Elements of trademarks that are descriptive, especially those that are generic are required to be disclaimed. The USPTO requires that generic, merely descriptive, deceptively misdescriptive, primarily geographically descriptive or geographically deceptively misdescriptive subject matter, and matter such as corporate or business descriptors such as “inc.,” “corp.,” and “co.,” and top level domain names such as “.com” “.net” and “.org”and TLD's such as “.com,” “.net” and “.org” be disclaimed. Elements that have acquired distinctiveness may be exempted from being disclaimed under Section 2(f).
Searching Disclaimers On TESS
The TESS FREE FORM search ‘(tweet)[ds]’ searches for the word ‘tweet’ disclaimed. (Only two results.) The [ds] field searches the whole disclaimer field so a [ds] search for any of the words ‘NO’ ‘CLAIM’ ‘IS’ ‘MADE’ ‘TO’ ‘THE’ ‘EXCLUSIVE’ ‘RIGHT’ ‘TO’ ‘USE’ ‘APART’ ‘FROM’ ‘THE’ ‘MARK’ ‘AS’ ‘SHOWN’ will bring up over 1,340,000 records even though they are not commonly disclaimed words.
TMEP 1213 Disclaimer of Elements in Marks
TMEP 1213 Disclaimer of Elements in Marks
15 U.S.C. §1056 Disclaimers.
(a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
(b) No disclaimer, including those made under subsection (e) of section 1057 of this title, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.
A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. A disclaimer may be included in an application as filed or may be added by amendment, e.g., to comply with a requirement by the examining attorney.
The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant’s right with respect to certain elements in the mark. As stated in Horlick’s Malted Milk Co. v. Borden Co., 295 F. 232, 234 (D.C. Cir. 1924) (citing Estate of P. D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538, 544 (1920)):
[T]he fact that a mark contains descriptive words is not enough to warrant a refusal to register it. Unless it consists only of such words, it may not be refused a place on the registry of the Patent Office.
The significance of a disclaimer is conveyed in the following statement:
As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.
Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-
A disclaimer may be limited to pertain to only certain classes, or to only certain goods or services.
TMEP 1213.01 History of Disclaimer Practice
There was no statutory authority for disclaimer prior to 1946. As various court decisions were rendered, USPTO practice fluctuated from, first, registering the composite mark without a qualifying statement; later, requiring a statement in the application disclaiming the unregistrable matter in the mark; and, finally, requiring removal of the unregistrable matter from the mark on the drawing. This fluctuation ended with the decision of Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920), in which the United States Supreme Court held that to require the removal of descriptive matter from a composite mark was erroneous, and commended the practice of a statement of disclaimer. Thus, the practice of disclaimer was established officially in the USPTO, although still without statutory support.
The Trademark Act of 1946 created a statutory basis for the practice of disclaimer in §6, 15 U.S.C. §1056.
TMEP 1213.01(a) Discretion in Requiring Disclaimer
When first incorporated in the Trademark Act in 1946, §6 stated that the Director shall require unregistrable matter to be disclaimed. Under the impetus of the mandatory word “shall,” it became customary to require a disclaimer for every occurrence, in any type of combination, of every term or symbol which by itself might be refused registration in the first instance under the 1946 Act.
In 1962, §6 was amended to state that the Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. The change from “shall” to “may” justifies the exercise of greater discretion by examining attorneys in determining whether a disclaimer is necessary. See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (stating that registration can be conditioned on disclaimer of an unregistrable component of a mark).
Examining attorneys should keep in mind the basic purpose of disclaimers, which is to indicate in the record that a significant element of a composite mark is not being appropriated apart from the composite. The examining attorney must not require that an element of a mark be disclaimed when a disclaimer would be unnecessary, e.g., when the form or degree of integration of an element in the composite makes it obvious that no claim is being made in any element apart from the composite.
TMEP 1213.01(b) Refusal to Register Because of Failure to Disclaim
Failure to comply with a requirement to disclaim was held to be a basis for refusal to register before the Act of 1946. See In re Am. Cyanamid & Chem. Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938). Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953). Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording “may require the applicant to disclaim,” registration may be refused if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc. , 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005) ; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re Nat'l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Indus., Inc., 157 USPQ 114 (TTAB 1968).
If an applicant fails to comply with the examining attorney’s requirement for a disclaimer, the examining attorney must make the requirement final if the application is otherwise in condition for a final action.
TMEP 1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), was amended in 1962 to add the sentence, “An applicant may voluntarily disclaim a component of a mark sought to be registered.” Disclaimers volunteered by applicants generally should conform to the guidelines set forth in this Manual. See TMEP §§1213.08–1213.08(d).
In In re MCI Commc’ns Corp., 21 USPQ2d 1534 (Comm’r Pats. 1991), the Commissioner held that §6(a) of the Act permits an applicant to disclaim matter voluntarily, regardless of whether the matter is registrable or unregistrable. The Commissioner specifically overruled all previous USPTO authority holding otherwise. Id. at 1539. (Previous practice prohibited the entry of disclaimers of registrable components of marks.) Therefore, if an applicant offers a disclaimer of any matter in a mark, the USPTO will accept the disclaimer.
The MCI decision states emphatically that the entry of a voluntary disclaimer does not render registrable a mark that is otherwise unregistrable under relevant sections of the Trademark Act, such as §2(d) or §2(e). Id. at 1538. The examining attorney must evaluate the entire mark, including any disclaimed matter, to determine registrability. Id. See In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) (finding voluntary disclaimer of “RSI” has no legal effect on the issue of likelihood of confusion because it is not a weak term). Furthermore, the MCI decision states that the applicant may not disclaim the entire mark. MCI, 21 USPQ2d at 1538. See TMEP §1213.06.
An applicant may volunteer a disclaimer in the mistaken belief that a disclaimer would be required when, in fact, USPTO policy would not require a disclaimer. If this appears to be the case, the examining attorney must offer the applicant the opportunity to withdraw the disclaimer.
If it is necessary to communicate with the applicant about another matter, the examining attorney must state in the Office action that the disclaimer appears to be unnecessary, and inquire as to whether the applicant wants to withdraw the disclaimer. If the applicant does not respond to the inquiry regarding the unnecessary disclaimer, and the application is otherwise in condition for final action or approval for publication for opposition or registration, the examining attorney must enter a Note to the File regarding the disclaimer and issue the final action or approve the application for publication for opposition or registration, as appropriate, without deleting the disclaimer.
In applications under §1 or §44, if it is otherwise unnecessary to issue a first Office action, the inquiry may be made by telephone or e-
In applications under §66(a), if it is otherwise unnecessary to issue a first Office action, the examining attorney should issue a “no-
TMEP 1213.01(d) Disclaimer Offered in the Alternative
An applicant may argue the merits of an examining attorney’s requirement for a disclaimer and, in the alternative, consent to entry of the disclaimer. In such circumstances, submission of the disclaimer does not constitute a concession that the matter sought to be registered is not inherently distinctive or registrable. See In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012). Thus, when an applicant submits a disclaimer in the alternative, while maintaining that the wording at issue is not descriptive, the disclaimer requirement is not moot. If the examining attorney finds the disclaimer acceptable, the applicant must be given the option of entering the disclaimer in the record or going forward with appeal of the underlying issue of whether the wording subject to the requirement is merely descriptive. This should be done by telephone or e-
See TMEP §1212.02(c) regarding a claim, in the alternative, that matter sought to be registered has acquired distinctiveness under §2(f).
TMEP 1213.02 “Composite” Marks
A “composite” mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. An unregistrable component of a composite mark is subject to disclaimer. However, if a composite mark (or portion thereof) is “unitary,” an individual component of the mark (or of the unitary portion) that would otherwise be unregistrable need not be disclaimed. See TMEP §§1213.05–1213.05(g)(iv).
The same principles apply to disclaimer of an unregistrable component of a composite mark, whether the mark is a combination of wording and designs or consists entirely of wording or entirely of designs.
TMEP 1213.03 Disclaimer of Unregistrable Components of Marks
TMEP 1213.03(a) “Unregistrable Components” in General
Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter. Section 6 of the Act referred initially to “unregistrable matter” and, since the 1962 amendment, now refers to “an unregistrable component.”
Typically, an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, matter that is merely descriptive or deceptively misdescriptive of the goods or services, or matter that is primarily geographically descriptive of the goods or services.
Office practice does not require disclaimer of a surname. Ex parte Norquist Prods., Inc., 109 USPQ 399 (Comm’r Pats. 1956) (finding disclaimer of “NORQUIST” unnecessary in application to register mark comprising “NORQUIST CORONET” on an oval background featuring a coronet, for tables and chairs). In that decision, the Commissioner stated as follows:
Section [2(e)(4)] of the statute does not contemplate the dissection of a composite mark to determine whether a word which constitutes an integral part of the mark is primarily merely a surname. Rather, it contemplates an examination of the mark in its entirety and an evaluation of the commercial impression created by the entire mark. A word which is primarily merely a surname may lose that significance when it appears in a distinctive composite.
Id. at 400. The addition of other registrable matter creates a composite mark with an overall impression that is not primarily merely that of a surname. If the additional matter is minimal or unregistrable, then the mark is primarily merely a surname and refusal under §2(e)(4) of the Act, 15 U.S.C. §1052(e)(4) (formerly §2(e)(3), 15 U.S.C. §1052(e)(3)), must be made. See In re E. Martinoni Co., 189 USPQ 589, 590-
In cases where registration of a mark is barred under the Trademark Act (e.g., under §§2(a), 2(b), 2(c), 2(d), and 2(e)(3)), a disclaimer of an unregistrable component will not render the mark registrable. See, e.g., Am. Speech-
TMEP 1213.03(b) Generic Matter and Matter That Does Not Function as a Mark
If a mark is comprised in part of matter that, as applied to the goods or services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register. If, however, matter that would otherwise be generic or would not function as a mark is part of a unitary mark or part of a separable unitary element of a mark, the examining attorney should not require a disclaimer of the matter. See TMEP §§1213.05–1213.05(g)(iv).
See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). See also In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) (“[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).”).
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, as stated in In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (citing In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977)), “Section 6 is equally applicable to the Supplemental Register.” See Wella, 565 F.2d 143, 196 USPQ 7 (finding mark comprising stylized lettering of BALSAM, with disclaimer of “BALSAM,” registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) (“Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.”).
TMEP 1213.03(c) Pictorial Representations of Descriptive Matter
An accurate pictorial representation of descriptive matter is equivalent to the written expression and, therefore, must be disclaimed pursuant to the same rules applicable to merely descriptive wording. See Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504, 511-
A properly worded disclaimer would read as follows:
No claim is made to the exclusive right to use the design of ____ apart from the mark as shown.
No disclaimer of highly stylized pictorial representations of descriptive matter should be required because the design element creates a distinct commercial impression. See In re LRC Prods. Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (holding outline of two gloved hands arbitrary and fanciful), and cases cited therein. Note: A map of the world or a depiction of a globe generally is not considered the pictorial equivalent of the terms “INTERNATIONAL,” “GLOBAL,” or “WORLDWIDE.”
TMEP 1213.03(d) Entity Designations
Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) or the familial business structure of an entity (e.g., “& Sons” or “Bros.”) must be disclaimed because an entity designation has no source-
The only exception to this practice is where the entity designation is used in an arbitrary manner (e.g., “THE LTD.” or “KIDS INC.” for clothing or CHUCKLE BROS. for a comic strip). In this case, the term has trademark significance and a disclaimer should not be required.
TMEP 1213.04 Trade Names
Unregistrable components of trade names or company names shall be disclaimed pursuant to the same rules that apply generally to trademarks. See In re Martin’s Famous Pastry Shoppe, Inc., 221 USPQ 364 (TTAB 1984), aff’d on other grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (affirming requirement for disclaimer of PASTRY SHOPPE in application to register MARTIN’S FAMOUS PASTRY SHOPPE INC. and design for various baked goods).
TMEP 1213.05 Unitary Marks
A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable. See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The inquiry focuses on “how the average purchaser would encounter the mark under normal marketing of such goods and also ... what the reaction of the average purchaser would be to this display of the mark.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)). The Court of Appeals for the Federal Circuit has set forth the elements of a unitary mark:
A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.
Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052. If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required.
The examining attorney must consider a number of factors in determining whether matter is part of a single or unitary mark: whether it is physically connected by lines or other design features; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052.
The examining attorney should exercise discretion in determining whether a mark or portion of a mark is unitary, in which case a disclaimer of a nondistinctive component must not be required. Some considerations that may factor into an assessment of whether wording in a mark or portion of a mark is unitary are discussed in TMEP §§1213.05(a)–(b)(iii). Each consideration may not apply in every case, and a phrase may be found to be unitary or to constitute a slogan even where none apply if, for some other reason, the whole is something more than the sum of its parts. Furthermore, if a mark that includes a registrable unitary phrase or slogan also has other unregistrable components that are separable, the latter must be disclaimed.
TMEP 1213.05(a) Compound Word Marks
A compound word mark is comprised of two or more distinct words (or words and syllables) that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, and PULSAIR).
If a compound word mark consists of an unregistrable component and a registrable component combined into a single word, no disclaimer of the unregistrable component of the compound word will be required. See In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (finding that “[a] disclaimer of a descriptive portion of a composite mark is unnecessary . . . if the elements are so merged together that they cannot be regarded as separable elements . . . for example, . . . by combining two words or terms, one of which would be unregistrable by itself . . .”).
If a composite mark consists of a compound word combined with arbitrary matter, and the compound word is unregistrable, a disclaimer of the compound word may be required. The form of the disclaimer of the compound word – that is, whether the disclaimed portion of the mark appears as one compound word or as two or more distinct words – should be consistent with the evidence of descriptiveness. If the compound word itself (with no spaces) is used descriptively, it should be disclaimed in that form. Otherwise, the disclaimed portion should appear as two or more distinct words, separated by spaces. See TMEP §1213.08(c) regarding disclaimer of misspelled words.
See TMEP §807.12(e) regarding drawings of compound word marks.
TMEP 1213.05(a)(i) Telescoped Words
A telescoped mark is one that comprises two or more words that share letters (e.g., HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, and POLLENERGY). See TMEP §807.12(e) regarding drawings for telescoped marks.
A telescoped word is considered unitary. Therefore, no disclaimer of an individual portion of a telescoped word is required, regardless of whether the mark is shown in a standard character or special form drawing.
However, if a telescoped word is itself unregistrable, a disclaimer of the telescoped word may be required. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for banking services in the absence of a disclaimer of “FIRST TIER,” in view of evidence that the term describes a class of banks). See TMEP §1213.08(c) regarding disclaimers of misspelled words, in general.
TMEP 1213.05(a)(ii) Compound Words Formed with Hyphen or Other Punctuation
When a compound word is formed by hyphenating two words or terms, one of which would be unregistrable alone, no disclaimer is necessary. “X” Labs., Inc. v. Odorite Sanitation Serv. of Balt., Inc., 106 USPQ 327, 329 (Comm’r Pats. 1955) (holding requirement for a disclaimer of “TIRE” unnecessary in application to register TIRE-
Word marks consisting of two terms joined by an asterisk (e.g., RIB*TYPE), a slash (e.g., RIB/TYPE) or a raised period (e.g., RIB°TYPE) are analogous to hyphenated words. Therefore, no disclaimer of portions of marks formed by asterisks, slashes, or raised periods is necessary.
If a hyphenated term comprising part of a mark is unregistrable, then a disclaimer of the hyphenated term may be required. See TMEP §1209.03(d) regarding determinations of whether a composite comprising two descriptive terms is itself descriptive. In this situation, the examining attorney must require a disclaimer of the words in the correct spelling.
Example 1: If the mark includes the term SOFT-
Example 2: If the mark includes the term OVER-
TMEP 1213.05(b) Unitary Phrases
A phrase is “a group of words that are used together in a fixed expression,” “two or more words in sequence that form a syntactic unit that is less than a complete sentence,” and “a sequence of two or more words arranged in a grammatical construction and acting as a unit in a sentence.” MacmillanDictionary.com, search of “phrase,” http://www.macmillandictionary.com/dictionary/american/phrase (Jan. 31, 2012); The American Heritage Dictionary of the English Language 1324 (4th ed. 2006); Random House Webster’s Unabridged Dictionary 1460 (2nd ed. 2001). Acting as a “single idea” or a “syntactical unit,” however, does not necessarily mean that a phrase is “unitary” in the trademark sense. A phrase qualifies as unitary in the trademark sense only if the whole is something more than the sum of its parts. Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN FORMULA and design for cosmetic products not unitary since the “elements are not so merged together that they cannot be regarded as separate” and the proximity of the words to the design feature “does not endow the whole with a single, integrated, and distinct commercial impression”).
Even where it includes an otherwise unregistrable component, a unitary phrase as a whole will have “some degree of ingenuity in its phraseology as used in connection with the goods; or [say] something a little different from what might be expected to be said about the product; or [say] an expected thing in an unexpected way.” Ex parte Mooresville Mills, Inc., 102 USPQ 440, 441 (Comm’r Pats. 1954) (holding FROM FIBER TO FABRIC FOR THE STYLE CONSCIOUS MILLIONS for fabrics capable of registration on the Supplemental Register).
Phrases must be analyzed on a case-
Some considerations for determining whether a phrase that comprises a mark or part of a mark is unitary are set forth below.
TMEP 1213.05(b)(i) Slogans
A slogan is a type of phrase and is defined as “a brief attention-
However, if a mark consists entirely of a slogan that is generic, merely descriptive, merely informational, or that is otherwise not being used as a mark, registration must be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (holding AMERICA’S FRESHEST ICE CREAM for flavored ices, ice cream, etc., incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (holding WHY PAY MORE! for supermarket services to be an unregistrable common commercial phrase); see TMEP 1213.05(b)(iii).
If an unregistrable slogan is a component of a mark with registrable matter, the examining attorney must require that the slogan be disclaimed.
TMEP 1213.05(b)(ii) Grammar and Punctuation
Grammatical structure and punctuation may play a part in the analysis of whether a phrase or slogan would be viewed as unitary. Such considerations serve as guidelines rather than dispositive factors and the weight to be given each depends upon the overall meaning and commercial impression of the mark.
TMEP 1213.05(b)(ii)(A) Verbs
A verb expresses an action (e.g., play, run, and sing) or a state of being (e.g., is, are, seem, become, and happen). See Merriam-
Example 1: TIP YOUR HAT for “hats”
When linked with the phrase YOUR HAT, the verb TIP renders the mark as a unitary phrase that creates the commercial impression of touching or raising a hat as a greeting or polite gesture. No disclaimer of HAT is required.
Example 2: TRANSFORMING STATE GOVERNMENT for “providing information in the field of state governments”
The verb TRANSFORMING indicates an ongoing activity being performed on STATE GOVERNMENT, thereby unifying the terms so that they function as a unit. No disclaimer of STATE GOVERNMENT is required.
Some additional examples of phrases in which the verb renders the phrase unitary are:
FILING TAXES SO YOU DON”T HAVE TO for “tax preparation”
BOATS ARE FUN for “boats”
TAKE THIS MEDICINE for “cough syrup”
See TMEP §1213.05(b)(ii)(B) for examples in which the combination of a verb and a preposition link the wording to create a unitary phrase.
TMEP 1213.05(b)(ii)(B) Prepositional Phrases
A preposition is “a word that usually comes before a noun or a pronoun and shows its relation to another part of the sentence.” MacmillanDictionary.com, search of “preposition,” http://www.macmillandictionary.com/dictionary/american/preposition (Jan. 31, 2012). Examples of prepositions include above, at, before, between, by, for, from, in, into, of, on, since, through, to, toward, until, and with. Chicagomanualofstyle.org, search of “preposition,” http://www.chicagomanualofstyle.org/16/ch05/ch05_sec170.html (Jan. 31, 2012). Moreover, a preposition “links an object and an antecedent to show the relationship between them.” Chicagomanualofstyle.org, search of “preposition,” http://www.chicagomanualofstyle.org/16/ch05/ch05_sec169.html (Jan. 31, 2012). The relation or connection may be to indicate a spatial relationship, location, time, cause, means, or possession. Chicagomanualofstyle.org, search of “preposition,” http://www.chicagomanualofstyle.org/16/ch05/ch05_sec174.html (Jan, 31, 2012). A prepositional phrase is the combination of the “preposition, its object, and any words that modify the object,” for example, “over the hill,” “in the sports car,” or “near her.” Chicagomanualofstyle.org, search of “prepositional phrase,” http://www.chicagomanualofstyle.org/16/ch05/ch05_sec173.html (Jan 31, 2012); see MacmillanDictionary.com, search of “prepositional phrase,” http://www.macmillandictionary.com/dictionary/american/prepositional-
Wording in a mark that comprises a prepositional phrase is generally connected or unified by the preposition(s) in such a way that the elements would not be regarded as separable. In addition, marks comprised of prepositional phrases often have the commercial impression of a catch phrase or slogan. In some instances, however, marks contain distinctive matter followed by unitary prepositional phrases that are informational or descriptive, and these prepositional phrases are separable from the rest of the mark and must be disclaimed. Common examples include “of” followed by a geographic place name (e.g., “of Atlanta”) and “for” followed by a consumer designation (e.g., “for children”).
Example 1: MANGOS FOR THE EARTH for “fresh mangos”
The preposition FOR joins THE EARTH with MANGOS, indicating a relationship between the wording. MANGOS is not separable because the prepositional phrase modifying it brings all the wording in the mark together to convey something more than the individual components. No disclaimer of MANGOS is required.
Example 2: A DAY OF HOPE FOR HEART DISEASE for “conducting workshops relating to heart disease”
The prepositions OF and FOR create two prepositional phrases joined as a unit that could be viewed as a catch phrase. No disclaimer of HEART DISEASE is required.
Example 3: ESTEE LAUDER FOR MEN for “cologne”
The descriptive prepositional phrase FOR MEN appears separable from the rest of the mark and does not create a distinct meaning independent of the meaning of the separate elements. Disclaimer of FOR MEN is required.
Some additional examples of phrases in which the preposition renders the phrase unitary are:
TALES OF THE COCKTAIL for “conducting seminars in mixology”
MENTORS FOR COMPLETE TEACHING for “remedial tutoring program for children in the areas mathematics and science”
CHECK UP FROM THE NECK UP for “medical services”
LANGUAGE OF LOLLIPOPS for “candy”
DEPARTMENT OF THE NAVY for “newsletters in the field of military science”
A DIVISION OF XYZ INDUSTRIES for “construction of buildings”
In some cases, the combination of a verb and a preposition link the wording to create a unitary phrase. For example:
GET MORE FROM ENERGY for “providing nondownloadable software for computing energy savings”
CHANGING THE WORLD OF SUSHI for “restaurant services”
WOMEN WHO RUN FROM COMPUTERS for “computer education training using multisensoral methods, group process and drama to motivate those with computer anxiety or fear”
TMEP 1213.05(b)(ii)(C) Punctuation
The use of punctuation, such as a question mark, exclamation point, colon, dash, or period, as well as the meaning of the punctuation itself, may be a factor weighing either in favor of or against a mark or a portion of a mark being a unitary phrase or slogan. Note, however, that the presence of punctuation in a mark comprising a slogan or phrase should not be confused with the significance of punctuation in a mark containing compound words that are formed using punctuation. See TMEP §1213.05(a)(ii). Punctuation may either unite or separate all or some of the words in the mark. Where punctuation unites all the words, the mark or phrase as a whole is likely unitary. Where punctuation separates some of the words, however, the result likely indicates a mark or phrase that is not unitary, requiring disclaimer or refusal of the unregistrable matter. Therefore, the punctuation in the mark must be considered in connection with an assessment of the specific arrangement of the words and the overall meaning and commercial impression of the slogan or phrase.
Example 1: CREATIVE NAILS? for “nail polish”
A question mark is generally used at the conclusion of a sentence to indicate a direct question. Merriam-
Example 2: GO! PUZZLE for “computer games software”
An exclamation point is used after an interjection or exclamation to indicate a forceful utterance or strong feeling. Merriam-
Example 3: COMFY. COZY. COTTON for “bed sheets and blankets”
In this example, the period after each term physically and conceptually separates the terms such that each stands alone. Therefore, the wording does not comprise a unitary mark and a disclaimer of COTTON is required.
Example 4: NAA – NATIONAL ASSOCIATION OF ACCOUNTANTS for “association services, namely, promoting the interests of accountants”
Here, the punctuation physically and conceptually separates the wording in the mark. Moreover, the phrase NATIONAL ASSOCIATION OF ACCOUNTANTS is descriptive and must be disclaimed.
Example 5: BONDS – THE FUTURE OF INVESTING for “financial planning”
The punctuation physically and conceptually separates the wording in the mark and a disclaimer of BONDS is required. Note, however, that THE FUTURE OF INVESTING is a unitary phrase, avoiding a disclaimer of INVESTING.
In some cases, the use of punctuation in combination with a verb and/or preposition may combine to create a unitary phrase or a mark with a distinct meaning independent of the meaning of the separate elements, as shown below:
HAVE YOU HAD YOUR MEDS TODAY? for “prescription pills for diabetics”
PAPER FOR YOUR OFFICE. TO YOUR OFFICE. for “retail store services featuring office products”
WHERE SNACKS LOVE TO DIP! for “dips”
GO FOR GOLD! for “gold jewelry”
TMEP 1213.05(b)(ii)(D) Possessives
Generally, the use of a possessive form of a word in a mark does not, by itself, merge the wording so as to create the commercial impression of a unitary phrase or slogan. However, if the mark contains the possessive form of a word as well as one of the considerations discussed above, this combination of the elements may result in a slogan or unitary phrase.
Example 1: BILL’S CARPETS for “retail carpet stores”
The possessive form of BILL’S alone is not sufficient to unite BILL’S with CARPETS such that the whole is more than the sum of its parts. Disclaimer of CARPETS is required.
Example 2: BILL’S IS CARPETS for “retail carpet stores”
The possessive BILL’S does not, by itself, unite BILL’S with CARPETS. However, the presence of the verb IS unites all the words to convey a complete thought that functions as a unit and expresses a fanciful state of being. No disclaimer of CARPETS is required.
Some other examples of wording in which the possessive does not create a unitary phrase and disclaimer of the descriptive wording is required are:
THE CHILDREN’S PLACE for “clothing”; “backpacks”; “retail stores” (disclaimer of CHILDREN’s required)
BARB’S BREAD BAKERY, INC. for “bakery services” (disclaimer of BREAD BAKERY, INC. required)
HUBER'S PREMIUM WORKWEAR for “clothing” (disclaimer of PREMIUM WORKWEAR required)
TMEP 1213.05(b)(iii) Other Considerations
Even if none of the considerations discussed above apply, there may be something about the components of the mark that joins them together and transforms them into a unitary phrase or slogan. If other considerations, such as word pattern, double entendre, and incongruity (see TMEP §§1213.05(c)-
Example 1: BLACK MAGIC for “accessories for skateboards and snowboards, namely grip tape”
The wording “Black Magic” has a distinct meaning of its own as a whole. The word BLACK is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.
Example 2: NOT YOUR ORDINARY DINER for “restaurant services”
The combination formed by the familiar phrase NOT YOUR ORDINARY followed by a descriptive or generic term creates a unitary phrase. No disclaimer of DINER is required.
Example 3: CORPORATE FUEL for “business management and advisory services”
Here, the descriptive term CORPORATE and the arbitrary word FUEL combine to create a unitary phrase that is a play on actual types of fuel, like jet fuel or diesel fuel. No disclaimer of CORPORATE is required.
Note, however, that in the following examples, nothing about the components of the marks joins them together and transforms them into unitary phrases.
Example 4: SWEETER PEARS REGENCY ORCHARD for “pears”
The mark does not contain a verb, preposition, or punctuation. Except for REGENCY, all the terms are descriptive and inform about the goods, their nature, and the type of place where they are grown. That the arbitrary term REGENCY is in the middle does not connect all the words to create a unitary phrase. Therefore, SWEETER PEARS and ORCHARD must be disclaimed.
Example 5: AAMCO COMPLETE CAR CARE EXPERTS for “motor vehicle maintenance and repair services”
The arbitrary term AAMCO is not connected to the rest of the terms, since there is no verb, preposition, or punctuation. The wording COMPLETE CAR CARE EXPERTS, which is descriptive and a separable element from AAMCO, must be disclaimed.
TMEP 1213.05(b)(iv) Unregistrable Unitary Phrases or Slogans
Although the determination that a mark or portion of a mark is unitary may provide an exception to the disclaimer requirement, when an entire unitary phrase or slogan is generic, descriptive, or merely informational, it remains unregistrable. To illustrate, “common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry” are unregistrable despite the fact that they may be unitary phrases or slogans. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale); In re Remington Prods. Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM for flavored ices); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD for construction material); see also TMEP §§1209.03(s) and 1202.04. Therefore, unless a unitary phrase or slogan otherwise meets all requirements for registrability, it must be disclaimed or refused registration, as appropriate.
TMEP 1213.05(c) Double Entendre
A “double entendre” is a word or expression capable of more than one interpretation. For trademark purposes, a “double entendre” is an expression that has a double connotation or significance as applied to the goods or services. The mark that comprises the “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services.
A true “double entendre” is unitary by definition. An expression that is a “double entendre” should not be broken up for purposes of requiring a disclaimer. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), where the Board found inappropriate a requirement for a disclaimer of “LIGHT” apart from the mark “LIGHT N’ LIVELY” for reduced calorie mayonnaise, stating as follows:
The mark “LIGHT N’ LIVELY” as a whole has a suggestive significance which is distinctly different from the merely descriptive significance of the term “LIGHT” per se. That is, the merely descriptive significance of the term “LIGHT” is lost in the mark as a whole. Moreover, the expression as a whole has an alliterative lilting cadence which encourages persons encountering it to perceive it as a whole.
See also In re Symbra’ette, Inc., 189 USPQ 448 (TTAB 1975) (holding SHEER ELEGANCE for panty hose to be a registrable unitary expression; thus, no disclaimer of “SHEER” considered necessary).
The multiple interpretations that make an expression a “double entendre” must be associations that the public would make fairly readily, and must be readily apparent from the mark itself. See In re RiseSmart Inc., 104 USPQ2d 1931, 1934 (TTAB 2012) (finding that TALENT ASSURANCE does not present a double entendre such that “the merely descriptive significance of the term [TALENT] is lost in the mark as a whole”); In re The Place, Inc., 76 USPQ2d 1467, 1470 (TTAB 2005) (holding THE GREATEST BAR laudatory and merely descriptive of restaurant and bar services; the Board stating that “[i]f the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of the applicant’s trade dress, advertising materials or other matter separate from the mark itself, then the mark is not a double entendre”); In re Wells Fargo & Co., 231 USPQ 95, 99 (TTAB 1986) (holding EXPRESSERVICE merely descriptive for banking services, despite applicant’s argument that the term also connotes the Pony Express, the Board finding that, in the relevant context, the public would not make that association). See also In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1158 (TTAB 2003) (holding ETHNIC ACCENTS merely descriptive of “entertainment in the nature of television programs in the field of home décor,” because the meaning in the context of the services is home furnishings or decorations which reflect or evoke particular ethnic traditions or themes, which identifies a significant feature of applicant’s programs; viewers of applicant’s programs deemed unlikely to discern a double entendre referring to a person who speaks with a foreign accent).
If all meanings of a “double entendre” are merely descriptive in relation to the goods, then the mark comprising the “double entendre” must be refused registration as merely descriptive.
The following cases illustrate situations where marks were considered to be “double entendres” and, therefore, registrable unitary marks: In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE for bakery products); In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008) (holding THE FARMACY registrable for retail store services featuring natural herbs and organic products and related health and information services relating to dietary supplements and nutrition); In re Simmons Co., 189 USPQ 352 (TTAB 1976) (THE HARD LINE for mattresses and bed springs); In re Del. Punch Co., 186 USPQ 63 (TTAB 1975) (THE SOFT PUNCH for noncarbonated soft drink); In re National Tea Co., 144 USPQ 286 (TTAB 1965) (NO BONES ABOUT IT for fresh pre-
TMEP 1213.05(d) Incongruity
If two or more terms are combined in a mark to create an incongruity (e.g., URBAN SAFARI, MR. MICROWAVE, and DR. GRAMMAR), the mark is unitary and no disclaimer of nondistinctive individual elements is necessary. See TMEP §1209.01(a) regarding incongruity.
TMEP 1213.05(e) Sound Patterns
Alliterative or repeated wording does not in itself make a mark unitary. In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007) (finding the rhyming quality of the words ZOGGS TOGGS “does not infuse TOGGS with any separate and distinct meaning apart from its generic meaning”); In re Lean Line, Inc., 229 USPQ 781, 782 (TTAB 1986) (holding LEAN LINE not unitary; “there is nothing in the record to suggest that the mere fact that both words which form the mark begin with the letter ‘L’ would cause purchasers to miss the merely descriptive significance of the term ‘LEAN’ or consider the entire mark to be a unitary expression.”)
In rare cases, a rhyming pattern, alliteration, or some other use of sound that creates a distinctive impression may contribute to a finding that the mark is regarded as unitary and individual elements should not be disclaimed. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) (finding LIGHT N’ LIVELY to be a unitary term not subject to disclaimer, because the mark as a whole “has a suggestive significance which is distinctly different from the merely descriptive significance of the term 'LIGHT' per se" and that "the merely descriptive significance of the term 'LIGHT' is lost in the mark as a whole."). Other evidence, such as registrations of the mark for related goods and consumer recognition of the mark as a unitary expression, may also contribute to a finding that the mark is unitary. Id.
TMEP 1213.05(f) Display of Mark
The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary. See, e.g., In re Texsun Tire & Battery Stores, Inc., 229 USPQ 227, 229 (TTAB 1986) (“[T]he portion of the outline of the map of Texas encircled as it is with the representation of a tire and surrounded by a rectangular border results in a unitary composite mark which is unique and fanciful.”); cf. In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006) (holding trade dress configuration of product design consisting of a label with the words “FLASH DARE!” in a V-
TMEP 1213.05(g) Marks with Design Elements Replacing Letters
Generally, when a design element replaces one or more letters (or a portion of a letter or letters) in a word that is merely descriptive, generic, or geographically descriptive, this combination of word and design element does not create a “unitary mark” if the word remains recognizable. Accordingly, the examining attorney must require a disclaimer of the merely descriptive, generic, or geographically descriptive word in such cases. See In re Clutter Control, Inc., 231 USPQ 588, 590 (TTAB 1986).
If the wording to be disclaimed is otherwise registrable (i.e., not generic), applicant may submit a claim of acquired distinctiveness as to that portion of the mark under Trademark Act §2(f). The examining attorney must always separately determine whether an applicant has adequately shown acquired distinctiveness. See In re Venturi, Inc., 197 USPQ 714, 717 (TTAB 1977).
The examining attorney must also assess whether the proposed mark might be unitary for other reasons (such as a compound or telescoped mark).
TMEP 1213.05(g)(i) Marks with a Distinctive Design Replacing a Letter in Descriptive or Generic Wording
Marks with a distinctive design that replaces a letter or part of a letter are registrable on the Principal Register with a disclaimer of the merely descriptive, generic, or primarily geographically descriptive wording. For example:
. The two O's in wool are represented by sheep.
Principal Register – Disclaimer of “WOOL”
T . The "N" in animal is represented by a donkey.
Principal Register – Disclaimer of “INC.” and “ANIMAL FOOD”
The words Numbskull Clothing Co. The "O" in clothing is represented by the image of a skull and crossed bones.
Principal Register – Disclaimer of “CLOTHING CO.”
The words Hot Paris. The "A" in Paris is represented by the image of the Eiffel Tower.
Principal Register – Disclaimer of “PARIS”
The word Pony. The letter "P" in Pony is represented by the image of a pony's head.
Principal Register – Disclaimer of “PONY”
The words Fish Flips. The dots over the "I" in both words are represented by the images of fish.
Principal Register – Disclaimer of “FISH”
The word Kids. The "I" in Kids is represented by the image of small children.
Principal Register – Disclaimer of “KIDS”
The words Lisa Corrado Nutrition. The "O" in the word Nutrition is represented by the image of an apple.
Principal Register – Disclaimer of “NUTRITION”
The words Outdoor Towels. The center of the letter "O" in Outdoor is in the shape of a tree.
Principal Register – Disclaimer of “TOWELS”
The words Doggie Rewards. The "O" in Doggie is represented by the image of a dog's paw print.
Principal Register – Disclaimer of “DOGGIE”
TMEP 1213.05(g)(ii) Marks with Merely Descriptive or Primarily Geographically Descriptive Designs Replacing Letters within Descriptive or Primarily Geographically Descriptive Wording
If the design that replaces a letter within descriptive or primarily geographically descriptive wording is itself merely descriptive or primarily geographically descriptive, or is otherwise nondistinctive, the examining attorney must require the applicant to amend to the Supplemental Register or seek registration on the Principal Register under §2(f) and to disclaim any generic wording. For example:
The words National Bankers Association.
The letter "S" in each word is represented by the dollar sign.
Disclaim “BANKERS ASSOCIATION” on Principal Register under §2(f) or on Supplemental Register
The words Connecticut Builders Association. The "O" in Connecticut is represented by a shaded image in the shape of the state of Connecticut.
Disclaim “BUILDERS ASSOCIATION” on Principal Register under §2(f) or on Supplemental Register
The words National Check Cashers. The last letter "S" in the word Cashers is represented by the dollar sign.
Disclaim “CHECK CASHERS” on Principal Register under §2(f) or on Supplemental Register
TMEP 1213.05(g)(iii) Marks with Accurate Pictorial Representations Replacing Letters in Merely Descriptive and Primarily Geographically Descriptive Marks
If the mark is otherwise merely descriptive or primarily geographically descriptive, and the design replacing a letter is an accurate pictorial representation of generic, merely descriptive, or geographically descriptive matter, the examining attorney must require the applicant to amend to the Supplemental Register or seek registration on the Principal Register under Trademark Act §2(f). The applicant must disclaim any generic wording or any accurate pictorial representation of generic matter. For example:
The words Best Soccer Balls. The letter "O" in soccer is represented by the image of a soccer ball.
Disclaim “SOCCER BALLS” and the pictorial representation of the soccer ball on the Principal Register under §2(f) or on the Supplemental Register
TMEP 1213.05(g)(iv) Unitary Marks with Design Elements Replacing Letters in Descriptive or Generic Wording
If literal and design elements in a mark are so merged together that they cannot be divided or regarded as separable elements, these elements may be considered unitary. For example, where the design element replacing a letter is merely one part of a larger design, the mark may be unitary, and no disclaimer of the descriptive or generic wording is required:
The words Cycle Customizing.
The words are joined together, forming the shape of a motorcycle.
The word "metrobike." The words are joined together with the letters "o" and "b" forming the wheels of a bicycle and a design element forming the frame, handles, and seat.
TMEP 1213.05(h) Unitary Marks: Case References
In the following cases, marks were considered unitary: B. Kuppenheimer & Co., v. Kayser-
In the following cases, marks were found not to be unitary: In re Slokevage, 441 F.3d 957, 963 78 USPQ2d 1395, 1400 (Fed. Cir. 2006) (holding not unitary trade dress mark for clothing consisting of a label with the words “FLASH DARE!” in a V-
TMEP 1213.06 Entire Mark May Not Be Disclaimed
An entire mark may not be disclaimed. If a mark is not registrable as a whole, a disclaimer will not make it registrable. There must be something in the combination of elements in the mark, or something of sufficient substance or distinctiveness over and above the matter being disclaimed, that would make the composite registrable. See In re Sadoru Group, Ltd., 105 USPQ2d 1484 (TTAB 2012) (finding the stylization of SADORU does not create a separate and inherently distinctive commercial impression apart from the word itself); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re Anchor Hocking Corp., 223 USPQ 85, 86 (TTAB 1984) (citing In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980)); Ex parte Ste. Pierre Smirnoff Fls, Inc., 102 USPQ 415, 416 (Comm’r Pats. 1954). This includes marks that are comprised entirely of generic wording, and either the entire mark or some of the terms are the phonetic equivalent of the generic wording. Such marks cannot be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).
In Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991), the Court of Appeals for the Federal Circuit stated as follows:
[U]nder traditional disclaimer practice, an applicant could not disclaim all elements of a composite mark. Section 1056(a) codified this policy. A mark which must be entirely disclaimed has no ‘unregistrable component,’ but is instead entirely nonregistrable. In other words, a mark which must be entirely disclaimed has no ‘otherwise registrable’ parts. Therefore, such marks do not qualify as composite marks for which the Commissioner may require a disclaimer.
TMEP 1213.07 Removal Rather Than Disclaimer
When it is not clear that matter forms part of a mark, the examining attorney must consider whether it is appropriate for the applicant to amend the drawing of the mark to remove the matter, rather than to disclaim it. See TMEP §807.14(a) regarding deletion of matter from the mark on a drawing. An applicant may not amend the drawing if the amendment would constitute a material alteration of the mark. 37 C.F.R. §2.72; TMEP §§807.14–807.14(f) .
There are circumstances under which the applicant may omit or remove matter from the mark shown in the drawing, if the overall commercial impression is not altered. See Institut Nat’l Des Appellations D’Origine v. Vintners Int’l Co. , 958 F.2d 1574, 1582, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950). However, matter may not be omitted from the drawing if the omission would result in an incomplete representation of the mark, sometimes referred to as “mutilation.” See TMEP §807.12(d). In other words, the matter presented for registration must convey a single distinct commercial impression. If a mark is not unitary in this sense, it cannot be registered. See Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).
TMEP 1213.08 Form of Disclaimers
TMEP 1213.08(a) Wording of Disclaimer
TMEP 1213.08(a)(i) Standardized Printing Format for Disclaimer
Since November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted. Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date. Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983. The disclaimed matter is taken from the disclaimer of record and inserted into the standardized disclaimer format for printing and database purposes. The standardized disclaimer text is as follows:
No claim is made to the exclusive right to use "____________" apart from the mark as shown.
See 1022 OG 44 (Sept. 28, 1982). See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm’r Pats. 1983) (“[T]he use of the standardized form is solely for the purpose of printing and data base purposes, not for the limitation of registrant’s rights.”).
For the record only, examining attorneys will accept disclaimers with additional statements pertaining to reservation of common-
No claim is made to the exclusive right to use "________" and "________" apart from the mark as shown.
While the “and” connector is preferred, the USPTO will also accept a statement that “no claim is made to the exclusive right to use "________" or "________" apart from the mark as shown.”
See TMEP §1213.08(b) regarding the disclaimer of unregistrable matter in its entirety.
TMEP 1213.08(a)(ii) Unacceptable Wording for Disclaimer
Wording that claims matter, rather than disclaims it, is not acceptable. A disclaimer should be no more than a statement that identifies matter to which the applicant may not have exclusive rights apart from what is shown on the drawing.
Therefore, statements that the applicant “claims” certain matter in the association shown are not acceptable. The examining attorney must require correction of this wording and of variations that amount to the same thing. Likewise, a statement that the mark is “not claimed except in the association shown,” or similar wording, is not acceptable, and the examining attorney must require correction. See Textron Inc. v. Pilling Chain Co., 175 USPQ 621, 621-
TMEP 1213.08(a)(iii) Unacceptable Statements in Disclaimers
A statement that purports to limit a mark by excluding color(s) or other features that do not appear in the mark is not appropriate for inclusion in a disclaimer. The issue most often arises where there are possible infringement issues involving a particular color, the applicant’s mark does not claim any color, but the applicant attempts to “disclaim” the color from the application with a statement such as: “No claim is made to the exclusive right to use the color purple within or as part of the (design element) apart from the mark as shown.”
Although applicants may include such restrictive statements in the application record, they are not appropriate for the registration certificate. Accordingly, if an applicant inserts any such limiting statement in a disclaimer, the examining attorney must ensure that it is deleted from the Trademark database so that it will not be printed on the registration certificate.
TMEP 1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety
Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms that form a grammatically or otherwise unitary expression (e.g., “SHOE FACTORY, INC.”), the examining attorney must require that they be disclaimed in their entirety. See, e.g., In re Med. Disposables Co., 25 USPQ2d 1801 (TTAB 1992) (finding MEDICAL DISPOSABLES to be a unitary expression that must be disclaimed as a composite); Am. Speech-
However, separate disclaimers of adjacent components of a mark may be accepted where they do not form a grammatically or otherwise unitary expression, and each component retains its separate descriptive significance. In re Grass GmbH, 79 USPQ2d 1600 (TTAB 2006) (reversing requirement for unitary disclaimer of “SNAP ON 3000,” and accepting separate disclaimers of “SNAP ON” and “3000.”)
TMEP 1213.08(c) Disclaimer of Misspelled Words
Marks often comprise words that may be characterized as “misspelled.” For example, marks may comprise terms that are “telescoped” (see TMEP §1213.05(a)(i)) or terms that are phonetic equivalents of particular words but spelled in a manner that varies from the ordinary spelling of such words.
If a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the examining attorney must require disclaimer of the word or words in the correct spelling. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re Newport Fastener Co. , 5 USPQ2d 1064, 1067 n.4 (TTAB 1987). However, the entry of a disclaimer does not render registrable a mark that is otherwise unregistrable. For example, if a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).
If the examining attorney has not required any disclaimer of misspelled wording because a disclaimer is not necessary under USPTO policy, the applicant may provide a disclaimer of the wording as spelled in the mark or in its correct spelling voluntarily. In such a case, the examining attorney must offer the applicant the opportunity to withdraw the disclaimer. If it is necessary to communicate with the applicant about another matter, the examining attorney must state in the Office action that the disclaimer appears to be unnecessary, and inquire as to whether the applicant wants to withdraw the disclaimer. If it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or e-
TMEP 1213.08(d) Disclaimer of Non-
If translated non-
No claim is made to the exclusive right to use the non-
See TMEP §§809–809.03 regarding translation and transliteration of non-
TMEP 1213.09 Mark of Another May Not Be Registered with Disclaimer
Normally, a mark that includes a mark registered by another person must be refused registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), based on likelihood of confusion. A refusal of registration under §2(d) may not be avoided by disclaiming the mark of another. Cf. In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662 (C.C.P.A. 1979) (permitting disclaimer of informational phrase indicating that applicant’s employees are represented by certain labor organizations). See TMEP §1213.10 regarding disclaimer in relation to likelihood of confusion.
TMEP 1213.10 Disclaimer in Relation to Likelihood of Confusion
A disclaimer does not remove the disclaimed matter from the mark. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. See In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965); In re MCI Commc'ns Corp., 21 USPQ2d 1534, 1538-
Typically, disclaimed matter will not be regarded as the dominant, or most significant, feature of a mark. However, since the Trademark Act permits an applicant to voluntarily disclaim registrable matter (see TMEP §1213.01(c)), disclaimed matter may be dominant or significant in some cases. As noted in MCI Commc'ns Corp., 21 USPQ2d at 1539, “Examining Attorneys will continue to consider the question of likelihood of confusion, under Section 2(d) of the statute, in relation to the marks as a whole, including any voluntarily disclaimed matter.”
TMEP 1213.11 Acquiring Rights in Disclaimed Matter
In Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538, 545 (1920), the United States Supreme Court stated, regarding registration of a mark with a disclaimer, that “the registrant would be precluded by his disclaimer from setting up in the future any exclusive right to the disclaimed part of it.” Subsequently, that principle was applied literally; registrants were prohibited from asserting that disclaimed matter had acquired secondary meaning. See Shaler Co. v. Rite-
The situation was changed by the Trademark Act of 1946, which provided that “disclaimer shall not prejudice or affect the applicant’s or owner’s rights then existing or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant’s or owner’s rights of registration on another application of later date if the disclaimed matter has become distinctive of the applicant’s or owner’s goods or services.” 15 U.S.C. §1056 (1946), amended by 15 U.S.C. §1056(b) (1962). In 1962, the statutory provision was amended to read, “No disclaimer ... shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.” 15 U.S.C. §1056(b).
It is now clear that, aside from generic matter, disclaimed matter is not forever barred from registration, and it can subsequently be considered for registration on either the Principal Register or the Supplemental Register. When an application is filed seeking registration of matter previously disclaimed, it must be examined in the same manner as other applications. See Quaker Oil Corp. v. Quaker State Oil Ref. Corp., 161 USPQ 547, 549 (TTAB 1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (C.C.P.A. 1972); Victor Tool & Mach. Corp. v. Sun Control Awnings, Inc., 299 F. Supp. 868, 875-
Whether or not previously disclaimed matter has become eligible for registration depends on the circumstances and the evidence adduced in the examination process. See Roux Distrib. Co. v. Duart Mfg. Co., 114 USPQ 511, 512 (Comm’r Pats. 1957); Helena Rubinstein, Inc. v. Ladd, 219 F. Supp. 259, 260, 138 USPQ 106, 107 (D.D.C. 1963), aff’d, 141 USPQ 623 (D.C. Cir. 1964).
Not Just Patents®
Aim Higher® Facts Matter
Not Just Patents® LLC
PO Box 18716
Minneapolis, MN 55418
For more information from Not Just Patents, see our other sites: