If there is a component of your trademark that is not capable of registration, the applicant may be asked to disclaim an element of the mark. Typically this issue arises in an Office Action issued by an Examining Attorney upon his review of the trademark application. An applicant may also voluntarily submit a disclaimer upon filing the trademark application. If a portion of the trademark is generic, a descriptive name of the goods or services, or matter that has been deemed incapable of functioning as a trademark, it will have to be disclaimed. A disclaimer may be limited to certain classes, specific goods, or particular services.
The disclaimer statement indicates that the applicant does not have the exclusive right to use that specific element of the trademark when standing alone. The exclusive trademark rights exist in the composite mark. A composite mark is one where there are separable elements. It may consist solely of words if there are separable word elements or comprise only design elements if those can be perceived as separate elements. Lastly, a composite mark can consist of a word or multiple words combined with a design or various designs.
The statutory basis for disclaimer practice is found in the Trademark Act of 1946 (§6, 15 U.S.C. §1056). The disclaimer statement will be printed on the Certificate of Registration. It is not required to appear on the packaging, labels, or tags or in promotional or advertising material. Consumers will not encounter disclaimer statements in the marketplace.
Failure to comply with an Examining Attorney's requirement for a disclaimer statement is grounds for the Examiner to refuse the trademark application. It should be noted that an applicant is not entitled to disclaim the entire mark. It is within the discretion of the Examining Attorney to require a disclaimer of a particular element. A disclaimer doesn't need to provide an analysis identifying every product or service of the applicant that is described. The Examiner only needs to identify one product or service identified in the application for which the trademark is descriptive.
Our clients often inquire about whether there is a way to overcome the need to include a disclaimer statement in the trademark registration. The answer to this question is possibly; if you can successfully argue that the mark is part of a unitary mark or part of a separable unitary element of a mark. A trademark or a portion of a mark will be considered unitary if it creates a commercial impression separate and apart from any unregistrable component. For more details on unitary trademarks, see our webpage entitled, What Is A Unitary Trademark? Essentially, if a consumer would view the elements of the mark as being so tightly merged together that the elements cannot be divided then the mark is unitary. Some practical matters considered by an Examiner include: (1) is the mark physically connected by lines or design features; (2) the respective location of the elements and (3) the meaning of the terminology used in connection with the goods and services.
An example of a unitary mark is the term "BLACK MAGIC". The term black is meant to have a color meaning, but when used with goods, even if the goods are black should not be disclaimed. The reasoning is that the mark as a whole has a new meaning when the two terms "black" and "magic" are used together. This is an example of combining a descriptive word with a non-descriptive word and the result is that the descriptive meaning is lost because the mark acts as a unit.
A pictorial element of a trademark may have to be disclaimed, if it represents descriptive material. If this were the case, then it would be considered the equivalent of the written word. However, if the pictorial representation is highly stylized it may not necessitate a disclaimer if the design element creates a distinct commercial impression. Determining whether a disclaimer statement is required for trademark registration is an important decision and applicants should seek trademark counsel for guidance. If you need assistance with a trademark matter, please contact our office for a courtesy consultation.