Disclaimers seem simple on the surface, but there are important issues to consider when determining whether or not to disclaim certain terms in a proposed trademark. See our webpage entitled, Trademark Disclaimers for the fundamentals on what a disclaimer is and why it might be required under trademark law for registration purposes. Examining Attorneys have discretion as to whether they require a disclaimer or not. The purpose of a disclaimer is to document that the Applicant does not have exclusive rights to a certain element of the composite mark apart from the composite. The disclaimer is recorded in the trademark prosecution history, and included on the certificate of registration, but the owner of the mark does not have to include a disclaimer on a label, in the packaging or in the advertising of the goods or services. A consumer will not be aware of a disclaimer.
Applicants should consult trademark counsel when evaluating the issue of whether a disclaimer should be included for the record of a trademark prosecution. At times, it may be in the best interests of the Applicant to argue against a disclaimer requirement suggested by the Examiner, and in the alternative consent to entry of a disclaimer if the proposed argument is not found persuasive. This type of alternative arguing is common practice at the United States Patent & Trademark Office (“USPTO”), and would not be viewed as a concession that the term is not inherently distinctive. Section 1213.01(d) of the Trademark Manual of Examining Procedures states that under this scenario, if the Examining Attorney determines the response of the Applicant is not persuasive, the Applicant must be given the option of asserting the disclaimer or appealing the underlying issue of whether the subject term is merely descriptive. However, if the Applicant opts to enter the disclaimer into the record, then it will be viewed as an admission that the term is not inherently distinctive.
Another issue to consider is how a disclaimer will impact a likelihood of confusion analysis. The disclaimed matter will be included in the analysis for purposes of likelihood of confusion. The mark must be regarded as a whole because consumers are not going to know that a part of the mark has been disclaimed. Consumers will view the mark in its entirety, and therefore when evaluating marks for likelihood of confusion, the disclaimed matter is considered as part of the entire trademark. See In re McI Communications Corp., 21 U.S.P.Q.2d 1534, 1991 WL 332552 (Comm’r Pat. & Trademarks 1991).
The more important question may be if the disclaimed portion of the mark will be given the same consideration as other elements of the mark. This will vary case by case based on the respective marks. Typically, the disclaimed matter will be given less consideration, as it will not be regarded as the dominant portion of the mark. But, if an Applicant voluntarily disclaimed a portion of a mark that was dominant, this will be evaluated in a likelihood of confusion analysis. Under this set of circumstances, the disclaimed matter may be considered the dominant element of the mark.
Often, the difficult question to answer is, is the term suggestive or descriptive. If the matter is suggestive, it will not require a disclaimer. However, if an element of the mark is descriptive, a disclaimer will be mandated or the mark will be refused registration on the Principal Register. See a recent case of this year, In re Armadahealth, LLC, Serial Nos. 86713902; 86802355 (June 28, 2017) [not precedential], where the Examiner required a disclaimer for the phrase TOPDOC for physician referral and medical services. The Board reversed the refusal to register, finding the Applicant’s evidence persuasive on the issue that the subject term was suggestive and not descriptive.
Applicant presented hundreds of registered marks using the term “TOP” along with a generic or descriptive term without a disclaimer. This evidence showed that the term “TOP” when combined with a noun that is descriptive or generic of the goods or services, has been treated as suggestive. The Board commented that there often is a thin line of demarcation between descriptive and suggestive marks. Any doubt should be resolved in favor of the applicant. In the end, all but five registrations using TOP formative marks were treated as suggestive, and the Board found this evidence persuasive. Determinations of whether a mark is suggestive or descriptive, require years of trademark experience. If you have questions concerning disclaimers, please contact our office for a courtesy consultation.