TMEP 1609.05: Disclaimer of Mark and Claim of Acquired Distinctiveness

October 2017 Edition of the TMEP

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1609.05    Disclaimer of Mark and Claim of Acquired Distinctiveness

Addition/Deletion of Disclaimer. A registered mark may be amended to disclaim part of the mark. 37 C.F.R. §2.173(a). However, no amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought. 37 C.F.R. §2.173(h).  This exception to the general prohibition against amendments to delete disclaimers applies in the limited situation where the mark is amended to delete the disclaimed matter.  See TMEP §1609.02(d) regarding conforming amendments.

An amended registration must still contain registrable matter, and the mark as amended must be registrable as a whole. 37 C.F.R. §2.173(c).

Addition/Deletion of §2(f) Claim of Acquired Distinctiveness. An amendment under §7 of the Trademark Act seeking the addition or deletion of a §2(f) claim of acquired distinctiveness will not be permitted. 37 C.F.R. §2.173(i).