As stated in section 1213 Disclaimer of Elements in Marks of the Trademark Manual of Examination Procedure:

A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. A disclaimer may be included in an application as filed or may be added by amendment, e.g., to comply with a requirement by the examining attorney.

The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant's right with respect to certain elements in the mark. As stated in Horlick's Malted Milk Co. v. Borden Co., 295 F. 232, 234, 1924 C.D. 197, 199 (D.C. Cir. 1924):

[T]he fact that a mark contains descriptive words is not enough to warrant a refusal to register it. Unless it consists only of such words, it may not be refused a place on the registry of the Patent Office.

The significance of a disclaimer is conveyed in the following statement:

As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.

Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm'r Pats. 1954).

A disclaimer may be limited to pertain to only certain classes, or to only certain goods or services.

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  • Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1), and, therefore, are subject to disclaimer if the mark is otherwise registrable.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1), and, therefore, are subject to disclaimer if the mark is otherwise registrable.
  • An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. Trademark Act Section 6(a).
  • Failure to comply with a disclaimer requirement is grounds for refusal of registration.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
    • In re Grass GmbH, Serial No. 76544861, (TTAB 2006).
      • The Office may refuse registration of the entire mark if applicant fails to comply with a proper disclaimer requirement. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
  • In a trademark application or registration, a disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • In a trademark application or registration, a disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark. TMEP §1213 (3d ed. rev. May 2003).
  • The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant's right with respect to certain elements in the mark.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant's right with respect to certain elements in the mark.
  • Disclaimers of individual components of complete descriptive phrases are improper, and unitary expressions should be disclaimed as a composite.
    • In re Grass GmbH, Serial No. 76544861, (TTAB 2006).
      • It has been held that "[d]isclaimers of individual components of complete descriptive phrases are improper," and that "[u]nitary expressions should be disclaimed as a composite." In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm'r Pats. 1987)(GLASS TECHNOLOGY is a unitary descriptive phrase as applied to automobile windshield repair kits and must be disclaimed as a composite, not as separate words). See also In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992)(MEDICAL DISPOSABLES is a unitary descriptive expression which must be disclaimed as a composite); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984)(CERTIFIED HEARING AID AUDIOLOGIST "clearly is a unitary expression that should be disclaimed in its entirety"); and In re Surelock Mfg. Co., Inc., 125 USPQ 23 (TTAB 1960)(THE RED CUP for red-colored hydraulic wheel cylinder brake cups must be disclaimed as a composite).
  • Unregistrable matter must be disclaimed in its entirety and disclaimer of individual words separately will usually be appropriate only when the words being disclaimed are separated by registrable wording.
    • In re Grass GmbH, Serial No. 76544861, (TTAB 2006).
      • The Trademark Manual of Examining Procedure, citing three of the four cases cited above, states as follows: "Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms that form a grammatically or otherwise unitary expression (e.g. "SHOE FACTORY, INC."), the examining attorney must require that they be disclaimed in their entirety. This standard should be construed strictly; therefore, disclaimer of individual words separately will usually be appropriate only when the words being disclaimed are separated by registrable wording." TMEP §1213.08(b)(4th ed. 2005).
  • The presumption of validity of a registered mark, including the presumption that the mark is distinctive, does not extend to individual components of the registered mark, let alone disclaimed components of the mark.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • The presumption of validity of a registered mark, including the presumption that the mark is distinctive, does not extend to individual components of the registered mark, let alone disclaimed components of the mark. In re Bose Corp., 772 F.2d 866, 1 USPQ2d 1, 7 (Fed. Cir. 1985) [citing In re National Data, 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) as follows: "The registration affords prima facie rights in the mark as a whole, not in any component." (emphasis in original)].
  • A prior registration containing disclaimed matter is not evidence for determining if the disclaimed matter has acquired distinctiveness as a mark.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • Because "Candy Bouquet" was disclaimed in applicant's prior registration, that registration is not evidence that the USPTO considered this term to be distinctive. Simply put, the prior registration is of no consequence in determining whether CANDY BOUQUET has acquired distinctiveness as a mark.
  • The disclaimer requirement should be considered prior to addressing the likelihood of confusion issue.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • In view of its bearing on the likelihood of confusion issue, we first consider the disclaimer requirement.
  • When an applicant amends an application to seek registration under Section 2(f), it implicitly admits that the mark lacks inherent distinctiveness; however, making the amendment does not admit that the mark is generic.
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • Applicant's entire mark, UNIFORM CPA EXAMINATION, initially was refused as descriptive and possibly generic. When applicant amended the application to seek registration under Section 2(f), it implicitly admitted that the composite lacks inherent distinctiveness. See In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990). However, by making the amendment, applicant is not viewed as having admitted that the composite is generic.
  • The argument that applicant is not required to disclaim any portion of a mark to be registered under Section 2(f) has merit only in cases where a disclaimer requirement is based on the asserted descriptiveness of a term. Section 2(f) does not aid applicant when the examiner's assertion is that the term to be disclaimed is generic.
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • Applicant has argued that, because it seeks registration under Section 2(f), it cannot be required to disclaim any portion of its mark. The argument has merit only in cases where a disclaimer requirement is based on the asserted descriptiveness of a term. Section 2(f) does not aid applicant when the examining attorney's assertion is that the term to be disclaimed is generic. Cf. In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994), wherein the applicant argued that, once the Office accepted an amendment to proceed under Section 2(f), the showing of secondary meaning covered all the words in applicant's mark, as well as the stylized display thereof. The Board disagreed and affirmed the examining attorney's requirement for a disclaimer; and the Court affirmed. Id. See also, In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766, 767-68 (TTAB 1986), which includes a lengthy discussion of this issue.
  • An applicant may voluntarily disclaim registrable matter.
    • In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008)
      • In re MCI Communications Corp., 21 USPQ2d 1534, 1538 (Comm'r Pat. 1991) (An "applicant may voluntarily disclaim registrable matter").
  • Failure to comply with a disclaimer requirement is grounds for refusal of registration.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
  • The disclaimer of the words "urban housing," spelled correctly, is the appropriate form of the disclaimer, since applicant is not claiming exclusive rights to use those words; he is claiming exclusive rights to use URBANHOUZING.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Further, the disclaimer of the words "urban housing," spelled correctly, is the appropriate form of the disclaimer, since applicant is not claiming exclusive rights to use those words; he is claiming exclusive rights to use URBANHOUZING with the letter "Z." Accordingly, if applicant's mark were to be found inherently distinctive, the disclaimer submitted by applicant of the words "urban housing" is acceptable, and the examining attorney's refusal to accept this disclaimer is reversed.
In re RSI Systems, LLC, Serial No. 78848532 (TTAB 2008) In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008) In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006) In re Grass GmbH, Serial No. 76544861, (TTAB 2006) In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004) In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002) Grand Total
In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994) 1
In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992) 1
In re MCI Communications Corp., 21 USPQ2d 1534 (Comm'r Pat. 1991) 1
In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) 1
In re Omaha National Corp. 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) 3
In re Wanstrath, 7 USPQ2d 1412 (Comm'r Pats. 1987) 1
In re Creative Goldsmiths of Washington Inc., 229 USPQ 766 (TTAB 1986) 1
In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) 1
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) 1
American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) 1
In re National Presto Industries Inc., 197 USPQ 188 (TTAB 1977) 3
In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975) 3
In re Pendleton Tool Industries Inc., 157 USPQ 114 (TTAB 1968) 3
In re Surelock Mfg. Co. Inc., 125 USPQ 23 (TTAB 1960) 1
Grand Total 1 4 4 8 2 3 22
15 U.S.C. §1056. Disclaimers.