Westchester Women's Bar Association

Overcoming a Disclaimer Requirement

If your trademark contains an element that is not capable of registration, the United States Patent & Trademark Office (“USPTO”) will require a disclaimer of the term before the Mark can register. See our web page entitled, Trademark Disclaimers for more information on why a disclaimer may be required by the Examining Attorney at the Trademark Office. If an applicant does not comply with a requirement for a disclaimer statement, the application will be refused registration. Recently, the Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a precedential decision wherein it reversed two refusals for disclaimers based on the applicant’s marks being unitary. See, In re Lego Juris A/S, Serial Nos. 88698784 and 88698804 (May 9, 2022) [precedential], where the applicant, the largest toy company in the world as of 2021, Lego was seeking to register two composite marks in a variety of international classes geared towards children.

The Marks at issue contained the literal term MONKIE KID, a visual of the two trademarks can be found here and here. The Examining Attorney required a disclaimer of the term KID and the applicant appealed to the Board. The Examining Attorney’s argument was that KID describes the intended user of the goods. Lego argued that the two marks were unitary in nature. A unitary mark contains elements that are so merged together, that they cannot be viewed as separate components, and therefore a disclaimer is not necessary. See In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981).

To determine if a mark is unitary, several factors must be considered. The first is the physical connection of the alleged unregistrable term (by lines or other design features) to the other elements in the composite mark. In Lego’s marks, the Board held that the terms Monkie and Kid were physically connected to the design of the monkey’s head (refer to the link above for a visual representation). The Examining Attorney stated that the image of the monkey’s head functioned as a space between the words and thus did not connect the two terms, but the Board disagreed. Another factor to consider is the relative location of all the respective elements. Lastly, the meaning and significance of the terms used in the mark in connection with the goods or services identified in the trademark application must also be considered. See Trademark Manual of Examining Procedure §1213.05. See also our webpage entitled, What Is A Unitary Trademark? for more depth on this subject matter.

Connecting the elements of the Mark with a design feature is often a key consideration. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991). Lego’s marks contained a design of a curled monkey’s tail over the letter “I” in KID (suggesting that the monkey’s body is hidden behind the term KID), bolstering the argument that the design features and the literal terms present a unitary impression. The Board also considered the color scheme of the two marks and held that the use of the colors red and yellow brought the literal terms together by conveying a cohesive and unified design.

The Board concluded that consumers when encountering Lego’s Marks would understand the term MONKIE KID referred to a “monkie kid” creature, reinforced by the design features of the two Marks. In this case, the registrable term and the unregistrable term merged together to have a non-descriptive meaning. When trademarks are determined to be unitary no disclaimer is required. It appears that Lego got it right and adopted a Mark that created a distinct commercial impression independent of the descriptive term KID. However, I’m not confident that the Board would have made the same determination if the applicant wasn’t a famous toy company. But the case is a reminder that applicants should strive to incorporate distinctive features and elements when adopting a new Mark. Distinctive trademarks are given a broad scope of protection under the law. And unitary marks will not require a disclaimer of an element whether it is descriptive or generic, thus strengthening the mark. If you have questions concerning a possible disclaimer statement required by the Trademark Office, or other questions relating to trademarks, please feel free to contact the firm for a courtesy consultation.

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