Trademark Blog

What is a Disclaimer for USPTO Trademark Registration?

Disclaimer

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 Primarily Geographically Descriptive Trademark?

geographically descriptive trademark

A primarily geographically descriptive trademark (not to be confused with a geographically deceptively misdescriptive trademark) is only entitled to registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has become distinctive of the products or services listed in the trademark application. If it has become distinctive, then it would be eligible for registration on the Principal Register. I invite you to review my blog post titled “Supplemental Register vs. Principal Register – What is the Difference?” so that you understand the many important differences between the two registers and the rights afforded by each one.

What is a Deceptively Misdescriptive Trademark?

Deceptively Misdescriptive Trademark

A deceptively misdescriptive trademark (as opposed to a deceptive trademark) is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Principal Register if it has acquired distinctiveness or “secondary meaning” in the minds of consumers. Otherwise, a deceptively misdescriptive trademark is only entitled to registration on the Supplemental Register. I encourage you to read my article titled “Supplemental Register vs. Principal Register – What is the Difference?” to learn more about the important distinctions between the two registers maintained by the USPTO.

What is a Deceptive Trademark for Purposes of Trademark Registration?

Deceptive Trademark

A deceptive trademark (as opposed to a deceptively misdescriptive trademark) is not eligible for registration with the United States Patent and Trademark Office (USPTO) under any circumstances. The Lanham Act (which is the law that governs federal trademark registration) specifically prohibits the registration of a trademark that “consists of or comprises deceptive matter.” This means that the USPTO is legally obligated to refuse registration of your trademark if it determines that your mark is wholly deceptive or includes a deceptive term.

U.S.-Licensed Attorney Helping Foreign Trademark Applicants

u.s.-licensed attorney

I’m U.S.-licensed attorney Morris Turek and I assist individuals and businesses located outside of the United States with their important U.S. trademark matters. Since 2005, I’ve helped clients located on six continents (no Antarctica penguins have hired me yet) file their trademark applications, renew their trademark registrations, and defend their trademark rights. As a U.S.-licensed attorney, I’m legally able to work with foreign individuals, businesses, and organizations no matter where in the world they happen to be. I’ve implemented affordable and predictable flat fee trademark pricing for the vast majority of my services, and I offer numerous payment methods so that they can choose the one that’s most cost-effective for them. In addition, I can easily communicate with non-U.S. residents through Skype, my Facebook business page, email, and the old-fashioned telephone. I just want to make it easy for people residing outside of the U.S. to contact me and to work with me on all of their various trademark-related matters.