01 Why it is issued
- The mark contains generic wording or a realistic depiction of the goods, such as the word ASPIRIN in PETE'S ASPIRIN for pain relief medication.
- The mark contains wording that merely describes a feature, ingredient, characteristic, purpose, function, intended audience or quality of the goods or services, such as CREAMY in FAB CREAMY for yogurt.
- The mark contains laudatory wording that merely describes an alleged superior quality, a geographic term for where goods come from or services are provided, a business type such as CORPORATION, or informational wording such as net weight or the year the business was established.
- The mark contains a widely used message or a well-known symbol that provides information about the goods or services, such as GO GREEN or a recycling symbol for services that support recycling.
02 What the examiner weighs
- Generic — the common name for, or a depiction of, the goods or services.
- Merely descriptive — describes a feature, ingredient, characteristic, purpose, function, intended audience or quality.
- Laudatory — merely describes an alleged superior quality, such as THE BEST BEER IN AMERICA.
- Geographic — describes where the goods originate or where services are provided, or where buyers are likely to believe they are.
- Business type or informational — designations such as CORPORATION or BROS., and details such as net weight, ingredients, addresses or EST. dates.
- Widely used messages and well-known symbols — ordinary sentiments, religious citations and symbols that provide information about the goods or services.
- Deceptively misdescriptive — wording that describes the goods in a way that is false and believable but would not materially affect a purchase decision.
03 What to do, and what not to
Do this
- Read the Office action closely and disclaim exactly the wording or design it identifies
- Spell the disclaimed wording correctly, even if your mark spells it differently
- Keep the wording in the form box precise and leave out the standard disclaimer sentence, which the form adds
- Use the Response to Office Action form for a non-final action and the Request for Reconsideration after Final Action form for a final one
- Calendar the response date printed on your Office action the day it arrives
Avoid this
- Do not treat a disclaimer as a refusal; it is a statement, not the end of the application
- Do not try to disclaim the entire mark; a mark that is unregistrable as a whole is not rescued by a disclaimer
- Do not expect a disclaimer to cure a different refusal, such as likelihood of confusion
- Do not ignore the requirement; if a required disclaimer is not provided, the USPTO can refuse to register the entire mark
- Do not let the response period lapse while deciding; abandonment is what actually ends applications
04 Your options for responding
SourceTMEP §1213, Disclaimer of Elements in Marks (USPTO)
Of all the requirements an examiner can raise, a disclaimer is one of the more routine. It asks you to agree that nobody can own an ordinary descriptive word on its own, and it leaves the mark as you use it untouched. The cost of getting it wrong is higher than the effort: the USPTO says that if a required disclaimer is not provided, it can refuse to register your entire mark. Read what the letter says to disclaim, answer on the form the USPTO names, and keep an eye on the response date printed on the letter. This is general information, not legal advice about your application.
05 Questions people actually ask
No. A disclaimer requirement is a request for a written statement that you do not claim exclusive rights to part of the mark on its own. The USPTO says that if a required disclaimer is not provided it can refuse the entire mark, so the requirement should be answered, but the requirement itself is not a refusal.
No. The USPTO states that a disclaimer does not physically remove any wording or design from your trademark and does not affect its appearance or the way you use it. What changes is that you do not claim exclusive rights to the disclaimed part when it is used separately from your mark.
The USPTO's preferred format reads: No claim is made to the exclusive right to use "SHIRTS" apart from the mark as shown, with the disclaimed wording in quotation marks. If the examiner limits the disclaimer to a class, the class is added at the end.
Yes. The USPTO says you can provide a disclaimer in the application when you file it or after it is filed. If you offered one in the mistaken belief that one was required, you can usually withdraw it.
No. TMEP §1213.06 states that an entire mark may not be disclaimed and that if a mark is not registrable as a whole, a disclaimer will not make it registrable.
Read the response date printed on your Office action in TSDR. Response periods have changed in recent years and vary by filing basis, so do not assume a period or rely on a date quoted by anyone, including us. Missing it abandons the application and the filing fee goes with it.
This guide is general information, not legal advice, and reading it does not create an attorney-client relationship. Only the response date printed on your own office action is authoritative.