TMEP 1213.08(c): Disclaimer of Misspelled Words

This is the October 2015 Edition of the TMEP

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1213.08(c)    Disclaimer of Misspelled Words

Marks often comprise words that may be characterized as “misspelled.” For example, marks may comprise terms that are “telescoped” (see TMEP §1213.05(a)(i)) or terms that are phonetic equivalents of particular words but spelled in a manner that varies from the ordinary spelling of such words.

If a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the examining attorney must require disclaimer of the word or words in the correct spelling. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re Newport Fastener Co., 5 USPQ2d 1064, 1067 n.4 (TTAB 1987). However, the entry of a disclaimer does not render registrable a mark that is otherwise unregistrable. For example, if a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).

If the examining attorney has not required any disclaimer of misspelled wording because a disclaimer is not necessary under USPTO policy, the applicant may provide a disclaimer of the wording as spelled in the mark or in its correct spelling voluntarily. In such a case, the examining attorney must offer the applicant the opportunity to withdraw the disclaimer. If it is necessary to communicate with the applicant about another matter, the examining attorney must state in the Office action that the disclaimer appears to be unnecessary, and inquire as to whether the applicant wants to withdraw the disclaimer. If it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or e-mail. If the applicant wants to delete the disclaimer, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or e-mail message (applicant should be given at least a week), the examining attorney must enter an appropriate Note to the File in the record. Again, the disclaimer does not render an otherwise unregistrable mark registrable. The examining attorney must consider the entire mark, including the disclaimed matter, to determine whether the entire mark is registrable.