TMEP 1213.08(a)(iii): Unacceptable Statements in Disclaimers

October 2017 Edition of the TMEP

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1213.08(a)(iii)    Unacceptable Statements in Disclaimers

A statement that purports to limit a mark by excluding color(s) or other features that do not appear in the mark is not appropriate for inclusion in a disclaimer. The issue most often arises where there are possible infringement issues involving a particular color, the applicant’s mark does not claim any color, but the applicant attempts to "disclaim" the color from the application with a statement such as: "No claim is made to the exclusive right to use the color purple within or as part of the (design element) apart from the mark as shown."

Although applicants may include such restrictive statements in the application record, they are not appropriate for the registration certificate. Accordingly, if an applicant inserts any such limiting statement in a disclaimer, the examining attorney must ensure that it is deleted from the Trademark database so that it will not be printed on the registration certificate.