What Is a Trademark Disclaimer?
If you are reading this, you likely have an office action that is requiring a trademark disclaimer. The Examining Attorney at the Trademark Office will not allow your trademark application until you enter a disclaimer of a portion of the trademark or service mark. A trademark disclaimer is a written statement that “disclaims” “exclusive rights” to “unregisterable content” in a “trademark registration”.
A trademark disclaimer is a written statement that “disclaims” “exclusive rights” to “unregisterable content” in a “trademark registration”.
Disclaimers protect the public’s First Amendment right to use generic or descriptive words. Disclaimers deny trademark owners from claiming exclusive rights to these generic or descriptive words.
1. To Disclaim – disavow – deny ownership of Exclusive Rights to Unregisterable Content
In other words, a disclaimer is an affirmative declaration, made of public record, that trademark registration does not cover “exclusive rights” to the disclaimed content. It’s an affirmative denial of ownership to rights in the particular word, phrase, or graphic (the unregisterable content) disclaimed in the registration.
2. Exclusive Rights
A registered trademark is a government granted monopoly. It provides the owner with an exclusive right to use the mark in connection with the goods/services listed in the registration. A disclaimer is an exception to this exclusive rights monopoly of the entire mark. The exception being the unregisterable content. The disclaimer carves out from the grant of exclusive rights parts of the trademark that are deemed generic and /or descriptive.
3. Unregisterable Content Is Generic or Descriptive Content, or Content that Does not Function as a Source Identifier.
Typically, portions of a mark that are not registrable and require a disclaimer include the following:
- Merely Descriptive Words/Designs – CARBONATED for beverages
- Laudatory Words – BEST for practically any goods or services
- Generic Words/Designs – ASPRIN for pain releavers
- Geographic Words/Designs – PHILADELPHIA for cheese steaks
- Business Type Designations – CO. or INC. or LLC
- Informational Words – net weight, package contents, ingredients
- Well-known Symbols – $ for financial services
4. A Disclaimer Only Limits Rights Conveyed by the Trademark Registration – Common Law Trademark Rights Are Unaffected.
Trademark law is a two-part system of laws that operate in parallel. One system involves rights obtained through registration of a trademark with the U.S. Patent & Trademark Office. The other system involves common law trademark rights. Common law rights exist irrespective of whether the trademark is registered or not. A plaintiff may proceed under either system or both systems. A trademark disclaimer limits only statutory rights granted by the trademark registration – not common law trademark rights. 15 U.S.C. 1056.However, because the disclaimer does not deprive plaintiff of common law rights it may have in the disclaimed content, plaintiff may assert infringement of those rights. There is no guarantee, although, that plaintiff will fare any differently by proceeding with common law rights to the disclaimed content. After all, the Trademark Office (an expert in the field) found the disclaimed content unregisterable. A court looking at the common law issue, likely will find the content equally unprotectable. The substance of the rules for finding unprotect able / unregisterable content do not change.
Disclaimer: This information is for educational purposes, and is not intended to be legal advice. Each case turns on its own facts. Please consult with an experienced trademark attorney.
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