1213.01 History of Disclaimer Practice
There was no statutory authority for disclaimer prior to 1946. As various court decisions were rendered, USPTO practice fluctuated from, first, registering the composite mark without a qualifying statement; later, requiring a statement in the application disclaiming the unregistrable matter in the mark; and, finally, requiring removal of the unregistrable matter from the mark on the drawing. This fluctuation ended with the decision of Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920), in which the United States Supreme Court held that to require the removal of descriptive matter from a composite mark was erroneous, and commended the practice of a statement of disclaimer. Thus, the practice of disclaimer was established officially in the USPTO, although still without statutory support.
The Trademark Act of 1946 created a statutory basis for the practice of disclaimer in §6, 15 U.S.C. §1056.
1213.01(a) Discretion in Requiring Disclaimer
When first incorporated in the Trademark Act in 1946, §6 stated that the Director shall require unregistrable matter to be disclaimed. Under the impetus of the mandatory word "shall," it became customary to require a disclaimer for every occurrence, in any type of combination, of every term or symbol which by itself might be refused registration in the first instance under the 1946 Act.
In 1962, §6 was amended to state that the Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. The change from "shall" to "may" justifies the exercise of greater discretion by examining attorneys in determining whether a disclaimer is necessary.
Examining attorneys should keep in mind the basic purpose of disclaimers, which is to indicate in the record that a significant element of a composite mark is not being appropriated apart from the composite. The examining attorney must not require that an element of a mark be disclaimed when a disclaimer would be unnecessary, e.g., when the form or degree of integration of an element in the composite makes it obvious that no claim is being made in any element apart from the composite.
1213.01(b) Refusal to Register Because of Failure to Disclaim
Failure to comply with a requirement to disclaim was held to be a basis for refusal to register before the Act of 1946. See In re Am. Cyanamid & Chem. Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938). Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953). Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording "may require the applicant to disclaim," registration may be refused if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc. , 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005) ; In re Omaha Nat’l 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 Nat'l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Indus., Inc., 157 USPQ 114 (TTAB 1968).
If an applicant fails to comply with the examining attorney’s requirement for a disclaimer, the examining attorney must make the requirement final if the application is otherwise in condition for a final action.
1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), was amended in 1962 to add the sentence, "An applicant may voluntarily disclaim a component of a mark sought to be registered." Disclaimers volunteered by applicants generally should conform to the guidelines set forth in this Manual. See TMEP §§1213.08–1213.08(d).
In In re MCI Commc’ns Corp., 21 USPQ2d 1534 (Comm’r Pats. 1991), the Commissioner held that §6(a) of the Act permits an applicant to disclaim matter voluntarily, regardless of whether the matter is registrable or unregistrable. The Commissioner specifically overruled all previous USPTO authority holding otherwise. Id. at 1539. (Previous practice prohibited the entry of disclaimers of registrable components of marks.) Therefore, if an applicant offers a disclaimer of any matter in a mark, the USPTO will accept the disclaimer.
The MCI decision states emphatically that the entry of a voluntary disclaimer does not render registrable a mark that is otherwise unregistrable under relevant sections of the Trademark Act, such as §2(d) or §2(e). Id. at 1538. The examining attorney must evaluate the entire mark, including any disclaimed matter, to determine registrability. Id. See In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) (finding voluntary disclaimer of "RSI" has no legal effect on the issue of likelihood of confusion because it is not a weak term). Furthermore, the MCI decision states that the applicant may not disclaim the entire mark. MCI, 21 USPQ2d at 1538. See TMEP §1213.06.
An applicant may volunteer a disclaimer in the mistaken belief that a disclaimer would be required when, in fact, USPTO policy would not require a disclaimer. If this appears to be the case, the examining attorney must offer the applicant the opportunity to withdraw the disclaimer.
If it is necessary to communicate with the applicant about another matter, the examining attorney must state in the Office action that the disclaimer appears to be unnecessary, and inquire as to whether the applicant wants to withdraw the disclaimer. If the applicant does not respond to the inquiry regarding the unnecessary disclaimer, and the application is otherwise in condition for final action or approval for publication for opposition or registration, the examining attorney must enter a Note to the File regarding the disclaimer and issue the final action or approve the application for publication for opposition or registration, as appropriate, without deleting the disclaimer.
In applications under §1 or §44, if it is otherwise unnecessary to issue a first Office action, the inquiry may be made by telephone or e-mail. If the applicant wants to delete the disclaimer, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or e-mail message (applicant should be given at least a week), the examining attorney must enter an appropriate Note to the File and approve the application for publication for opposition or registration without deleting the disclaimer.
In applications under §66(a), if it is otherwise unnecessary to issue a first Office action, the examining attorney should issue a "no-call" Examiner’s Amendment informing the applicant that the disclaimer appears to be unnecessary and inquiring as to whether the applicant wants to withdraw the disclaimer. (This is meant only to provide information to the applicant and does not "amend" the application. An examiner’s amendment may not be issued as a first Office action because the IB will not accept such amendments.) The examining attorney should then approve the application for publication for opposition without deleting the disclaimer. It is not necessary to wait for the applicant to respond.
1213.01(d) Disclaimer Offered in the Alternative
An applicant may argue the merits of an examining attorney’s requirement for a disclaimer and, in the alternative, consent to entry of the disclaimer. In such circumstances, submission of the disclaimer does not constitute a concession that the matter sought to be registered is not inherently distinctive or registrable. See In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012). Thus, when an applicant submits a disclaimer in the alternative, while maintaining that the wording at issue is not descriptive, the disclaimer requirement is not moot. If the examining attorney finds the disclaimer acceptable, the applicant must be given the option of entering the disclaimer in the record or going forward with appeal of the underlying issue of whether the wording subject to the requirement is merely descriptive. This should be done by telephone or e-mail, with a Note to the File in the record indicating the applicant’s decision, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or e-mail, the examining attorney must maintain the requirement, or issue a final Office action requiring the disclaimer, as appropriate. Id. If the applicant elects to enter the disclaimer in the record and not appeal the requirement, then the disclaimer constitutes a concession that the matter is not inherently distinctive or registrable.
See TMEP §1212.02(c) regarding a claim, in the alternative, that matter sought to be registered has acquired distinctiveness under §2(f).