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?
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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).
