Understanding Disclaimers in a Trademark Application

Disclaimers in Trademark

Trademarks serve as essential tools for nonprofits, safeguarding their brands, names, logos, and distinctive identifiers. The primary purpose is to prevent confusion while enabling nonprofits to establish and preserve their brand identity and reputation.

Navigating the trademark application process can be difficult. For example, one term you might encounter in the trademark application process is “disclaimer.” While it may seem like a minor detail, disclaimers can play a significant role in the overall approval and scope of your trademark. Understanding what a disclaimer is and how it applies to your application is essential for a smooth registration process.

What Is a Disclaimer in a Trademark Application?

A disclaimer is a statement included in a trademark application that indicates that the applicant does not claim exclusive rights to a particular part of the trademark. This typically applies to words or phrases that are generic, descriptive, or otherwise commonly used in the industry. By disclaiming a portion of the trademark, the applicant acknowledges that others in the marketplace can use that term freely without infringing on the trademark rights.

For example, consider the hypothetical trademark “Brown Valley Apple Orchards” for a business that sells apples. The term “Apple” is descriptive of the goods being sold. To obtain trademark registration for the entire phrase, the applicant might need to include a disclaimer stating: “No claim is made to the exclusive right to use ‘Apple’ apart from the mark as shown.” This ensures that the applicant is not trying to monopolize a generic term that others in the industry need to use.

Why Are Disclaimers Required?

The primary purpose of a disclaimer in a trademark application is to maintain fairness in the marketplace. Trademark law is designed to protect brand identities and prevent consumer confusion, but it also ensures that generic or descriptive terms remain available for everyone to use. By requiring disclaimers for certain parts of a trademark, the United States Patent and Trademark Office (USPTO) ensures that the trademark system strikes a balance between protecting brand owners and preserving competition.

When Is a Disclaimer in a Trademark Application Necessary?

Disclaimers are typically required in the following situations:

1. Descriptive Terms

Words or phrases that directly describe the goods or services, such as “fresh” for produce or “clean” for cleaning services. If the word is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of the applicant’s identified goods and/or services, it must be disclaimed. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 213.03(a). 

2. Generic Terms

Common names for goods or services, like “apple” for apples or “computer” for computers.

3. Geographical Terms

Place names that describe the origin of the goods or services, such as “California” for wine. Additionally designs of a state must be disclaimed if they are primarily geographically descriptive of the origin of the applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(2), 1056(a); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1309 (TTAB 2006); TMEP §§1210.01(a), 1213, 1213.03(a), (c).

4. Common Phrases

Widely used expressions or slogans that do not have distinctive qualities.

How to Include a Disclaimer in Your Application

If the USPTO determines that a disclaimer is required, they will issue an Office Action outlining their request. As an applicant, you can then respond by amending your application to include the necessary disclaimer. Alternatively, you may argue why a disclaimer is unnecessary, though this can be a more complex process requiring legal expertise.

When submitting a disclaimer, the language must follow specific guidelines. Typically, it should read: “No claim is made to the exclusive right to use [disclaimed term] apart from the mark as shown.”

Does a Disclaimer Affect Trademark Protection?

Including a disclaimer does not weaken your overall trademark protection for the mark as a whole. While you cannot prevent others from using the disclaimed term alone, your trademark rights remain strong for the entire mark in its combined form. This means you can still prevent others from using a confusingly similar mark that incorporates the same or similar elements.

Conclusion

Disclaimers are a critical component of many trademark applications, helping to ensure that the system remains fair and functional for businesses and consumers alike. By understanding when and why disclaimers are necessary, you can navigate the trademark application process more effectively and secure the protection your brand needs. If you have questions about disclaimers or any other aspect of trademark law, consulting with a trademark attorney can provide valuable guidance.

Trademark Protection for Nonprofits

What is a Trademark?

Protecting Your Nonprofit’s Trademarks

Ashley Spear is a nonprofit lawyer with Caritas Law Group P.C., licensed to practice in Arizona. Ashley advises nonprofit and socially responsible businesses on corporate governance, contracts, real property, trademark, and tax-exempt bond financing matters. Ashley also has significant experience advising charter schools and charter networks. To schedule a consultation with Ashley, call 602-456-0071 or email 

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