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 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.