1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress Marks
Where the trade dress as a whole is registrable but contains elements that are not inherently distinctive (i.e., they are either capable of registration upon proof of acquired distinctiveness or incapable of acquiring trademark significance because, for example, they are generic), these elements generally must be disclaimed. See 15 U.S.C. §1056; TMEP §1213 regarding disclaimers. Trade dress marks generally are not considered unitary, as each of the elements normally creates a separate commercial impression. As stated in the Federal Circuit decision In re Slokevage, 441 F.3d 957, 963, 78 USPQ2d 1395, 1400 (Fed. Cir. 2006), "[m]oreover, trade dress, by its nature, contains distinct elements and is characterized as the combination of various elements to create an overall impression." Although each element is combined with others to form one composite mark, each element retains its separate commercial impression.
If the mark consists of inherently distinctive elements combined with elements that are not inherently distinctive but are capable, and the applicant indicates that the capable matter is claimed as part of the mark, a disclaimer is appropriate. 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).").
A disclaimer is not an appropriate means of addressing functional matter in a trade dress mark. See In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983). Instead, an amendment of the drawing to depict the functional elements in broken or dotted lines should be required since functional matter is not part of the mark and is never capable of acquiring trademark significance. See TMEP §1202.02(c)(i).
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) ("Section 6 is equally applicable to the Supplemental Register."); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," found 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.").