TMEP 1213.05(a)(ii): Compound Words Formed with Hyphen or Other Punctuation

This is the October 2015 Edition of the TMEP

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1213.05(a)(ii)    Compound Words Formed with Hyphen or Other Punctuation

When a compound word is formed by hyphenating two words or terms, one of which would be unregistrable alone, no disclaimer is necessary. “X” Labs., Inc. v. Odorite Sanitation Serv. of Balt., Inc., 106 USPQ 327, 329 (Comm’r Pats. 1955) (holding requirement for a disclaimer of “TIRE” unnecessary in application to register TIRE-X for a tire cleaner).

Word marks consisting of two terms joined by an asterisk (e.g., RIB*TYPE), a slash (e.g., RIB/TYPE) or a raised period (e.g., RIB°TYPE) are analogous to hyphenated words. Therefore, no disclaimer of portions of marks formed by asterisks, slashes, or raised periods is necessary.

If a hyphenated term comprising part of a mark is unregistrable, then a disclaimer of the hyphenated term may be required. See TMEP §1209.03(d) regarding determinations of whether a composite comprising two descriptive terms is itself descriptive. In this situation, the examining attorney must require a disclaimer of the words in the correct spelling.

Example 1: If the mark includes the term SOFT-TOYS for stuffed animals, the applicant must disclaim the two separate words “SOFT TOYS” apart from the mark as shown.

Example 2: If the mark includes the term OVER-COAT for winter coats, the applicant must disclaim the compound word “OVERCOAT,” because this is how the term is commonly spelled.