1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress Marks
A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole. TMEP §1213. The applicant maintains rights in the disclaimed matter only as part of its mark. Thus, except in the rare case when a trade dress mark is unitary, unregistrable elements must be either depicted in broken or dotted lines on the drawing or disclaimed, as appropriate. Specifically, elements that are functional or otherwise incapable of trademark significance must be depicted in broken or dotted lines on the drawing. Elements that are nonfunctional but capable of acquiring trademark significance, but for which acquired distinctiveness has not been established, must be disclaimed. See TMEP §§1202.02(c)(iii)(A)–(B) regarding functional and nondistinctive matter that cannot be disclaimed.
Trade dress marks generally are not considered unitary, as each of the elements normally creates a separate commercial impression. As stated in the Federal Circuit decision In re Slokevage, 441 F.3d 957, 963, 78 USPQ2d 1395, 1400 (Fed. Cir. 2006), “trade dress, by its nature, contains distinct elements and is characterized as the combination of various elements to create an overall impression.” Although each element is combined with others to form one composite mark, each element retains its separate commercial impression such that the mark as a whole is typically not unitary. Therefore, when a mark contains a combination of trade dress and word/design elements, each element should be examined separately for distinctiveness, except in the rare instance where it is shown that the mark as a whole is unitary. If only one element is inherently distinctive, this is not enough to transform the entire mark into an inherently distinctive, unitary mark. See TMEP §§1213.05-1213.05(h)–regarding unitary marks.