Why would I need to “disclaim” part of the trademark?

In many cases, a trademark consists of a group of words, with some of them only being descriptive or non-source identifying. While it may still be appropriate to register the entire mark, the Trademark Office may question the attempt to claim certain individual terms that are deemed merely descriptive. As a result, some applicants choose to disclaim those words when the application is submitted while continuing to seek registration for the overall mark. Alternatively, the Trademark Office may request an applicant disclaim part of the mark after the filing.

A disclaimer does not remove the unregistrable part of the mark or alter its appearance. Instead, it is recorded in the Trademark Office database to indicate that the company does not make an exclusive claim to that specific part of the mark. Failure to disclaim a required portion may lead to rejection of the application. Often, the Trademark Office may issue an Office Action requesting the disclaimer of unregistrable parts, which can cause delays in the application process. In such cases, the applicant generally has two options: agree with the Trademark Office’s request or choose to contest the request for a disclaimer. As the response may have significant legal implications regarding the mark’s protection, it is advisable to consult with an attorney after receiving an Office Action that includes a request for a disclaimer.

The Trademark Office has provided examples illustrating situations where a disclaimer is typically required:

Generic words: Disclaiming “Fruit” in the mark “Larry’s Fruit Stand” for produce goods.

Merely descriptive words: Disclaiming “Smart” in the mark “Smart Doozy” for educational services.

Geographic terms: Disclaiming “Southwest” in the mark “Famous Mark Southwest Guacamole.”

Informational words: Disclaiming designations such as product size or year of founding, usually applicable when registering logos.

Well-known symbols: Disclaiming the “$” symbol in a mark for a financial services company.

Misspellings or telescoped words: Disclaiming “Super” and “Rinse” in the mark “Superinse Cleaner.” Another example is disclaiming “quick” in “Jay’s Quik Print.”

Compressed compound wording: Disclaiming “Cool Pack.com” in the brand “CoolPack.com” because “CoolPack” is a compressed compound term, and “.com” does not indicate the source of goods or services.

Foreign wording: If the translation of a foreign word is generic or descriptive, it should be disclaimed. For instance, disclaiming “Rouge” in the mark “Gala Rouge” for wine because “Rouge” simply means “red,” which is descriptive of red wine.

Multiple words disclaimer: Some words naturally go together, so the Trademark Office requires them to be disclaimed together instead of separately. An example is disclaiming “Pizza Parlor” in the mark “Pete’s Pizza Parlor.”