If it’s your first time (or fourth time!) filing a trademark application, you might be contacted by a trademark Examiner who requires that a disclaimer be added to your application. Sometimes, this can even take the form of an official Office Action, meaning that the application is in danger of being rejected if such a disclaimer is not provided. But what exactly is a disclaimer, and what does it mean to include one?
To begin, it’s important to realize that some aspects of your trademark application, like a particular word, might be so common of a term or a descriptor that it would be impossible to trademark. For example, let’s say that you’re filing an application for the legal use of the company name Jim’s Bicycle Bonanza. The term “Bicycle”, in this regard, is a common one. Many of your competitors and peers would likewise have company names that utilize the term “Bicycle”, like Suzy’s Bicycle Stop-and-Shop and Alpine Bicycles and Boards. Because of the ubiquity of this term, you need to provide a disclaimer to your application noting that you are not attempting to trademark the use of the term “Bicycle” itself. In other words, it’s you noting that other parties have the free and legal use to the term “Bicycle” in their own, original iterations.
Now, it is possible to argue a particular term’s unregisterability with the trademark Examiner, if you have good reason to do so. But for the most part, failing to provide a disclaimer for “common use” terms will result in your application being rejected.
What other terms might be cause for a disclaimer?
- Descriptive words, like “Fantastic” or “Blue”
- Informational words, like the year of a company’s founding or notices like “Since ____” (i.e. “Since 1950”)
- Geographical words, like “Coastal” or “Southern”
- Generic words, like “Bicycle” or “Pillow” or “Vegetable”
Of course, none of this means that you can’t trademark Jim’s Bicycle Bonanza. It merely means that you are not applying for the legal ownership of term “Bicycle” in and of itself. As such, a disclaimer would look something like:
Apart from the respective mark, no claim is being made to the exclusive use of the term BICYCLE.
Is it possible for an entire trademark to be disclaimed? No, because that would defeat the purpose of filing a trademark application in the first place; if this were the case, the trademark would merely be rejected for being too generic or descriptive. Rather, the disclaimer is merely noting that certain parts of its composition (like the use of the term “Bicycle”) are not trademarked.
In conclusion, disclaimers are common, straightforward, and often necessary for a trademark application to be accepted. And if you have any questions about what might need a disclaimer, ask a representative from Trademark Angel, Inc.! Our team of experts is happy to help with any step of the trademark application process.
The Trademark Angel Team