TMEP 1213.11: Acquiring Rights in Disclaimed Matter

October 2017 Edition of the TMEP

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1213.11    Acquiring Rights in Disclaimed Matter

In Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538, 545 (1920), the United States Supreme Court stated, regarding registration of a mark with a disclaimer, that "the registrant would be precluded by his disclaimer from setting up in the future any exclusive right to the disclaimed part of it." Subsequently, that principle was applied literally; registrants were prohibited from asserting that disclaimed matter had acquired secondary meaning. See Shaler Co. v. Rite-Way Prods., Inc., 107 F.2d 82, 84, 43 USPQ 425, 427 (6th Cir. 1939).

The situation was changed by the Trademark Act of 1946, which provided that "disclaimer shall not prejudice or affect the applicant’s or owner’s rights then existing or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant’s or owner’s rights of registration on another application of later date if the disclaimed matter has become distinctive of the applicant’s or owner’s goods or services." 15 U.S.C. §1056   (1946), amended by 15 U.S.C. §1056(b)   (1962). In 1962, the statutory provision was amended to read, "No disclaimer... shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services." 15 U.S.C. §1056(b).

It is now clear that, aside from generic matter, disclaimed matter is not forever barred from registration, and it can subsequently be considered for registration on either the Principal Register or the Supplemental Register. When an application is filed seeking registration of matter previously disclaimed, it must be examined in the same manner as other applications. See Quaker Oil Corp. v. Quaker State Oil Ref. Corp., 161 USPQ 547, 549 (TTAB 1969), aff’d,453 F.2d 1296, 172 USPQ 361 (C.C.P.A. 1972); Victor Tool & Mach. Corp. v. Sun Control Awnings, Inc., 299 F. Supp. 868, 875-76, 162 USPQ 389, 394 (E.D. Mich. 1968), aff’d, 411 F.2d 792, 162 USPQ 387 (6th. Cir. 1969).

Whether or not previously disclaimed matter has become eligible for registration depends on the circumstances and the evidence adduced in the examination process. See Roux Distrib. Co. v. Duart Mfg. Co., 114 USPQ 511, 512 (Comm’r Pats. 1957); Helena Rubinstein, Inc. v. Ladd, 219 F. Supp. 259, 260, 138 USPQ 106, 107 (D.D.C. 1963), aff’d, 141 USPQ 623 (D.C. Cir. 1964).