All You Need To Know About Trademark Disclaimer

A Trademark is like a brand identifier for a product or service. Trademark is used by companies or organisations with a distinct product or service provided to ensure legal protection against replication and possible revenue loss. But, while a Trademark is a logo, sign, symbol, or word capable of distinguishing products or services and enjoys legal security, it is descriptive statement may contain some generic words that cannot be owned by a person for their use. To avoid confusion with such words and to allow their usage, a Trademark Disclaimer is used. Scroll down to check information regarding Trademark Disclaimer.

What Do You Mean by Trademark Disclaimer?

A disclaimer tells that the applicant or owner doesn’t have the right or authority to use a particular word of a Trademark by itself. For example, if you have descriptive terms in your Trademark, then the Trademark Office tells you to disclaim those. It simply means that apart from how the term is used in your Trademark.

Disclaimers are required for Composite Trademarks (Trademarks with more than one design or word with separate elements) for the Trademark portion that is merely generic, descriptive or geographic or includes a company designation or a company designation or a popular symbol such as $ sign. The exclusive Trademark rights^[1] exist in the complete mark. The reason behind disclaimers is that such types of works or symbols are required by other people and businesses to describe their products or services.

Following are some popular examples of Trademark Disclaimers:

1. KIA Motors: No other claim is made to the exclusive right to use “motors” apart from the mark as publicised or advertised.
2. Burger King: No other claim is made to the exclusive right to use “burger” apart from the mark as publicised or advertised.
3. Starbucks Coffee: No other claim is made to the exclusive right to use “coffee” apart from the mark as publicised or advertised.
4. Domino’s Pizza: It’s a multinational chain and is recognised as a leader in pizza delivery. The word or term pizza in “DOMINO’S PIZZA” term is generic or common, and other businesses have unrestricted access to it. Therefore, no claim is made to the exclusive right to use “pizza” apart from the mark.
5. Microsoft Corporation: The words corporation is generic as it describes the type and structure of a business. As an outcome, no claim is made to the exclusive right to use “Corporation” apart from the mark as shown. Any business or company eager to use the word based on its applicability is free to do so without worrying of any legal consequences.

Why is it necessary to use Trademark Disclaimer?

The primary purpose of the disclaimer requirement is to define the owner’s right under the Trademark Registration to lessen the possibility of excessive and illegal claims made on the score of Trademark Registration, even if it may not be entirely eliminated. It’s a fact that some categories like descriptive, geographic, generic/common symbols like $ (dollar) sign are commonly used and not eligible for Trademark Registration. The basic logic for disclaimers is that other businesses and individuals need these words & symbols to describe their products or services.

A disclaimer in registration makes it clear that anyone can use the disclaimed words or terms without attracting any legal attention. Following are some common disclaimed terms:

• Generic Words: Words with a common or general name of products or services also require a disclaimer. A few common examples are “ASPRIN” for pain relief medicine.
• Simply Descriptive: Such descriptive words for describing and products & services don’t qualify for protection under Trademark. For example, hot for soup, creamy for yoghurt, cold & refreshing for soft drinks, etc.
• Geographic Designs or Words: It’s common that designs or words explaining the origin of products or the location of the services don’t enjoy protection under Trademark and need a disclaimer. For example, Italian Leather, Glassware from Venice, etc.
• Popular Symbols: Common symbols provide details regarding your products and services, such as the bio-hazard symbol for medical waste containers, the prescription symbol for medical goods/products, for example; the dollar sign or symbol for financial services, the tree symbol is for a green product, etc.
• Informational Words: Such words only provide general information of products or services like net volume, net weight, lists of content, addresses & contact information/details, establishment years, etc., require disclaimer for use by another party in the business.
• Business Type Designations: The structure & type of the business can vary in the current world. Depending upon the size & complexity of ownership, the last name varies. But, the structure & type of the businesses can be the same and hence cannot be safeguarded under Trademark Registration. For example, Inc., Ltd., Corporation, Bros., etc.
• Deceptively Misdescriptive Designs or Words: Designs or words that clarify a product or service in a way that is both credible & incorrect but will not affect the customer purchasing decision as it is not essentially linked to the quality of the good or services. Such words or designs need a disclaimer for use by other businesses & individuals.

How can you submit a Trademark Disclaimer?

Applicants can reply to a disclaimer requirement in a non-final Office Action using the Response to Office Action Form by TEAS or Trademark Electronic Application System. It comprises any required statement & supporting declaration language mentioned in the Office Action. Applicants or candidates should also respond to a Trademark Disclaimer requirement in a Final Office using the Trademark Electronic Application System (TEAS) Request for Reconsideration after Final Action Form.

Conclusion

In a Trademark, it is vital to know that the portions that can be registered & ones that cannot be registered. Therefore, it gets vital for the applicant to make a strategy of coining a Trademark that should be devised, keeping in mind the need to state the disclaimer parts. The correct Trademark Disclaimer can achieve the dual objective of registering a great Trademark without a trade-off with its uniqueness. That’s why, before filing an application for Trademark Registration, it is careful to take the advice of subject matter experts.

Read our Article:Difference between Trademark Infringement and Counterfeiting of Trademark: An Overview