How to Disclaim Part of a Trademark

By Louis Kroeck

Disclaimers are fairly common in the trademark registration process and a proper disclaimer may be necessary to ensure that the United States Patent and Trademark Office, or USPTO, approves your mark. A disclaimer basically limits your trademark claim to certain aspects of your mark while denying any claim to other aspects.

Disclaimers are fairly common in the trademark registration process and a proper disclaimer may be necessary to ensure that the United States Patent and Trademark Office, or USPTO, approves your mark. A disclaimer basically limits your trademark claim to certain aspects of your mark while denying any claim to other aspects.

Why Disclaim Part of a Mark

Disclaiming part of a mark that is descriptive, informational or generic is important because it shows the trademark office that you are not attempting to gain an exclusive license to use a term that cannot be registered under trademark law. Additionally, disclaimers can aid courts in deciding trademark disputes when assessing the rights of two parties whose marks conflict.

Protect your brand. Register My Trademark Now

Material That Cannot be Registered

A disclaimer will be required in a trademark application anytime there is material that cannot be registered associated with the trademark. For example, if you wanted to trademark your business name, "Little Franky's Diner," the "diner" portion of your trademark registration should be disclaimed, as that portion of the mark is descriptive and generic.

Determining What to Disclaim

There are two major ways to determine what material should be disclaimed from a trademark application. An ideal trademark is original, unique and inherently distinctive. You should start by assessing if any part of your mark is generic, informational or merely descriptive. These aspects of a mark will not be granted protection so you should disclaim them. In addition to generic, informational and descriptive elements of your mark, you should perform a background search to make sure that no part of your mark will infringe on another trademark and subsequently disclaim or amend any infringing portions of your mark.

Disclaiming Certain Elements

When completing your trademark application, the second section of the application is titled, Mark Information. In the Mark Information section you will see the text, "No claim is made to the exclusive right to use 'BLANK' apart from the mark as shown." In the blank, you may type in any word you desire to disclaim as part of your trademark application. If you desire to disclaim multiple words or elements of your trademark registration, you may explain further in the Miscellaneous Statement portion of the Mark Information section of the application.

Protect your brand. Register My Trademark Now
How to Use TESS for Trademark

References

Resources

Related articles

How To Trademark Something

A trademark is a mark, symbol or combination of words that distinctively identifies a product or service -- McDonald's Golden Arches, for example. Trademarks have economic value because they represent the business reputation of the products they represent or the company with which they are identified. Registration of your trademark with the U.S. Patent and Trademark Office allows you to obtain nationwide protection, sue in federal courts and qualify for international protection.

Expiration of Trademark Registration & Abandonment

A trademark is a combination of words or symbols that identifies and distinguishes a product or service of an individual or company. Commercial use automatically creates common-law trademark rights that last as long as the mark remains in commercial use. You can also register and maintain a trademark with your state or with the U.S. Patent and Trademark Office. Federal registration and maintenance is more expensive, but it provides a public record of the trademark claim and the ability to sue in federal court to protect your rights. You must periodically renew and monitor your claim to prevent expiration or abandonment.

What Is the Consequence of Not Policing Your Trademark?

Trademark is any design, word or phrase that uniquely identifies your company's goods or services. Trademark rights attach when you are the first to use the mark in commerce, or when you register a mark with your state or federal trademark office. Registration bolsters trademark protection and allows the holder to sue infringers in federal court. Actively policing a trademark is necessary to ensure it is not deemed invalid.

File a Trademark Online. LegalZoom. Learn More.

Related articles

What Is a Trademark's Duration?

A trademark identifies a particular manufacturer of goods, using a particular phrase, design or symbol. Designs, words ...

Are All Trademark Names Legally Protected?

All trademark names generally qualify for trademark protection. Basic trademark protections automatically apply to a ...

How to File a Foreign Trademark

Every country protects trademark rights, although trademark laws differ from jurisdiction to jurisdiction. Although ...

Should You Wait to Trademark a Name Before Rebranding?

Rebranding is expensive and risky. When you change your name or your logo, you change your product labels, advertising ...

Browse by category