T.M.E.P. § 1213.01
History of Disclaimer Practice

Executive summary:

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1213.01 History of Disclaimer Practice

There was no statutory authority for disclaimer prior to 1946. As various court decisions were rendered, Office practice fluctuated from, first, registering the composite mark without a qualifying statement; later, requiring a statement in the application disclaiming the unregistrable matter in the mark; and, finally, requiring removal of the unregistrable matter from the mark on the drawing. This fluctuation ended with the decision of Estate of P.D. Beckwith v. Comm'r of Pats., 252 U.S. 538, 1920 C.D. 471 (1920), in which the United States Supreme Court held that to require the removal of descriptive matter from a composite mark was erroneous, and commended the practice of a statement of disclaimer. Thus the practice of disclaimer was established officially in the Office, although still without statutory support.

The Trademark Act of 1946 created a statutory basis for the practice of disclaimer in §6, 15 U.S.C. 1056.

1213.01(a) Discretion in Requiring Disclaimer

When first incorporated in the Trademark Act in 1946, §6 stated that the Director shall require unregistrable matter to be disclaimed. Under the impetus of the mandatory word "shall," it became customary to require a disclaimer for every occurrence, in any type of combination, of every term or symbol which by itself might be refused registration in the first instance under the 1946 Act.

In 1962, §6 was amended to state that the Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. The change from "shall" to "may" justifies the exercise of greater discretion by examining attorneys in determining whether a disclaimer is necessary.

Examining attorneys should keep in mind the basic purpose of disclaimers, which is to indicate in the record that a significant element of a composite mark is not being appropriated apart from the composite. The examining attorney should not require that an element of a mark be disclaimed when a disclaimer would be unnecessary, e.g., when the form or degree of integration of an element in the composite makes it obvious that no claim is being made in any element apart from the composite.

1213.01(b) Refusal to Register Because of Failure to Disclaim

Failure to comply with a requirement to disclaim was held to be a basis for refusal to register before the Act of 1946. See In re American Cyanamid & Chemical Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938). Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953); Ex parte Knomark Mfg. Co., Inc., 118 USPQ 182 (PO Ex. Ch. 1958). Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording "may require the applicant to disclaim," registration may be refused if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).

If an applicant fails to comply with the examining attorney's requirement for a disclaimer, the examining attorney should make the requirement final if the application is otherwise in condition for a final action.

1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter

Section 6(a) of the Trademark Act, 15 U.S.C. 1056(a), was amended in 1962 to add the sentence, "An applicant may voluntarily disclaim a component of a mark sought to be registered." Disclaimers volunteered by applicants generally should conform to the guidelines set forth in this Manual. See TMEP §§1213.08 et seq.

In In re MCI Communications Corp., 21 USPQ2d 1534 (Comm'r Pats. 1991), the Commissioner held that §6 of the Act permits an applicant to disclaim matter voluntarily, regardless of whether the matter is registrable or unregistrable. The Commissioner specifically overruled all previous Office authority holding otherwise. (Previous practice prohibited the entry of disclaimers of registrable components of marks.) Therefore, if an applicant offers a disclaimer of any matter in a mark, the Office will accept the disclaimer.

The MCI decision states emphatically that the entry of a voluntary disclaimer does not render registrable a mark that is otherwise unregistrable under relevant sections of the Trademark Act, such as §2(d) and §2(e). The examining attorney must evaluate the entire mark, including any disclaimed matter, to determine registrability. Furthermore, the decision states that the applicant may not disclaim the entire mark. See TMEP §1213.06.

An applicant may volunteer a disclaimer in the mistaken belief that a disclaimer would be required when, in fact, Office policy would not require a disclaimer. If this appears to be the case, the examining attorney should offer the applicant the opportunity to withdraw the disclaimer.