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 UST Global (Sing.) Pte. Ltd., 2020 USPQ2d 10435, at *2 (TTAB 2020); In re Nat'l Presto Indus., Inc., 197 USPQ 188 (TTAB 1977).
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.