TMEP 1213.03(a): "Unregistrable Components" in General

October 2017 Edition of the TMEP

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1213.03(a)    "Unregistrable Components" in General

Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (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, matter that is merely descriptive or deceptively misdescriptive of the goods or services, or matter that is primarily geographically descriptive of the goods or services.

Office practice does not require disclaimer of a surname. Ex parte Norquist Prods., Inc., 109 USPQ 399 (Comm’r Pats. 1956) (finding disclaimer of "NORQUIST" 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. 400. Moreover, the voluntary disclaimer of a surname is not an appropriate response to a surname refusal. If the addition of other registrable matter creates a composite mark with an overall impression that is not primarily merely that of a surname, then no refusal is made under §2(e)(4). 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), must be made. See In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (holding LIQUORE MARTINONI (stylized) for liqueur primarily merely a surname, with "liquore" being the Italian word for "liqueur"). See TMEP §§1211.01(b)–1211.01(b)(viii) 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., Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Soc'y, 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 §1203.02 regarding disclaiming deceptive matter, TMEP §1204.04(a) about disclaiming flags or insignia, TMEP §§1210.05(d)(ii) and 1210.06(a)–(b) regarding disclaimer of geographic terms in composite marks, and TMEP §1213.10 concerning disclaimers with regard to likelihood of confusion.