1213.01(d) Disclaimer Offered in the Alternative
An applicant may argue the merits of an examining attorney’s requirement for a disclaimer and, in the alternative, consent to entry of the disclaimer. In such circumstances, submission of the disclaimer does not constitute a concession that the matter sought to be registered is not inherently distinctive or registrable. See In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012). Thus, when an applicant submits a disclaimer in the alternative, while maintaining that the wording at issue is not descriptive, the disclaimer requirement is not moot. If the examining attorney finds the disclaimer acceptable, the applicant must be given the option of entering the disclaimer in the record or going forward with appeal of the underlying issue of whether the wording subject to the requirement is merely descriptive. This should be done by telephone or e-mail, with a Note to the File in the record indicating the applicant’s decision, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or e-mail, the examining attorney must maintain the requirement, or issue a final Office action requiring the disclaimer, as appropriate. Id. If the applicant elects to enter the disclaimer in the record and not appeal the requirement, then the disclaimer constitutes a concession that the matter is not inherently distinctive or registrable.
See TMEP §1212.02(c) regarding a claim, in the alternative, that matter sought to be registered has acquired distinctiveness under §2(f).