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A trademark disclaimer is a statement placed in a trademark application or registration showing that the owner doesn't claim rights to part of the trademark.3 min read
What is a Trademark Disclaimer?
A trademark disclaimer is a statement placed in a trademark application or registration to show that the owner doesn't claim rights to a portion of the trademark, usually words considered to be generic, descriptive or informational.
Why is a Trademark Disclaimer Important?
Disclaiming part of the text in a trademark application shows the United States Patent and Trademark Office that you are not requesting exclusive rights to a term that can't be registered according to law. If two companies are applying for similar trademarks, and your company disclaims the use of words that can't be registered, while the other company doesn't, the trademark office is more likely to approve your application. Also, a disclaimer can help courts make a decision in trademark disputes.
Reasons to Consider Not Using a Trademark Disclaimer
There are times when the trademark office requests a disclaimer, but the company may want to refuse the request. For example, consider a business called Joe's Diner. Usually, "diner" is not a word a business can register. Also, there are many businesses that have "Joe" as part of their name. So Joe's Diner may likely refuse the trademark office's request for a disclaimer. Joe wants his diner to stand out from all the other businesses with "Joe" included in the name. In these cases, an applicant should contact a trademark attorney for advice on how to proceed.
Using Words That Can't Be Registered
Some unregisterable words describe the type of business involved or help to distinguish the company from ones with similar names. The words may be generic, but necessary. In some cases, an applicant can claim that the mark is "unitary," meaning that the trademark as a whole (including generic or descriptive words) creates a single impression to consumers. In any case, a disclaimer does not remove the words from the proposed trademark.
Examples — How to Use a Trademark Disclaimer
Standard Third Party Disclaimers
- All product and company names are trademarks™ or registered® trademarks of their respective holders. Use of them does not imply any affiliation with or endorsement by them.
- ABBEY ROAD and the ABBEY ROAD logo are trademarks of EMI (IP) Limited, used under license.
- UDG is a trademark of UDG USA Inc. Registered in the U.S. and other countries and used with permission.
Develop a Strong Trademark
- Use strong words in your trademark that are not a generic description of your products or your industry.
- Use images that are unique. Do not use drawings that could point to a company selling similar products.
What to Disclaim
- Parts of your trademark that are generic, descriptive, or not unique.
- Parts of your trademark that could infringe upon another company's registered trademark.
- Parts of your business name that cannot be registered.
- Do not design your trademark in a way that would cause some of the words to become generic descriptions of your product. Otis lost the trademark on its escalator by advertising the moving stairs as "the latest in elevator and escalator design." A court ruled that because Otis described its product in a generic fashion, competitors could do the same.
Too Much Information Included
- Whoever files the application, disclaimers are common. Rejections occur most often when a mark owner files the application himself and includes too much material in the mark. They do occasionally arise, as well, when a trademark attorney files the application.
Steps to File
The trademark office notifies trademark applicants when it determines that a disclaimer is needed. To submit a disclaimer, complete the Trademark Electronic Application System "Response to Office Action" online form.
Frequently Asked Questions
- How common are disclaimer requests?
In a 30-month period between 2008 and 2010, records show that roughly 30 percent of all trademark applications received a disclaimer request from the trademark office. Generally, the requests went to companies that didn't use the services of a trademark attorneys. If you are looking for a trademark attorney, you can post your need here and get matched with the top 5% of lawyers while saving 60% on legal fees using UpCounsel.
- Can you successfully fight a disclaimer request?
Fighting a disclaimer is a costly process. Sometimes it can be successful, but sometimes it is not. For example, in 2015, Louisiana Fish Fry Products lost its second appeal to overturn a requirement that it disclaim "Fish Fry Products" from its trademark. The company claimed that the term had "acquired distinctiveness" – meaning that consumers would associate it with the source of the products. However, two courts disagreed, saying the term was merely descriptive.