TMEP 1213.03(b): Generic Matter and Matter That Does Not Function as a Mark

This is the October 2015 Edition of the TMEP

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1213.03(b)    Generic Matter and Matter That Does Not Function as a Mark

If a mark is comprised in part of matter that, as applied to the goods or services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register. If, however, matter that would otherwise be generic or would not function as a mark is part of a unitary mark or part of a separable unitary element of a mark, the examining attorney should not require a disclaimer of the matter. See TMEP §§1213.05–1213.05(g)(iv).

See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). 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, as stated in In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (citing In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977)), “Section 6 is equally applicable to the Supplemental Register.” See Wella, 565 F.2d 143, 196 USPQ 7 (finding mark comprising stylized lettering of BALSAM, with disclaimer of “BALSAM,” 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.”).