If you’re reading this, it is likely that you have received an Office Action from the United States Patent and Trademark Office (“USPTO”) that states a disclaimer is required. So what exactly is a disclaimer?
Simply put, a disclaimer is a statement made in your application that indicates you do not claim exclusive right to use a specified element(s) of your mark. TMEP §§ 1213 et seq. Specifically, you will be required to add to your application the following statement:
No claim is made to the exclusive right to use “[disclaimed term(s)]” apart from the mark as shown.
What does a disclaimer mean? Disclaimers are required for the portion of your mark that is merely descriptive, generic, or geographic or it contains a company designation or a well-known symbol such as the dollar sign ($). The reasoning is that these types of words and/or symbols are needed by other people and businesses to describe their goods and/or services. As a result, you cannot claim exclusive rights to these terms.
The following are examples of marks that were required to disclaim terms within their mark:
STARBUCKS COFFEE – No claim is made to the exclusive right to use “coffee” apart from the mark as shown.
KIA MOTORS – No claim is made to the exclusive right to use “motors” apart from the mark as shown.
BURGER KING – No claim is made to the exclusive right to use “burger” apart from the mark as shown.
It is important that you address this type of Office Action with the USPTO. Your failure to do so properly can result in refusal to register your mark in its entirety. For more information about your Office Action and whether a disclaimer is required, please call us at (843) 654-0078.