T.M.E.P. § 1213.03
Disclaimer of Unregistrable Components of Marks

Executive summary:

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1213.03 Disclaimer of Unregistrable Components of Marks

1213.03(a) "Unregistrable Components" in General

Estate of P.D. Beckwith v. Comm'r of Pats., 252 U.S. 538, 1920 C.D. 471 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter. Section 6 of the Act referred initially to "unregistrable matter" and, since the 1962 amendment, now refers to "an unregistrable component."

Typically an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, or matter that is merely descriptive or deceptively misdescriptive of the goods or services, or primarily geographically descriptive of them.

Office practice does not require disclaimer of a surname. Ex parte Norquist Products, Inc., 109 USPQ 399 (Comm'r Pats. 1956) (disclaimer of "NORQUIST" found unnecessary in application to register mark comprising "NORQUIST CORONET" on an oval background featuring a coronet, for tables and chairs). In that decision, the Commissioner stated as follows:

Section [2(e)(4)] of the statute does not contemplate the dissection of a composite mark to determine whether a word which constitutes an integral part of the mark is primarily merely a surname. Rather, it contemplates an examination of the mark in its entirety and an evaluation of the commercial impression created by the entire mark. A word which is primarily merely a surname may lose that significance when it appears in a distinctive composite.

Norquist, at 400. The addition of other registrable matter creates a composite mark with an overall impression that is not primarily merely that of a surname. If the additional matter is minimal or unregistrable, then the mark is primarily merely a surname and refusal under §2(e)(4) of the Act, 15 U.S.C. 1052(e)(4) (formerly §2(e)(3), 15 U.S.C. 1052(e)(3)), should be made. See In re E. Martinoni Co., 189 USPQ 589 (TTAB 1975). See TMEP §§1211.01(b) et seq. regarding the combination of a surname with additional matter.

In cases where registration of a mark is barred under the Trademark Act (e.g., under §§2(a), 2(b), 2(c), 2(d) and 2(e)(3)), a disclaimer of an unregistrable component will not render the mark registrable. See, e.g., American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ("While the disclaimer is appropriate to indicate that respondent claims no proprietary right in the disclaimed words, the disclaimer does not affect the question of whether the disclaimed matter deceives the public, since one cannot avoid the Section 2(a) deceptiveness prohibition by disclaiming deceptive matter apart from the mark as a whole."). See TMEP §1213.10 concerning disclaimers with regard to likelihood of confusion, and TMEP §§1210.06(a) and (b) regarding disclaimer of geographic terms in composite marks.

1213.03(b) Generic Matter and Matter Which Does Not Function as a Mark

If a mark is comprised in part of matter that, as applied to the goods/services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register. If, however, matter that would otherwise be generic or would not function as a mark is part of a unitary mark or part of a separable unitary element of a mark, the examining attorney should not require a disclaimer of the matter. See TMEP §1213.05.

See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). See also In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766, 768 (TTAB 1986) ("[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").

Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) ("Section 6 is equally applicable to the Supplemental Register."); In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," found registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn's Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) ("Section 6 of the Trademark Act of 1946, which provides for the disclaimer of 'unregistrable matter', does not limit the disclaimer practice to marks upon the Principal Register.").

1213.03(c) Pictorial Representations of Descriptive Matter

An accurate pictorial representation of descriptive matter is equivalent to the written expression and, therefore, must be disclaimed pursuant to the same rules applicable to merely descriptive wording. See Thistle Class Association v. Douglass & McLeod, Inc., 198 USPQ 504 (TTAB 1978) (thistle design found synonymous to the word "thistle," which is used in a descriptive sense to designate a class of sailboats).

No disclaimer of highly stylized pictorial representations of descriptive matter should be required because the design element creates a distinct commercial impression. See In re LRC Products Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (outline of two gloved hands held arbitrary and fanciful), and cases cited therein.

1213.03(d) Entity Designations

Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must be disclaimed because an entity designation has no source-indicating capacity. In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) ("PRESS," as applied to a printing or publishing establishment, "is in the nature of a generic entity designation which is incapable of serving a source-indicating function"); In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("'PAINT PRODUCTS CO.' is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company"); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) ("the element 'INC.' [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark evaluation, to have no source indication or distinguishing capacity").

The only exception to this practice is where the entity designation is used in an arbitrary manner (e.g., "THE LTD." or "KIDS INC." for clothing). In this case the term has trademark significance and a disclaimer should not be required.