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The United States Patent and Trademark Office has strict guidelines regarding trademark registration. Critically, there are certain marks — or portions of marks — that cannot be registered because they are not sufficiently distinct. These are marks containing words or designs that are merely descriptive, generic, laudatory, or informational. However, if your trademark contains a word or symbol that does not qualify for protection, you may be able to disclaim that specific component of the overall mark.
A disclaimer is a statement that can be included in a trademark application to indicate you are not seeking exclusive rights to the element of your mark that is un-registrable. For instance, if your company sells hats, it would be denied a trademark on the word “hat” because it merely sets forth a generic description of the goods. But if the mark also contained the company name before the word “hat,” that portion of the mark could be registered (provided it meets the necessary criteria), while the generic word could be disclaimed.
A disclaimer does not affect the appearance of your mark or the way in which it can be used. Specifically, a trademark disclaimer allows an applicant to secure proprietary rights to the distinct portion of the mark, while leaving the descriptive part of the mark open to public use. In other words, by submitting a disclaimer statement, the applicant indicates that they do not have the exclusive right to use that element of the mark when it stands on its own. Rather, the trademark rights exist only in the composite mark.
A trademark disclaimer is required when the words or designs in a mark must be used by other businesses and individuals to describe their goods or services. These statements prevent companies from suing others for trademark infringement over words or symbols that might be necessary for them to use in marketing their products. A few examples of marks that require a disclaimer might include words such as “coffee,” “pizza,” or “shirt.”
Situations in which parts of a mark are unregistrable and require a disclaimer include the following:
Misspelled versions of words, descriptive or generic foreign words, and compressed compound words that are unregistrable must also be disclaimed. However, if you can show that your trademark is “unitary,” a disclaimer may or may not be required. Unitary words or designs are those that create a commercial impression separate and distinct from any component that would otherwise be unregistrable. Trademark disclaimers can also be avoided if only unique or fanciful words are used in a mark.
A trademark disclaimer can be included with the original trademark application to the USPTO. Importantly, if it is not submitted at the time of filing, a disclaimer can also be provided by an amendment if required by the examining attorney. If an office action is issued requesting a disclaimer, the USPTO may refuse to register your entire mark if you fail to provide one. In the event a disclaimer was submitted by mistake and would not be required by the USPTO, it may be withdrawn.
Pursuant to the USPTO’s requirements, the language that must be used in a disclaimer statement is as follows: “No claim is made to the exclusive right to use ‘______’ apart from the mark as shown.” While a disclaimed word should appear within quotation marks in the statement, no quotation marks are necessary to disclaim a design. Significantly, an entire mark cannot be disclaimed — only the portion that cannot be protected is subject to a disclaimer statement.
Trademark registration can be complex — and it’s best to have the guidance of a skilled trademark attorney who can help ensure your application is filed correctly. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC assists clients with the trademark registration and application process. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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