1213.08 Form of Disclaimers

1213.08(a) Wording of Disclaimer

1213.08(a)(i) Standardized Printing Format for Disclaimer

Since November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted. Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date. Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983. The disclaimed matter is taken from the disclaimer of record and inserted into the standardized disclaimer format for printing and Trademark database purposes. The standardized disclaimer text is as follows:

No claim is made to the exclusive right to use "____________" apart from the mark as shown.

See 1022 OG 44 (Sept. 28, 1982). See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm’r Pats. 1983) ("[T]he use of the standardized form is solely for the purpose of printing and data base purposes, not for the limitation of registrant’s rights.").

For the record only, examining attorneys will accept disclaimers with additional statements pertaining to reservation of common-law rights, although §6 of the Trademark Act of 1946 states that no disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter. Disclaimers with these additional statements can be entered by examiner’s amendment. The examining attorney must inform the applicant or attorney who authorizes the amendment that the disclaimer will be printed in the standardized format.

Where non-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:

No claim is made to the exclusive right to use "________" and "________" apart from the mark as shown.

While the "and" connector is preferred, the USPTO will also accept a statement that "no claim is made to the exclusive right to use "________" or "________" apart from the mark as shown."

See TMEP §1213.08(b) regarding the disclaimer of unregistrable matter in its entirety.

1213.08(a)(ii) Unacceptable Wording for Disclaimer

Wording that claims matter, rather than disclaims it, is not acceptable. A disclaimer should be no more than a statement that identifies matter to which the applicant may not have exclusive rights apart from what is shown on the drawing.

Therefore, statements that the applicant "claims" certain matter in the association shown are not acceptable. The examining attorney must require correction of this wording and of variations that amount to the same thing. Likewise, a statement that the mark is "not claimed except in the association shown," or similar wording, is not acceptable, and the examining attorney must require correction. See Textron Inc. v. Pilling Chain Co., 175 USPQ 621, 621-22 (TTAB 1972), concerning an application which included the statement, "The mark is not to be claimed except in the setting presented." The Board found this wording unacceptable, noting, "The alleged disclaimer filed by applicant is in such vague terms that it actually disclaims nothing."

1213.08(a)(iii) Unacceptable Statements in Disclaimers

A statement that purports to limit a mark by excluding color(s) or other features that do not appear in the mark is not appropriate for inclusion in a disclaimer. The issue most often arises where there are possible infringement issues involving a particular color, the applicant’s mark does not claim any color, but the applicant attempts to "disclaim" the color from the application with a statement such as: "No claim is made to the exclusive right to use the color purple within or as part of the (design element) apart from the mark as shown."

Although applicants may include such restrictive statements in the application record, they are not appropriate for the registration certificate. Accordingly, if an applicant inserts any such limiting statement in a disclaimer, the examining attorney must ensure that it is deleted from the Trademark database so that it will not be printed on the registration certificate.

1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety

Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms that form a grammatically or otherwise unitary expression (e.g., "SHOE FACTORY, INC."), the examining attorney must require that they be disclaimed in their entirety. See, e.g., In re Med. Disposables Co., 25 USPQ2d 1801 (TTAB 1992) (finding MEDICAL DISPOSABLES to be a unitary expression that must be disclaimed as a composite); Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Soc'y, 224 USPQ 798, 805 n.3 (TTAB 1984) (finding "CERTIFIED HEARING AID AUDIOLOGIST" to be "a unitary expression that should be disclaimed in its entirety"); In re Surelock Mfg. Co., 125 USPQ 23, 24 (TTAB 1960) (holding proposed disclaimer of "THE" and "RED" and "CUP" unacceptable to comply with requirement for disclaimer of "THE RED CUP," the Board concluding, "A disclaimer of the individual components of the term ‘THE RED CUP,’ under the circumstances, is meaningless and improper"); In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats. 1987) (denying petitioner’s request to substitute separate disclaimers of "GLASS" and "TECHNOLOGY" for the disclaimer of "GLASS TECHNOLOGY" in its registration of GT GLASS TECHNOLOGY in stylized form, the Commissioner finding "GLASS TECHNOLOGY" to be a unitary expression and noting, "Disclaimers of individual components of complete descriptive phrases are improper.").

However, separate disclaimers of adjacent components of a mark may be accepted where they do not form a grammatically or otherwise unitary expression, and each component retains its separate descriptive significance. In re Grass GmbH, 79 USPQ2d 1600 (TTAB 2006) (reversing requirement for unitary disclaimer of "SNAP ON 3000," and accepting separate disclaimers of "SNAP ON" and "3000.")

1213.08(c) Disclaimer of Misspelled Words

Marks often comprise words that may be characterized as "misspelled." For example, marks may comprise terms that are "telescoped" (see TMEP §1213.05(a)(i)) or terms that are phonetic equivalents of particular words but spelled in a manner that varies from the ordinary spelling of such words.

If a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the examining attorney must require disclaimer of the word or words in the correct spelling. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re Newport Fastener Co. , 5 USPQ2d 1064, 1067 n.4 (TTAB 1987) . However, the entry of a disclaimer does not render registrable a mark that is otherwise unregistrable. For example, if a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).

If the examining attorney has not required any disclaimer of misspelled wording because a disclaimer is not necessary under USPTO policy, the applicant may provide a disclaimer of the wording as spelled in the mark or in its correct spelling voluntarily. In such a 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 it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or email. 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 email message (applicant should be given at least three business days), the examining attorney must enter an appropriate Note to the File in the record. Again, the disclaimer does not render an otherwise unregistrable mark registrable. The examining attorney must consider the entire mark, including the disclaimed matter, to determine whether the entire mark is registrable.

1213.08(d) Disclaimer of Non-English Words

Non-English wording that comprises an unregistrable component of a mark is subject to disclaimer. See Bausch & Lomb Optical Co. v. Overseas Finance & Trading Co. , 112 USPQ 6, 8 (Comm’r Pats. 1956) (noting that "Kogaku," the transliteration of the Japanese word for "optical," was properly disclaimed).

If translated non-English wording must be disclaimed, the actual non-English wording must be disclaimed, not the English translation. The applicant must disclaim the wording that actually appears in the mark, not the translated version. For non-Latin characters, the following format is suggested:

No claim is made to the exclusive right to use the non-Latin characters that transliterate to "[specify Latin character transliteration]" apart from the mark as shown.

See TMEP §§809–809.03 regarding translation and transliteration of non-English wording in marks.