In United States trademark applications, it is not uncommon for an Examining Attorney to issue a disclaimer requirement for descriptive portions of a mark. Disclaimers have particular significance in three steps of the trademark process: the conducting of a clearance search prior to filing an application, the prosecution stage when an Examining Attorney contends a portion of a mark is descriptive, and long after, when a previously-disclaimed portion of a registered mark may have acquired distinctiveness.
Disclaimers in general
The United States Patent and Trademark Office (USPTO) may require a disclaimer as a condition of registration if a portion of a mark is merely descriptive or generic for at least one of the products or services covered by the application.
Along the continuum of less distinctive marks, there is a fine line between merely descriptive and generic marks. Merely descriptive marks reference a specific characteristic of goods or services and are can become distinctive as opposed to generic marks, which reference a particular category of goods or services. A party can never establish rights in a generic mark. On the other hand, registrants may attain rights in a descriptive mark if it acquires distinctiveness.
While Examining Attorneys can require a disclaimer for either generic or descriptive portions of a mark, only descriptive elements are capable of acquiring distinctiveness. However, the more descriptive the elements are, the more difficult it can be to prove that they have acquired distinctiveness.
A registration subject to a disclaimer indicates that a registrant does not claim an exclusive right to the specified element(s) of the mark by itself. One purpose of a disclaimer is to enable the registration of a mark that is registrable as a whole, but contains matter that would not be registrable by itself. While some countries follow a disclaimer practice similar to the United States, other countries have different disclaimer requirements or do not require disclaimers at all.
The USPTO issues disclaimer requirements to prevent a false impression that the owner of a mark has exclusive rights to a descriptive or generic term. A disclaimer does not physically remove the disclaimed portion from a mark or affect its appearance. Rather, the mark as a whole receives protection on the Principal Register, but the applicant usually cannot enforce rights in the non-distinctive portion by itself without some additional similarity to the mark as a whole. For example, the owner of the registration for PANERA BREAD1 would not be able to bring an infringement suit against a sandwich shop called “Bread” because the registrant disclaimed “BREAD” in its mark. However, the company could possibly enforce its registration against a confusingly similar mark such as “PAN’S ERA BREAD” because the mark has terms similar to “PANERA” in addition to the term “BREAD.”
Trademark clearance and third-party disclaimers
A party seeking to register a proposed mark would usually conduct a trademark clearance search. That search may reveal that the proposed mark or a portion thereof is disclaimed in one or more third-party registration(s). Such disclaimers should not necessarily be a reason to discount the significance of these registrations, unless the disclaimed elements are clearly generic. The non-generic disclaimed portion may have acquired distinctiveness at some point between the first use of the mark and the time of the search, and can therefore preclude an applicant’s mark based on a likelihood of confusion. Several aspects, including the length of time the preceding mark has been used or registered, should be examined in assessing acquired distinctiveness.
Additionally, evidence of co-existence, or the registration of other marks containing an identical disclaimed, non-generic element(s) for similar goods or services, may suggest that the term(s) is not sufficiently distinctive, such that the applicant may need to also disclaim the term or prove acquired distinctiveness.
The relevance of disclaimers in examination
Once a disclaimer is accepted, it is a permanent and public record in the USPTO database. However, the Trademark Act states:
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.2
Thus, at a later date, an applicant can reapply on the Principal Register for a mark, whether comprising entirely or in part, the previously-disclaimed non-generic element(s), if he or she proves the disclaimed portion has acquired distinctiveness. The concession to a disclaimer requirement in the previous registration should not affect the Examining Attorney’s analysis as to whether the portion has acquired secondary meaning. While a disclaimer remains on the record, it is not binding upon Examining Attorneys when evaluating a new application. This is because there are a variety of reasons as to why an applicant may choose to concede to the Examining Attorney’s disclaimer requirement.3 Such reasons include the cost of further trademark prosecution, the need for a quick registration, and the unquestioning acceptance of the suggestions of the Examining Attorney. Similarly, the record of third-party registrations in which registrants conceded disclaimer requirements for merely descriptive elements does not conclusively establish that the given portion must be disclaimed in a new application. The applicant can submit arguments as to why the mark is not merely descriptive in relation to the goods or services it offers.
Even though a portion of a non-generic mark is disclaimed, the party using the mark can still bring an opposition, cancellation, or infringement action against registration or use of marks comprising disclaimed elements based on common law rights. However, the burden of proof in these instances is much higher.
Reapplying for marks with previously-disclaimed elements
Once a portion of a mark is disclaimed, most registrants do not give thought to those elements again. When a previously-disclaimed portion of a mark arguably could have become distinctive, a registrant should consider reapplying. The registration of previously-disclaimed elements provides a registrant with the ability to enforce exclusive rights in those elements by themselves. As discussed above, the previous concession to an Examining Attorney’s disclaimer requirement does not mandate a disclaimer of the same matter in a subsequent application.
Thus, depending on the circumstances, a disclaimer may not be the end of the road for a descriptive element of a trademark. Counsel can advise applicants of the significance of third-party registrations with similar elements. They can also evaluate an applicant’s options in the event an Examining Attorney issues a disclaimer requirement. Additionally, counsel can later review registrations that include previously-disclaimed portions to determine whether those portions may have acquired distinctiveness, which would support a new registration without a disclaimer.
The authors wish to thank Danielle Weitzman for her contributions to the research and editing of this article.
- U.S. Registration No. 2288311
- 15 U.S.C. §1056(b)
- In re Serv-A-Portion Inc., 1 U.S.P.Q.2d 1915 (T.T.A.B. 1986)