received an office action requesting that you provide a disclaimer and are unsure about how to handle it or even whether a disclaimer is necessary, please reach out to me for a completely free consultation. I may be contacted via email at morris@yourtrademarkattorney.com, by phone at (314) 749-4059, or by filling out the contact form located below. I look forward to speaking with you soon.