Trademark Disclaimer Requirement Refusal in USPTO Applications
When entrepreneurs or business owners file a trademark application with the United States Patent and Trademark Office (USPTO), an office action or refusal can be issued for the application for a variety reasons, and one of the most common office actions issued is the trademark Disclaimer Requirement Refusal. This office action is unique in that the USPTO’s objection lies with a portion of a mark, and not the mark in its entirety.
Under 15 U.S.C. § 1056 , a disclaimer may be required for unregistrable components of an otherwise registerable mark. A disclaimer is a statement that no claim is made to the exclusive right to use an unregistrable component apart from the mark as shown. TMEP 1213.08(a). This means that an applicant asserts no rights in the disclaimed component alone, but that rights are only asserted in the mark as whole. While a disclaimed component will remain a part of the mark, disclaimers do have practical effects which must be considered. For example, disclaimed components are afforded less weight when evaluating a mark and can therefore alter any likelihood of confusion analysis that may be applied during an infringement claim.
Requirements for Disclaimer in US Trademark Applications in the USPTO
Disclaimers may only be required for unregistrable components. A component or term is typically deemed unregistrable when it is laudatory, generic or descriptive of the goods or services for which the mark is used. Geographically descriptive terms and terms that do not indicate source, such as entity designations are also unregistrable. TMEP 1213.03. This matter will be found unregistrable whether it is used in a word mark or as a literal element in a design mark. Furthermore, accurate pictorial representations of matter that is descriptive of a mark’s goods and services will be found unregistrable and require a disclaimer. TMEP 1213(c).
How to Overcome USPTO Office Action for Disclaimer Requirement
In order to overcome this refusal, applicants can either amend their application to make the required disclaimer or persuade the examining attorney that the matter is registrable, and a disclaimer is therefore not warranted. Disclaimers are most commonly required for descriptive matter so applicants will likely be tasked with showing that the component in question is suggestive and not descriptive of the goods or services under the mark. While this is possible in some circumstances, it will require an understanding of nuanced trademark law and drafting of a full office action response.
While a disclaimer requirement refusal will delay a trademark application, and can possibly cause an applicant to forfeit rights in a portion of their mark if it is not responded to within the required deadline in the USPTO Office Action. Proactive planning with an experienced trademark attorney, prior to filing a trademark application, or after an office action is filed, may allow applicants to avoid delays or forfeiture of trademark rights in the USPTO.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; email@example.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2019. All rights reserved.