1213.03    Disclaimer of Unregistrable Components of Marks

1213.03(a)    "Unregistrable Components" in General

Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter. Section 6 of the Act referred initially to "unregistrable matter" and, since the 1962 amendment, now refers to "an unregistrable component."

Typically, an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, matter that is merely descriptive or deceptively misdescriptive of the goods or services, or matter that is primarily geographically descriptive of the goods or services.

Office practice does not require disclaimer of a surname. Ex parte Norquist Prods., Inc., 109 USPQ 399 (Comm’r Pats. 1956) (finding disclaimer of "NORQUIST" unnecessary in application to register mark comprising "NORQUIST CORONET" on an oval background featuring a coronet, for tables and chairs). In that decision, the Commissioner stated as follows:

Section [2(e)(4)] of the statute does not contemplate the dissection of a composite mark to determine whether a word which constitutes an integral part of the mark is primarily merely a surname. Rather, it contemplates an examination of the mark in its entirety and an evaluation of the commercial impression created by the entire mark. A word which is primarily merely a surname may lose that significance when it appears in a distinctive composite.

Id.at 400. Moreover, the voluntary disclaimer of a surname is not an appropriate response to a surname refusal. If the addition of other registrable matter creates a composite mark with an overall impression that is not primarily merely that of a surname, then no refusal is made under §2(e)(4). If the additional matter is minimal or unregistrable, then the mark is primarily merely a surname and refusal under §2(e)(4) of the Act, 15 U.S.C. §1052(e)(4), must be made. See In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (holding LIQUORE MARTINONI (stylized) for liqueur primarily merely a surname, with "liquore" being the Italian word for "liqueur"). See TMEP §§1211.01(b)–1211.01(b)(viii) regarding the combination of a surname with additional matter.

In cases where registration of a mark is barred under the Trademark Act (e.g., under §§2(a), 2(b), 2(c), 2(d), and 2(e)(3)), a disclaimer of an unregistrable component will not render the mark registrable . See, e.g., Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Soc'y, 224 USPQ 798, 808 (TTAB 1984) ("While the disclaimer is appropriate to indicate that respondent claims no proprietary right in the disclaimed words, the disclaimer does not affect the question of whether the disclaimed matter deceives the public, since one cannot avoid the Section 2(a) deceptiveness prohibition by disclaiming deceptive matter apart from the mark as a whole."). See TMEP §1203.02 regarding disclaiming deceptive matter, TMEP §1204.04(a) about disclaiming flags or insignia, TMEP §§1210.05(d)(ii) and 1210.06(a)–(b) regarding disclaimer of geographic terms in composite marks, and TMEP §1213.10 concerning disclaimers with regard to likelihood of confusion.

1213.03(b)    Generic Matter and Matter That Does Not Function as a Mark

If a mark is comprised in part of matter that, as applied to the goods or services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register. If, however, matter that would otherwise be generic or would not function as a mark is part of a unitary mark or part of a separable unitary element of a mark, the examining attorney should not require a disclaimer of the matter. See TMEP §§1213.05–1213.05(g)(iv).

See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). See also In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").

Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, as stated in In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (citing In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977) ), "Section 6 is equally applicable to the Supplemental Register." See Wella, 565 F.2d 143, 196 USPQ 7 (finding mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) ("Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.").

1213.03(c)    Pictorial Representations of Descriptive Matter

An accurate pictorial representation of descriptive matter is equivalent to the written expression and, therefore, must be disclaimed pursuant to the same rules applicable to merely descriptive wording. See Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504, 511-12 (TTAB 1978) (finding thistle design synonymous to the word "thistle," which is used in a descriptive sense to designate a class of sailboats).

A properly worded disclaimer would read as follows:

No claim is made to the exclusive right to use the design of ____ apart from the mark as shown.

No disclaimer of highly stylized pictorial representations of descriptive matter should be required because the design element creates a distinct commercial impression. See In re LRC Prods. Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (holding outline of two gloved hands arbitrary and fanciful), and cases cited therein. Note: A map of the world or a depiction of a globe generally is not considered the pictorial equivalent of the terms "INTERNATIONAL," "GLOBAL," or "WORLDWIDE."

1213.03(d)    Entity Designations

Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) or the familial business structure of an entity (e.g., "& Sons" or "Bros.") must be disclaimed because an entity designation has no source-indicating capacity. See In re Piano Factory Grp., Inc., 85 USPQ2d 1522 (TTAB 2006) (holding VOSE & SONS primarily merely a surname); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (finding "PRESS," as applied to a printing or publishing establishment, "is in the nature of a generic entity designation which is incapable of serving a source-indicating function"); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("’PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company"); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) ("the element ‘INC.’ [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark evaluation, to have no source indication or distinguishing capacity" (citing In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) )). Further, such designations must also be disclaimed in marks seeking registration on the Principal Register under §2(f) or on the Supplemental Register.

However, a disclaimer should not be required when the entity designation is used in an arbitrary manner and thus has trademark significance (e.g., THE LTD. or KIDS INCORPORATED for clothing or CHUCKLE BROS. for a comic strip). See Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as "a known word used in an unexpected or uncommon way"); TMEP §1209.01(a). Likewise, a disclaimer is unnecessary when the entity designation is part of a unitary, registrable whole (e.g., "T-MarkeyInc."). See TMEP §§1213.05–1213.05(h).