Michael Kondoudis

Trademark Disclaimer Example: A COMPLETE Guide

June 7, 2023 by Michael Kondoudis

A Trademark Disclaimer is an important tool to overcome rejections when a portion of a mark does not qualify for trademark protection.

By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to trademark disclaimers.

In this guide you’ll learn:

The Basics of Trademark Disclaimer
When Trademark Disclaimers are Required
The Format for Trademark Disclaimers
Trademark Disclaimer Examples

So, if you need to learn about Trademark Disclaimers, this guide is for you.

Let’s dive right in!

What is Trademark?

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of goods (or services) from those offered by the competition. Trademarks protect brands. Names, words, logos, and phrases are the most common trademarks.

A trademark owner has exclusive rights to use the mark and to prevent competitors from using the mark – or anything confusingly similar.

What Is a Trademark Disclaimer?

A Trademark Disclaimer is a statement included in an application or registration that indicates that you do not claim exclusive rights to a portion of your mark. Typically, these unregistrable portions are words that are generic, descriptive, or informational.

A Trademark Disclaimer simply states that you aren’t claiming exclusive rights to use a part of your trademark, usually because that part does not qualify for trademark protection.

A trademark disclaimer is a statement that you put in a trademark application that tells people that you do not claim exclusive rights to a portion of your trademark. Disclaimed portions are usually descriptive, generic, or informational and thus do not qualify for trademark protection.

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What is the Purpose of a Trademark Disclaimer?

A Trademark Disclaimer tells the public what exactly a trademark owner owns and tells competitors what they can and cannot use in their marks. A Trademark Disclaimer also allows the USPTO to register trademarks that include parts that do not qualify for trademark protection.

For example, if your company’s name contains the word “bread” and you sell bread, you must disclaim that word. This tells the public and your competitors that they can use the word “bread” in their trademarks and not get sued for trademark infringement.

When Do You Make a Trademark Disclaimer?

A disclaimer may be included in an application as filed or may be added during the examination of a trademark application, especially to comply with a requirement by the examining attorney.

What is the Format for a Trademark Disclaimer?

A Trademark Disclaimer is a disclaimer of some legal rights. it is an important statement that has a standard format.

For Word-Based Trademarks

The typical format for a Trademark Disclaimer for a word-based mark is:

No claim is made to the exclusive right to use “[the disclaimed portion]” apart from the mark as shown.

For Design Trademarks

The format for a Trademark Disclaimer in a logo is:

No claim is made to the exclusive right to use the design of “[the disclaimed portion]” apart from the mark as shown.

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Trademark Disclaimer Examples

Trademark Disclaimer Example: General Motors

Trademark Disclaimer Example

General Motors

Trademark Reg. No. 1,223,115 for GENERAL MOTORS includes this Trademark Disclaimer:

No claim is made to the exclusive right to use “Motors” apart from the mark as shown.

Trademark Disclaimer Example: Starbucks Coffee

Trademark Disclaimer Example

Starbucks Coffee

Trademark Reg. No. 2,266,351 for STARBUCK’S COFFEE & Design includes this Trademark Disclaimer:

No claim is made to the exclusive right to use coffee apart from the mark as shown.

Trademark Disclaimer Example: Gold’s Gym

Trademark Disclaimer Example

Gold’s Gym

Trademark Reg. No. 3,316,556 for GOLD’S GYM & Design includes this Trademark Disclaimer:

No claim is made to the exclusive right to use gym apart from the mark as shown.

Trademark Disclaimer Example

To give you a better idea of how trademark disclaimers work, let’s look at an example. Imagine that you own a coffee shop named “BUCKSTAR’S COFFEE.” In that case, the USPTO would require a trademark disclaimer like this:

No claim is made to the exclusive right to use “COFFEE” apart from the mark as shown.

This declaration simply states that you aren’t claiming exclusive rights to the word “coffee” as part of your trademark.

When is a Trademark Disclaimer Required?

According to the USPTO, a Trademark Disclaimer is required when a portion of a trademark does not qualify for registration. A disclaimer may be necessary in any of the following situations:

Merely descriptive: When aspects of the trademark merely describe a product’s feature, ingredient, or function.

Laudatory words: When terms are included that claim a superior quality.

Generic: When common names or designs of services and goods are present in the trademark.

Geographic: When words or designs describe a product or service’s origin.

Business type designations: When labels specify a business structure or type.

Merely informational: When words provide information about a brand, product, or service.

A Trademark Disclaimer can be submitted with a new trademark application or added during the application review process.

Can You Disclaimer All of Your Trademark?

No. You may not disclaim the entire mark.

A Trademark Disclaimer allows the USPTO to register a trademark that includes a portion that does not qualify for trademark protection because it is descriptive, generic, or merely informational, for example.

If you disclaim your whole mark, there would be nothing to register.

Frequently Asked Questions

1. What is an example of a trademark disclaimer statement?

A trademark disclaimer statement follows this accepted format:

No claim is made to the exclusive right to use [THE DISCLAIMED WORD] apart from the mark as shown.

So, for the name “Delicious Breads,” the disclaimer would look like this:

No claim is made to the exclusive right to use ‘BREAD’ apart from the mark as shown.

2. What is a disclaimer of words in a trademark?

A trademark disclaimer is a statement that you put in a trademark application that says that you do not claim exclusive rights to a portion of your trademark. Disclaimed portions are usually descriptive, generic, or informational and thus do not qualify for the exclusive rights that come with trademark protection.

3. Does a trademark disclaimer change a trademark?

No, a trademark disclaimer is just a statement added to a trademark registration that an unregistrable portion of the mark is free for others to use. A disclaimer does not remove the unregistrable portion from a mark, affect the appearance of the mark, or alter the way you use it.

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Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

TRUMP TOO SMALL: An Easy Guide

June 5, 2023 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to the TRUMP TOO SMALL trademark. If you need to quickly learn the history, issues, and questions raised by this trademark case, read on. This post is for you.

Let’s jump in!

The Background of TRUMP TOO SMALL

During the 2016 presidential campaign, Donald Trump and his then-rival, Sen. Marco Rubio, engaged in a series of heated exchanges on the campaign trail. Trump often taunted Rubio by calling him “Little Marco,” and in response, Rubio critiqued the size of Trump’s hands at a campaign stop.

In 2018, Steve Elster applied to register the trademark “TRUMP TOO SMALL” with the intention of using it on shirts.

The TRUMP TOO SMALL Trademark Application

The trademark application for TRUMP TOO SMALL was filed with the U.S. Patent and Trademark Office on January 10, 2018. The trademark application for TRUMP TOO SMALL was assigned serial number 87749230.

The Status of the TRUMP TOO SMALL Trademark

The USPTO (United States Patent and Trademark Office) refused Mr. Elster’s application to register the mark, citing the Federal Trademark Statute. The refusal was primarily based on the fact that Mr. Elster did not obtain written permission from President Trump. Later on, the USPTO also denied the registration based on the grounds that it would falsely suggest a connection with a living individual.

Mr. Elster appealed the rejection to the USPTO’s Trademark Trial and Appeal Board, which ultimately refused registration. An appeals court reversed, holding that

In a surprising turn of events, a Court of Appeals reversed this decision. The Court held that the Trademark Statute’s restrictions unconstitutionally limited Mr. Elster’s free speech rights, especially since the mark contained criticism of a government official or public figure. It also found that the government has no interest in protecting the publicity rights of such a public figure. Thus, the refusal violated the First Amendment, according to the Court of Appeals.

Currently, the application for TRUMP TOO SMALL is suspending pending appeal.

Trademark Registration and the USPTO

The Supreme Court has held that federal registration of a trademark serves to bolter the “rights of exclusion” by giving owners “additional protections against infringers.”

The USPTO (United States Patent and Trademark Office) is the government agency that administers and registers trademarks.

To enjoy the enhanced “rights of exclusion, a person who uses or plans to use a trademark in commerce must apply to register the mark with the USPTO. Once approved, the USPTO issues a certificate of registration “in the name of the United States of America.”

The USPTO can only register trademarks that satisfy the statutory criteria.

The Statutory Criteria for Trademark Registration

The statutory criteria for trademarks is the Lanham Act (15 U.S.C. § 1052). The Lanham Act is the federal trademark statute of the United States.

What Does the Lanham Act Say?

The Lanham Act instructs the USPTO to refuse the registration of a mark that consists of or includes the name of a particular – UNLESS that living individual provides their written consent.

The Lanham Act reads as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

* * * * *

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

* * * * *

What is the Supreme Court?

The Supreme Court is the highest court of the United States and is responsible for interpreting the Constitution and federal laws. It is established by the U.S. Constitution and consists of nine justices who are appointed by the President and confirmed by the Senate.

The Supreme Court has the power of judicial review, which means it can declare laws or executive actions unconstitutional if they violate the Constitution. The Court hears cases on appeal from lower federal courts and state courts, as well as cases in which a state is a party.

The decisions of the Supreme Court have far-reaching impacts on American law and society, and often set precedents that shape future legal disputes. The Court’s rulings are considered final and cannot be appealed except in rare cases.

Why is the Supreme Court Hearing This Case?

The U.S. Supreme Court decided to review this case for several reasons.

1. The Court of Appeals decision in favor of Mr. Elster, in essence, invalidated parts of a 75-year-old federal statute. The Supreme Court regularly reviews lower court decisions that hold federal statutes invalid, especially on First Amendment Grounds.

2. The case presents an opportunity for the Court to resolve the question of whether the Lanham Act, the United States trademark statute, is a restriction on free speech or a condition on a government benefit (the benefits of registration).

3. The Court of Appeals was probably wrong. The refusal to register the TRUMP TOO SMALL trademark does not prevent Mr. Elster from any speech. He remains free to use the mark and speak his mind. He just cannot enjoy the benefits that come with federal registration of his mark.

When Will The Supreme Court Hear This Case?

The Supreme Court will hear this case during the next term 2023-24 and decide it next year.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

The DuPont Factors: An EASY Guide

May 22, 2023 by Michael Kondoudis

If you’re a trademark owner or planning to register for one, it’s crucial to understand the DuPont factors. They are a set of criteria used by the U.S. Patent and Trademark Office (USPTO) to register trademarks and by courts to help with trademark infringement cases.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademark DuPont Factors.

In this guide you’ll learn:

Trademark Basics
The origins of the DuPont factors
What they are
Why they matter & How they are used

So, if you need to learn about the DuPont factors, this guide is for you.

Let’s dive right in!

I. A BIT ABOUT TRADEMARKS

What is a Trademark?

A trademark is an exclusive right that a business or individual has to use a name, logo, slogan, or other symbol to identify products and services. Trademarks help protect a brand’s identity from competitors who may try to copy it while also preventing confusion among consumers. Trademarks protect brands.

What is a Registered Trademark?

A registered trademark is a trademark that has been registered with the United States Patent and Trademark Office (USPTO), which grants exclusive and nationwide rights to use the trademark.

How Do You Get a Registered Trademark?

You get a registered trademark by applying to the USPTO (United States Patent and Trademark Office). After registration, trademark owners may display the ® symbol to indicate it is protected by federal law.

How Does the USPTO Decide to Register a Trademark?

The USPTO decides whether to grant applications for trademark registration by assessing the “likelihood of confusion” between them and other existing trademarks. It uses the DuPont factors to make this determination.

II. THE DUPONT FACTORS

The USPTO decides whether to grant applications for trademark registration by assessing the “likelihood of confusion” between them and other existing trademarks. To do this effectively, it uses the DuPont factors. These factors represent a consistent and objective legal framework for comparing trademarks, ensuring fair decisions in the trademark registration process.

Beware: Even if two trademarks aren’t identical, they can still conflict if they are “likely to be confused.” That’s where the DuPont factors come in – they help identify potential conflicts and guide the decision-making process.

What Are the Dupont Factors?

The Dupont factors are a set of 13 criteria that the U.S. Patent and Trademark Office (USPTO) uses to assess the likelihood of confusion between trademarks. In other words, these factors help determine whether a new trademark can be registered or might infringe on someone else’s existing mark. Courts also use the Dupont factors to resolve cases of trademark infringement.

So, the USPTO uses the DuPont factors to decide whether to grant applications for trademark registration, and courts use them to answer questions of infringement.

Where Did The DuPont Factors Come From?

The DuPont factors originated from the landmark 1973 case of E.I. DuPont de Nemours & Co. v. Celanese Corp., which established their use in trademark litigation. The DuPont factors have since become one of the most commonly used tools for analyzing trademark applications.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

How Many DuPont Factors Are There?

There are 13 DuPont factors.

Why Are The DuPont Factors Important?

The DuPont factors are THE test for whether a trademark can be registered or whether it infringes someone else’s mark. The Dupont factors are important because the trademarks can conflict (i.e., a likelihood of confusion) even if they do not match. Trademarks do not need to be identical to conflict. Instead, they just need to be confusingly similar. For example, if two companies have names that start with the same letter but contain different words, such as “Green Gizmos” and “Gorgeous Gadgets,” this could still lead to a trademark dispute.

List Of The DuPont Factors

The 13 criteria that make up the DuPont factors are:

1. Similarity or dissimilarity of marks: This factor considers how similar the two trademarks look, sound, and feel in appearance, sound, connotation, and commercial impression.

2. Nature of the goods and services: The USPTO compares the products or services associated with the trademarks determining whether they are similar or dissimilar.

3. Trade channels used: The third factor examines whether the trademarks are used in similar or different trade channels, such as retail stores, online platforms, or others.

4. Purchasing conditions: This factor evaluates the conditions under which sales are made and if the buyers involved tend to make impulse purchases or carefully consider their options before buying.

5. Fame of the existing mark: If the prior mark has a strong reputation or significant fame, it may be more susceptible to confusion with a newly proposed trademark.

6. Similar marks with similar goods: This factor takes into account the number and nature of similar trademarks used with similar goods or services in the market.

7. Actual confusion between the marks: The USPTO looks for any existing evidence of confusion between the two trademarks in question.

8. Length and conditions of concurrent use without confusion: The office considers whether the two trademarks have been used simultaneously without causing confusion for an extended period.

9. Variety of goods and services associated with the marks: The USPTO evaluates if the trademark is used or not used with a range of different products or services.

10. Market interface: This factor assesses the interactions and competitive relationship between the applicant and the owner of the existing trademark.

11. Applicant’s right to exclude others: This factor measures the extent to which the applicant has the right to prevent others from using the trademark on specific goods or services.

12. Extent of potential confusion: The USPTO tries to gauge the possible level of confusion that could arise between the two trademarks.

13. Other established facts: Any additional relevant information that could help determine the impact of trademark use is also considered.