1213.05(a) Compound Word Marks
A compound word mark is comprised of two or more distinct words (or words and syllables) that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, and PULSAIR).
If a compound word mark consists of an unregistrable component and a registrable component combined into a single word, no disclaimer of the unregistrable component of the compound word will be required. See In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (finding that "[a] disclaimer of a descriptive portion of a composite mark is unnecessary . . . if the elements are so merged together that they cannot be regarded as separable elements . . . for example, . . . by combining two words or terms, one of which would be unregistrable by itself . . .").
If a composite mark consists of a compound word combined with arbitrary matter, and the compound word is unregistrable, a disclaimer of the compound word may be required. The form of the disclaimer of the compound word – that is, whether the disclaimed portion of the mark appears as one compound word or as two or more distinct words – should be consistent with the evidence of descriptiveness. If the compound word itself (with no spaces) is used descriptively, it should be disclaimed in that form. Otherwise, the disclaimed portion should appear as two or more distinct words, separated by spaces. See TMEP §1213.08(c) regarding disclaimer of misspelled words.
See TMEP §807.12(e) regarding drawings of compound word marks.
1213.05(a)(i) Telescoped Words
A telescoped mark is one that comprises two or more words that share letters (e.g., HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, and POLLENERGY). See TMEP §807.12(e) regarding drawings for telescoped marks.
A telescoped word is considered unitary. Therefore, no disclaimer of an individual portion of a telescoped word is required, regardless of whether the mark is shown in a standard character or special form drawing.
However, if a telescoped word is itself unregistrable, a disclaimer of the telescoped word may be required. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for banking services in the absence of a disclaimer of "FIRST TIER," in view of evidence that the term describes a class of banks). See TMEP §1213.08(c) regarding disclaimers of misspelled words, in general.
1213.05(a)(ii) Compound Words Formed with Hyphen or Other Punctuation
When a compound word is formed by hyphenating two words or terms, one of which would be unregistrable alone, no disclaimer is necessary. "X" Labs., Inc. v. Odorite Sanitation Serv. of Balt., Inc., 106 USPQ 327, 329 (Comm’r Pats. 1955) (holding requirement for a disclaimer of "TIRE" unnecessary in application to register TIRE-X for a tire cleaner).
Word marks consisting of two terms joined by an asterisk (e.g., RIB*TYPE), a slash (e.g., RIB/TYPE) or a raised period (e.g., RIB°TYPE) are analogous to hyphenated words. Therefore, no disclaimer of portions of marks formed by asterisks, slashes, or raised periods is necessary.
If a hyphenated term comprising part of a mark is unregistrable, then a disclaimer of the hyphenated term may be required. See TMEP §1209.03(d) regarding determinations of whether a composite comprising two descriptive terms is itself descriptive. In this situation, the examining attorney must require a disclaimer of the words in the correct spelling.
Example 1: If the mark includes the term SOFT-TOYS for stuffed animals, the applicant must disclaim the two separate words "SOFT TOYS" apart from the mark as shown.
Example 2: If the mark includes the term OVER-COAT for winter coats, the applicant must disclaim the compound word "OVERCOAT," because this is how the term is commonly spelled.