Trademark law is critical because it grants an owner the ability to protect their brand, allowing them to distinguish their goods and services from others in the marketplace. However, not all elements of a trademark are entitled to full protection of that brand. We often tell clients that not all the words of your trademark are treated equally, and as a result, some words may have more weight or significance than other words. In fact, there is a hierarchy of trademark strength, as not all words are created equally. But for the weaker words within a trademark, this is where trademark disclaimers come into play. Understanding what disclaimers are and the effect they will have on the trademark process can help business owners navigate that process.

What is a Trademark Disclaimer?

A trademark disclaimer is a portion of the trademark application that states that the applicant does not claim exclusive rights to a portion of the mark. The purpose of a disclaimer is to prevent businesses from having exclusive rights to terms that are common, generic, or descriptive that other businesses need to use in order to sell their products or services.

For example, a company applies to register the trademark “Sunny Bakery” (assuming they are a bakery). The USPTO will more than likely request a disclaimer for the term “Bakery,” since that is too generic of a term that other businesses in that industry should have the right to use. A possible registration statement for this mark may state “No claim is made to the exclusive right to use ‘Bakery’ apart from the mark as shown.” While the word “Bakery” will still remain in the trademark registration, it is “disclaimed” or not considered for trademark purposes.

When would a Trademark Disclaimer be Required?

The United States Patent and Trademark Office (USPTO) usually requires a disclaimer when a trademark includes all or some of the following:

• Descriptive words (like “Fresh” in connection with a juice brand)
• Generic terms (like “Shoes” in connection with a footwear brand)-
• Geographic indicators (like “New York” in connection with a deli)-
• Common business identifiers (like “Inc.” or “LLC”)
• Laudatory words (like “Best” or “Superior”)

If the PTO requires the disclaimer and you do not include it, your application will receive some sort of office action, resulting in delays in the registration process.

Why Are Trademark Disclaimers Necessary?

A trademark disclaimer assists in ensuring that certain words or phrases remain available to the public. Disclaimers prevent any one business from using that one word or phrase to unfairly limit competitors within an industry. Thus, disclaimers are intended to balance trademark exclusivity with the public’s right to use descriptive, generic, or laudatory terms and geographic identifiers in the marketplace. A disclaimer does not lessen or change the overall strength or protections associated with a trademark. The mark is still treated as registered as a whole, and the trademark owner can enforce exclusive rights against any one entity that utilizes a confusingly similar term, phrase, or identifier.

How to Include a Trademark Disclaimer in an Application

If a disclaimer is requested, the applicant may voluntarily include it during the application or in response to an office action requesting the disclaimer. To include the disclaimer, the applicant should provide:

“The applicant makes no claim to the exclusive right to use [disclaimed portion] apart from the mark shown. Applicants should carefully review their trademarks prior to submission to predict whether disclaimers will be required, which will help to speed the registration process.

Can Your Trademark Avoid a Disclaimer?

Not all “generic” sounding words will get disclaimed. For example, in the above example of “Sunny Bakery”, a disclaimer would not be required if Sunny Bakery is not a bakery but a clothing line. In that case, the examiner would likely not require a disclaimer because “bakery” would be arbitrary in connection to a clothing line. In other situations, the applicant may argue, or traverse, against an office action trademark rejection which includes a disclaimer requirement by establishing that the word at issue is now distinctive of the goods or services of the business, or used in a manner that does warrant a disclaimer. However, proving a requirement should not be disclaimed can be challenging, requiring relatively strong evidence of secondary meaning to prove a distinctive quality or unique branding.

Disclaimers are just a part of the normal process, so long as you get to use the right to it, especially as words, descriptive elements, terms, and generic terms remain available to others so that the public is not invited to use those same terms in competition. While respecting a disclaimer does not continually diminish the strength of the mark (as a whole), it does offer a balance with brand protection respected and fairness to competing businesses.

For businesses that are working through the stage of trademark filings, or just simply working through getting a trademark registered, knowing when and if disclaimers should be used should help eliminate delays through disclaiming terms or words and colors in the mark. Anyone can assist as a trademark attorney through uniquely filed or representations.

Need Help with Your Trademark Filing? At Cohen IP Law Group, we specialize in trademark applications, office action responses, and brand protection strategies. Contact us today to secure and safeguard your intellectual property rights.