T.M.E.P. § 1213.08
Form of Disclaimers
Executive summary:
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1213.08 Form of Disclaimers
1213.08(a) Wording of Disclaimer
1213.08(a)(i) Standardized Printing Format for Disclaimer
Since November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted. Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date. Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983. The disclaimed matter is taken from the disclaimer of record and inserted into the standardized disclaimer format for printing and data base purposes. The standardized disclaimer text is as follows:
No claim is made to the exclusive right to use ____________, apart from the mark as shown.
See notice at 1022 TMOG 44 (September 28, 1982). See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm'r Pats. 1983) ("[T]he use of the standardized form is solely for the purpose of printing and data base purposes, not for the limitation of registrant's rights.").
For the record only, examining attorneys will accept disclaimers with additional statements pertaining to reservation of common law rights, although §6 of the Trademark Act of 1946 states that no disclaimer shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter. Disclaimers with these additional statements can be entered by examiner's amendment. The examining attorney must inform the applicant or attorney who authorizes the amendment that the disclaimer will be printed in the standardized format.
1213.08(a)(ii) Unacceptable Wording for Disclaimer
Wording that claims matter, rather than disclaims it, is not acceptable. A disclaimer should be no more than a statement that identifies matter to which the applicant may not have exclusive rights apart from what is shown on the drawing.
Therefore, statements that the applicant "claims" certain matter in the association shown are not acceptable. The examining attorney should require correction of this wording and of variations that amount to the same thing. Likewise, a statement that the mark is "not claimed except in the association shown," or similar wording, is not acceptable, and the examining attorney should require correction. See Textron Inc. v. Pilling Chain Co., Inc., 175 USPQ 621, 622 (TTAB 1972), concerning an application which included the statement, "The mark is not to be claimed except in the setting presented." The Board found this wording unacceptable, noting, "The alleged disclaimer filed by applicant is in such vague terms that it actually disclaims nothing."
1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety
Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms that form a grammatically or otherwise unitary expression (e.g., "SHOE FACTORY, INC."), the examining attorney must require that they be disclaimed in their entirety. See, e.g., In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm'r Pats. 1987) (denying petitioner's request to substitute separate disclaimers of "GLASS" and "TECHNOLOGY" for the disclaimer of "GLASS TECHNOLOGY" in its registration of GT GLASS TECHNOLOGY in stylized form, the Commissioner finding "GLASS TECHNOLOGY" to be a unitary expression and noting, "Disclaimers of individual components of complete descriptive phrases are improper."); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984) ("CERTIFIED HEARING AID AUDIOLOGIST" found to be "a unitary expression that should be disclaimed in its entirety"); In re Surelock Mfg. Co., Inc., 125 USPQ 23, 24 (TTAB 1960) (proposed disclaimer of "THE" and "RED" and "CUP" held unacceptable to comply with requirement for disclaimer of "THE RED CUP," the Board concluding, "A disclaimer of the individual components of the term 'THE RED CUP,' under the circumstances, is meaningless and improper.").
This standard should be construed strictly; therefore, disclaimer of individual words separately will usually be appropriate only when the words being disclaimed are separated by registrable wording.
1213.08(c) Disclaimer of Misspelled Words
Marks often comprise words that may be characterized as "misspelled." For example, marks may comprise terms that are "telescoped" (see TMEP §1213.05(a)(i)) or terms that are phonetic equivalents of particular words but spelled in a manner that varies from the ordinary spelling of such words.
If a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the examining attorney should require disclaimer of the word or words in the correct spelling. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Newport Fastener Co. Inc., 5 USPQ2d 1064, 1067 n. 4 (TTAB 1987). The entry of a disclaimer does not necessarily render registrable a mark that is otherwise unregistrable.
If the examining attorney has not required any disclaimer of misspelled wording because a disclaimer is not necessary under Office policy, the applicant may provide a disclaimer of the wording as spelled in the mark or in its correct spelling voluntarily. In such a case, the examining attorney should accept the disclaimer. Again, the disclaimer does not necessarily render an otherwise unregistrable mark registrable. The examining attorney must consider the entire mark, including the disclaimed matter, to determine whether the entire mark is registrable.
1213.08(d) Disclaimer of Non-English Words
Non-English wording that comprises an unregistrable component of a mark is subject to disclaimer. See Bausch & Lomb Optical Co. v. Overseas Finance & Trading Co. Inc., 112 USPQ 6, 8 (Comm'r Pats. 1956) (noting that "Kogaku," the transliteration of the Japanese word for "optical," was properly disclaimed).
If translated non-English wording must be disclaimed, the actual non-English wording should be disclaimed, not the English translation. The applicant must disclaim the wording that actually appears in the mark, not the translated version. For non-Latin characters, the following formats are suggested:
No claim is made to the exclusive right to use "[specify transliteration of non-Latin characters]" apart from the mark as shown.
orNo claim is made to the exclusive right to use the non-Latin characters that mean "[specify English translation]" apart from the mark as shown.
See TMEP §§809 et seq. regarding translation of non-English wording in marks.