Trademark Disclaimer: Why It’s Needed and How to Use It
A trademark serves as a brand identifier for a product or service. It is used by companies with a unique product or service offering to ensure legal protection against imitation and potential revenue loss. However, while trademark is a sign capable of differentiating goods or services and enjoys legal security, its descriptive statement may contain some common/generic words that cannot be owned by an individual for their exclusive use. To avoid confusion with the generic words and to allow its usage, a trademark disclaimer is used.
The following article is a comprehensive discussion about trademark disclaimers, why it’s needed, the different ways to use it, along with a few real-life examples related to disclaimer as required by the USPTO office.
What is a Trademark Disclaimer?
A disclaimer statement indicates that the applicant does not have the exclusive right to use a specific word of a trademark by itself. For example, if you have any descriptive terms in your trademark, the trademark office may ask you to “disclaim” those. It means that apart from how the term is used in your trademark, you agree that you don’t have the exclusive right to use it. It is crucial because the whole point of a trademark is to allow people to distinguish their goods and services from other goods & services, not to prevent others from reasonably describing their goods & services.
Why the Need for Trademark Disclaimer?
The real purpose of the disclaimer requirement is to define the owner’s right under the trademark registration to reduce the possibility of extravagant and unauthorized claims made on the score of registration of the trademark, even if it may not be completely eliminated.
It is a fact that certain categories such as generic, descriptive, geographic, well-known symbols such as the dollar sign ($) are commonly used and not eligible for registration. The underlying logic for disclaimers is that other businesses and individuals need these words and symbols to describe their goods or services. In general, parts of a mark that are not registrable and require a disclaimer are shown in Figure 1.
A disclaimer in registration makes it amply clear that anyone can use the disclaimed terms without attracting any legal attention. Some of the common disclaimed terms are discussed below.
- Merely Descriptive: Simple descriptive words for describing goods and services do not qualify for protection under trademark. Some of the finest examples are – creamy for yogurt, hot for soup, cold and refreshing for soft drinks, a cue stick and eight balls for billiard parlor service.
- Laudatory Words: Complimentary and appreciative words that explain a product/service’s apparent superior quality also need a disclaimer. A few noteworthy examples are “Greatest of all Time” for a beer brand, “Coolest Place” on the planet for a holiday destination, “Incredible” for a service, “The Ultimate” for beauty salon service.
- Generic Words/Designs: Words/designs with a common name of goods/services also require a disclaimer. A few common examples are “ASPIRIN” for pain relief medication or a realistic picture of a yo-yo for toys.
- Geographic Words/Designs: It is common knowledge that words/designs describing the origin of goods or the location of the services do not enjoy protection under trademark and need a disclaimer. Some of the finest examples are authentic Italian leather, Glassware from Venice, Map of Germany for air charter services originating from Germany.
- Business Type Designations: The type and structure of the business can vary in the modern world. Depending upon the size and complexity of ownership, the last name differs. However, the type and structure of the businesses can be the same and hence cannot be protected under trademark registration. A few examples of business type designations that need disclaimer are “Corporation”, “Inc.”, “Company”, “Ltd.”, and “Bros”.
- Informational Words: Words that only provide general information about goods/services, such as, net volume, net weight, lists of contents, addresses and contact information, year of establishment, etc., requires disclaimer for use by other party in the business.
- Well-known Symbols: Common Symbols (shown in Table 1) provide information about your goods and services, such as, the biohazard symbol for medical waste containers, the prescription symbol for medical goods, the dollar symbol for financial services, the tree symbol for a green product, etc. These well-known symbols convey a political, social, religious, or similar kind of message and mandatorily need a disclaimer for use by other interested individuals and organizations.
- Deceptively Misdescriptive Words/Designs: Words/designs that explain a good/service in a way that is both incorrect and credible but will not affect the consumers purchasing decision as it is not intrinsically linked to the quality of the product/service. Such deceptively incorrect descriptive words/designs need a disclaimer for use by other businesses and individuals. Some examples are a riverfront restaurant for a restaurant not located alongside a river, mark SAL’S GLASS WAX for a glass cleaner without any wax, etc.
All the above-discussed disclaimed terms are essential for many businesses to communicate the brand message effectively (in the advertisement, on the web, etc.). Hence, the terms cannot be the proprietary domain of one party and must be disclaimed for free use by other keen businesses and individuals.
After understanding the portions of trademark that need a disclaimer, it is crucial to know how to disclaim misspelled, foreign, compound and unitary wording or matter.
How to Disclaim Misspelled, Compound, Foreign, or Unitary Wording/Matter?
- Misspelled Wording: Misspelled variations of a word that are generic, geographic, descriptive or otherwise unregistrable need to be disclaimed. The misspelling may result from telescoped words where two words share a single letter. For example, the word “SUPERINSE” consisting of two words “super” and “rinse”. Both the words share the common letter “R” in the telescoped word. Such words require disclaimer as two separate words. Another example is of phonetic misspelling like “JAY’S QUIK PRINT” where “QUICK” is misspelled as “QUIK”. The disclaimed term will be “QUICK PRINT”. The disclaimed term must be spelled correctly.
- Compressed compound Wording: Compressed compound word in a mark consists of a union of two or more words that are generic, geographic, descriptive, or otherwise unregistrable. The compound words need to be disclaimed. While registering the trademark, a compressed compound word has to be separated in the disclaimer. For example, in the mark “KATE’S COOLPACK.COM” related to insulated containers, the disclaimed terms would be “COOLPACK.COM”. This is so as it contains a compressed compound word and a generic domain name “.COM” (does not indicate source).
- Foreign Wording: The use of a foreign word in a mark that is generic, descriptive, geographic, or otherwise unregistrable needs to be disclaimed as the English version of such wording is subject to a disclaimer. For example, GALA ROUGE for wine; here “ROUGE” is a French term that means “red” and would be disclaimed as only descriptive of red wine. It is important to note that the disclaimer must consist of the non-English wording and not the English translation.
If the foreign wording consists of non-Latin characters such as Japanese or Hebrew, then the disclaimer needs to be of the non-Latin characters and their transliteration (conversion of text from one script to another) in Latin characters i.e., the phonetic spelling, in analogous Latin characters, or the words in the mark with non-Latin characters. One fine example is the use of Japanese characters for the word “optical” in a mark used with optical goods such as lenses. The disclaimer for this example would be for the non-Latin characters that transliterate to “Kogaku.”
- Unitary matter: Unitary matter in a trademark creates a grammatically or otherwise unitary expression. Such expression that is generic, descriptive, geographic, or otherwise unregistrable must be disclaimed as a whole. The cue to finding unitariness is when different parts of a mark are so integrated that they are inseparable and are read together as a single unit. Portions of a mark are considered unitary if they create a single commercial impression or distinct commercial image that is independent of the separate parts. For example, in the mark “PETE’S PIZZA PARLOUR” for a pizza restaurant, the portion “PIZZA PARLOURE” is unitary and unregistrable. The term must be disclaimed as a unit instead of “PIZZA” and “PARLOUR” separately.
Now that we understand portions that need to be disclaimed and how to proceed with the misspelled, foreign, unitary and compound word, let us look closely at some real-life examples for disclaimer terms.
A Few Well Known Examples of Disclaimers
- STARBUCKS COFFEE: A popular multinational chain of coffee and roastery reserves that is headquartered in the United States, Starbucks Coffee is the world’s largest coffeehouse chain. The word coffee is generic in the term “STARBUCKS COFFEE”. Therefore, no claim is made to the exclusive right to use “coffee” apart from the mark as shown. The word “coffee” can be used by any business without legal ramifications.
- KIA MOTORS: An automobile manufacturer based in Seoul, South Korea, Kia Motors is a multinational automobile manufacturer. In the term “KIA MOTORS”, the word motor is a general term. Hence, no claim is made to the exclusive right to use “motors” apart from the mark as shown. Any business or individual can use the word to describe their businesses without any legal attention.
- BURGER KING: An American chain of hamburger fast-food restaurants, Burger King is also a multinational company with outlets in over 100 countries. In the term “BURGER KING”, the word burger is a generic term. So, no claim is made to the exclusive right to use “burger” apart from the mark as shown. Any individual or business looking to use the word burger to describe their businesses can do so without legal consequences.
- CRAZY ED’S FURNITURE: A chain of furniture store in the United States. In the term “CRAZY ED’S FURNITURE”, the word furniture is a common term used everywhere. Therefore, no claim is made to the exclusive right to use “furniture” apart from the mark as shown. Any business or individual is free to employ the term without worrying about the legal aspect.
- DOMINO’S PIZZA: An American pizza restaurant chain, Domino’s Pizza is a multinational chain and is recognized as a leader in pizza delivery. The word pizza in the term” “DOMINO’S PIZZA” is generic and other businesses have unrestricted access to it. Hence, no claim is made to the exclusive right to use “pizza” apart from the mark as shown.
- MICROSOFT CORPORATION: Founded by Bill Gates and Paul Allen, Microsoft is a multinational technology corporation headquartered in Redmond, Washington, United States. The word corporation in the term “MICROSOFT CORPORATION” is generic as it describes the type and structure of a business. As a result, no claim is made to the exclusive right to use “Corporation” apart from the mark as shown. Any business willing to use the word based on its applicability is free to do so without worrying about any legal consequences.
Tips for disclaiming portions of a Trademark
The below tips can serve to be useful during your trademark registration process.
1. For example, if you are trying to register a beer named “Legalese IPA” then you would have to disclaim the exclusive rights to “IPA”. The IPA element in the term is descriptive and un-registerable on its own. While you can stop other breweries from naming their beers Legalese Stout, you cannot stop other businesses from calling a beer an IPA.
2. Another example is if you are trying for a trademark registration of the word “CADBURY GEMS”. In this case, the word “Gems” must be disclaimed. Again, there is fair reasoning behind it. The word gems is a generic term that cannot be registered independently. However, when used with the brand name “Cadbury”, it is considered to be distinctive in nature. Therefore, the logic for disclaiming the term gems is that the owner/proprietor of the trademark is restricted from claiming compelling rights over the use of the generic term ‘Gems’.
The disclaimed words/terms in no way affect the overall strength, appearance or use of your mark but only leaves the unregistrable components of the trademark to be used freely by other businesses. However, the absence of disclaimer in a trademark application may result in refusal of trademark and an office action for corrective measures.
Refusal to Register – Real Life Examples
An examiner can refuse a trademark registration if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. For example, if an applicant fails to comply with the examining attorney’s requirement for a disclaimer, the examining attorney should make the requirement final (if the application is otherwise in condition for final action). A few real-life examples related to disclaimer required or not required by the USPTO office are discussed below:
1. In re Box Solutions Corp. (TTAB 2006): Applicant Box Solution Corp. had won a decision in its appeal for USPTO’s refusal to register the mark “Box SOLUTIONS & Design” for computer hardware mainly communication servers. The Trademark and Trial Appeal Board (TTAB) ruled in favor of the applicant affirming that the mark in question did not create confusion with a registered trademark Box & Designs. However, the board also affirmed the PTO’s requirement of a disclaimer of the word “SOLUTIONS” as it did not prove distinct feature of the business. Source
2. In re Oppedahl & Larsen LLP: On May 3, 2001, the appellant Oppedahl & Larsen LLP had filed an application to register the mark ‘patent.com’ under 15 U.S.C. § 1051(b) (1). The PTO had refused to register the mark because the mark was a mere description of applicant’s goods, which was a dedicated software for tracing patent applications and issued patents. The TTAB also affirmed the decision of PTO in refusing the application for the same reason. The use of generic top-level domain “.com” was another reason for the refusal. The domain name only indicates an internet address for use by commercial and for-profit organizations. The domain name does not act as a source identifier and provides a distinctive feature unless it is a part of unitary expression. Hence, it cannot be registered. Source
3. Anheuser-Busch, Inc. v. Kelly J. Holt (TTAB 2009): The Trademark and Trial Appeal Board (TTAB) had dismissed the opposition to the registration of the marks “BEER 1” with “BEER” disclaimer. The board found the mark to be neither only descriptive nor deceptively misdescriptive under 2(e) (1). The challenger Anheuser-Busch had relied mainly on the testimony of a linguistic expert with the opinion that the term “BEER 1” would be perceived by consumer as top-ranking beer. Holt in its defense has argued that the number “1” could have different interpretation. Hence, BEER 1 is open to many meanings. Source
4. In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006): The Trademark and Trial Appeal Board (TTAB) had refused to register the mark “VOSE & SONS” as only a surname. The decision placed the onus on the examining attorney to establish a case that the main significance of the mark to the purchasing customers was that of a surname. The board had concluded that inclusion of the wording “&SONS” did not distinguish or relate to anything other than emphasizing that “VOSE” is the surname of the sons parents. Source
Now that we are familiar with most of the concepts of disclaimer and the refusal to register trademark because of a disclaimer, it is crucial to understand the process of submitting a disclaimer.
How to Submit a Disclaimer?
Applicants can respond to a disclaimer requirement in a non-final Office Action using the Response to Office Action form (shown in Figure 2) by Trademark Electronic Application System (TEAS). It includes any required statement and supporting declaration language mentioned in the Office Action. Applicants should also respond to a disclaimer requirement in a final Office Action using the TEAS Request for Reconsideration after Final Action form.
TEAS online form instructions: Applicants cananswer “Yes” to form wizard question number 3. In the “Additional Statements” section, enter the wording or design description that needs disclaimer in the text entry box for a disclaimer. For satisfying the trademark examining attorney’s disclaimer need, the entry in this box should exactly match with what was specified in the Office action. Applicant should not enter the design description or wording in the standardized format referenced above since the additional text in that disclaimer statement is already included in the TEAS form. For additional technical assistance, contact TEAS@uspto.gov.
In a trademark, it is vital to understand the portions that can be registered and ones that cannot be registered. Hence, it gets critical for applicants to develop a strategy of coining a trademark that must be formulated keeping in mind the need to specify the disclaimer parts. The correct planning with trademark disclaimer can achieve the dual objective of registering a great trademark without a trade-off with its distinctiveness. Which is why, before filing a trademark application, it is prudent to take the advice of subject matter experts. However, if you are still unsure about the process and its nuances, it is best to seek assistance of experts and avail the services of a third-party service provider such as Sagacious IP.
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– Gopal Singh Rawat (Trademark) and the Editorial Team