TMEP 1202.02(c)(iii)(B): Nondistinctive Matter

October 2017 Edition of the TMEP

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1202.02(c)(iii)(B)    Nondistinctive Matter

Sometimes, a trade dress mark, as a whole, is registrable but contains elements that are nondistinctive but capable. See TMEP §1202.02(c)(i)(B). In this situation, if acquired distinctiveness has not been established, the capable elements must be disclaimed because, while they are not source indicators, they are still part of the mark. See 15 U.S.C. §§1051-1052, 1056(a), 1127. The disclaimer must be provided regardless of whether the remaining portions of the mark are determined to be registrable. However, where the nondistinctive elements are incapable of acquiring distinctiveness, for example, common or basic shapes of product design or product packaging, such elements are not part of the mark and, therefore, must be depicted in broken or dotted lines rather than disclaimed. See 37 C.F.R. §2.52(b)(4); cf.Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (noting that functional features of product design cannot serve as trademarks); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983) (noting that functional features of product packaging should be shown in dotted lines).

See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f), TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter, and TMEP §§1213.03–1213.03(d) regarding disclaimers of unregistrable components of marks. See also In re Creative Goldsmiths of Wash., 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, 144, 196 USPQ 7, 8 (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.").