A disclaimer may be required by the USPTO for certain portions of a proposed trademark that contains unregisterable material, such as descriptive words, generic words, laudatory wording, geographic wording or common symbols. This type of refusal is fairly common and the Examining Attorney will notify the applicant by way of an Office Action refusal.
For example, the trademark “THOMAS LAW FIRM PLLC” includes a disclaimer for “LAW FIRM PLLC.” In this scenario, entity designations such as “PLLC” are not registerable and “LAW FIRM” is descriptive of the services that our company provides, thus we were fine with adding the disclaimer. Our company still has the exclusive rights to use this combination of words, even with the disclaimer.
Disclaiming a portion of your trademark doesn’t mean that the word has been removed from the mark; it simply means that you cannot prevent others from using the disclaimed portion of the mark.
If a disclaimer request is received the appropriate response depends on the facts of the case. If the disclaimer request is valid and the wording is indeed unregisterable material, then submitting a response to the office action and amending the trademark application to include the disclaimer will often times allow the application to get back on the registration track.
For various reasons however, the applicant may not want to add a disclaimer and in this scenario the appropriate Office Action response would be to submit argument and/or evidence explaining why the disclaimer should not apply. USPTO Examining Attorneys are Attorneys, and not necessarily knowledgable on the goods and services that apply to the applications they examine. Mistakes can happen, and if so the best response is to explain why you are correct (in the most persuasive way possible).
If you have received a trademark office action requiring a disclaimer please contact us for a free phone consultation.