There are many reasons that you might receive an office action once your trademark application has been reviewed. A common reason for which you might receive an office action is that the Trademark Examining Attorney is requiring a disclaimer. Entering a disclaimer is easy and a no-brainer in most cases. However, disclaimers are important and you should understand what you are doing before agreeing to one.
What Is a Trademark Disclaimer?
Basically, a disclaimer is a statement in your trademark application (and eventually registration) that says you are not claiming exclusive rights to use a specific part of your trademark by itself. For example, if you applied to register the name XYZ MOVIE THEATER for movie theater services, the Trademark Office would require a disclaimer of “MOVIE THEATER.” Obviously, you could not stop others from using the generic phrase “movie theater.” This statement just acknowledges that fact, and says that your rights are limited to XYZ MOVIE THEATER taken as a whole.
The statement itself would look like this: “No claim is made to the exclusive right to use MOVIE THEATER apart from the mark as shown.” Not a big deal, right? Once you get your registration, this statement will appear on the registration certificate (as well as on the USPTO website).
What Kinds of Things Must Be Disclaimed?
In general, any part of your mark that is not registrable will have to be disclaimed. Here are some common examples:
- Generic words/phrases
- Merely descriptive words/phrases
- Geographically descriptive words/phrases
- Business entity designations (e.g. COMPANY, CORP., LLC)
Should I Agree to a Disclaimer?
In most cases, when a disclaimer is required by the Trademark Examining Attorney, it makes sense to add it to your application. However, Examining Attorneys can certainly make mistakes. For example, they might say that a disclaimer of descriptive wording is necessary when really that wording is not descriptive. They may also say a term is geographically descriptive when it does not describe a place with which consumers are actually familiar.
While it is not extremely common that you would want to argue against a disclaimer requirement, it could happen to you. Remember, agreeing to a disclaimer is an admission that at least part of your mark is not distinctive and strong. It is taking away from the scope of the protection that you will receive with your registration. You should consult with a trademark attorney before making a big decision like that.
Have You Received an Office Action Requiring a Disclaimer?
If a Trademark Examining Attorney is requiring you to enter a disclaimer, you should be sure that it is necessary. You definitely want to speak with an experienced trademark professional to see what your options are. If you would like for me to review your office action, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
