Trademarks should be unique, and when a portion of a trademark is not unique you may need to include a trademark disclaimer for your trademark to register.
Trademark disclaimers can hinder – and in some cases even end – the registration process. If you include an obvious disclaimer when filing your trademark application with the U.S. Patent and Trademark Office, it will allow you to avoid receiving an Office Action and will speed the registration of your trademark.
What is a Trademark Disclaimer?
It’s rare to find a trademark that’s truly unique. KODAK and Pepsi may have pulled this off via fanciful trademarks, but many trademarks contain a word or words that are too descriptive to be claimed as a trademark. For example, in the trademark Crazy Ed’s Furniture the word “Furniture” is generic and must be disclaimed.
Trademark disclaimers are waivers within an application that indicate which elements of the trademark that you’re not claiming exclusive rights over. If your company’s name contains the word ‘bread’ and you sell bread, that word must be disclaimed and you cannot sue other companies for trademark infringement if they use that word.
A trademark disclaimer is a simple declaration. For Crazy Ed’s Furniture, a trademark disclaimer example is:
No claim is made to the exclusive right to use “FURNITURE” apart from the mark as shown.
The USPTO states that a trademark disclaimer is required in any of the following situations:
- Merely descriptive: Aspects that merely describe a product feature.
- Laudatory words: Terms that claim a superior quality.
- Generic: Common names/designs of services and goods.
- Geographic: Words or designs that describe a product or service’s origin.
- Business type designations: Labels that describe a business structure or type.
- Merely informational: Words that provide information about a brand, product or service.
- Well-known symbols: Symbols that are commonly known.
Trademark Disclaimer Examples
The following are trademark disclaimer examples:
- “Furniture” in Ashley Furniture.
- “Pizza” in Domino’s Pizza.
- “Health” in CVS Health.
- “Fitness” in LA Fitness.
- “Coffee” in Peet’s Coffee.
- “Corporation” in Microsoft Corporation.
While portions of these trademarks are very strong, they still contain elements that cannot be protected at all.
How do I Avoid a Trademark Disclaimer?
If you can make the case that your trademark is unitary, a trademark disclaimer will not be necessary. Unitary words and designs are those that create a unique commercial impression that’s independent of the element that’s unregisterable.
Using a telescoped term that contains two words that share certain letters, for instance, could make a trademark disclaimer unnecessary. Compound words could also be viewed as unitary by combining two unregisterable words. MuscleMachine would be an example. If consumers view the components of a trademark as inseparable, it will likely be considered unitary and registrable without a disclaimer.
Another way to avoid a trademark disclaimer is to use only unique words. The following types of trademarks are considered unique:
As is the case with KODAK and Pepsi, completely unique terms fall under the fanciful trademark umbrella. This is the strongest form of trademark you can receive. A disclaimer will not be necessary because the word has no prior meaning in the English language.
Arbitrary trademarks also provide a high level of protection. Even though common words are typically a component, they don’t have an associated meaning with the product or service at issue. The word ‘apple,’ for instance, is completely unrelated to computers. This is why the megacorporation that trademarked the name doesn’t have to disclaim its use.
Any trademark that alludes to – rather than describes – a product or service is known as a suggestive trademark. In these cases, consumers must use their imaginations to create a link in their mind. Greyhound (i.e. fast travel) and Microsoft (i.e. microcomputer software) are famous examples. Neither company would have to disclaim use of these terms.
Acquired Distinctiveness and the Supplemental Register
It is possible that over time a disclaimer will no longer be required. When a trademark acquires distinctiveness, it means it has garnered secondary meaning in consumers’ minds. If an otherwise unregisterable term in your trademark acquires distinctiveness, you may be able to register it without a disclaimer.
Trademarks that are registered to the Supplemental Register may also avoid disclaimers.
Overcoming a Disclaimer Requirement
Receiving an Office Action requiring a trademark disclaimer is very common. If this is the only issue raised by the examining trademark attorney, you are very close to registration. This leads many candidates to quickly amend their application to include the disclaimer. In doing so, however, it is important to remember that you are weakening your position in the event of an infringement. This is because a trademark disclaimer is a public admission that certain elements of your trademark are descriptive. Infringers can later use this as evidence that they haven’t actually violated your rights. For more information, please see our trademark infringement and trademark litigation pages.
If you want to forego a trademark disclaimer, you’ll need to craft an argument explaining why it is unnecessary. If you can show that the element in question does not describe your products or services, is unitary, or has acquired distinctiveness in consumers’ minds, for instance, the examining attorney may drop the requirement.
If you have an issue related to a trademark disclaimer, please contact us today.