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.

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.

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.

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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.

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How to Use TESS for Trademark

A trademark is a unique symbol, phrase or word used to distinguish one brand of goods or services from another. Technically, a trademark is protected as soon as it is used to conduct business, although registering the mark with the United States Patent and Trademark Office provides additional advantages. In any case, a search of the agency’s Trademark Electronic Search System, or TESS, can help to ensure a duplicate mark does not already exist.

Trademark Identification

Trademark identification can be a difficult process, as there are many different sources of trademarks. In addition to the United States Patent and Trademark Office, or PTO, trademarks may be issued by individual state governments as well as governments from foreign jurisdictions. In order to adequately protect your mark, you must ensure that it is correctly identified and that it does not infringe on the mark of another.

How to Trademark an Abandoned Trademark

Trademark rights are acquired when a trademark is used in commerce to identify a business's products or services. These rights will last as long as the trademark is used. When a business ceases using the trademark, the rights associated with the trademark may be considered abandoned. You can acquire the rights to an abandoned trademark by taking steps to investigate the circumstances regarding when the trademark ceased being used and to begin using the trademark in your business. You should register the trademark to acquire additional protection for your right to exclusively use the trademark.

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