TMEP 1213.08(a)(ii): Unacceptable Wording for Disclaimer

October 2017 Edition of the TMEP

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1213.08(a)(ii)    Unacceptable Wording for Disclaimer

Wording that claims matter, rather than disclaims it, is not acceptable. A disclaimer should be no more than a statement that identifies matter to which the applicant may not have exclusive rights apart from what is shown on the drawing.

Therefore, statements that the applicant "claims" certain matter in the association shown are not acceptable. The examining attorney must require correction of this wording and of variations that amount to the same thing. Likewise, a statement that the mark is "not claimed except in the association shown," or similar wording, is not acceptable, and the examining attorney must require correction. See Textron Inc. v. Pilling Chain Co., 175 USPQ 621, 621-22 (TTAB 1972), concerning an application which included the statement, "The mark is not to be claimed except in the setting presented." The Board found this wording unacceptable, noting, "The alleged disclaimer filed by applicant is in such vague terms that it actually disclaims nothing."