Seattle Trademark Lawyer

The owner of a federally-registered trademark is presumed to be the exclusive, nationwide user of the mark in connection with the goods or services listed in the registration.

However, that presumption does not usually extend to generic or descriptive elements of a mark, apart from the mark as a whole. That means the owner of SEATTLE’S BEST COFFEE, for example, doesn’t get exclusive rights to the word “coffee.” Registration or no registration, it can’t object to other companies using that term as part of their trademarks.

The U.S. Patent and Trademark Office gives this common-sense principle teeth by requiring applicants for federal registration to “disclaim” exclusive rights in descriptive and generic elements. The language it requires applicants to adopt is that “No claim is made to the exclusive right to use ‘[the generic or descriptive element(s)]’ apart from the mark as shown.” This language means that apart from the mark as a whole, the owner acknowledges it can’t stop other trademark owners from using those generic or descriptive elements.

There is no question disclaimers are appropriate. Without them, trademark owners might mistakenly attempt to assert rights they don’t have. The question is when to agree to them. Often, the best strategy is to wait until the PTO’s examining attorney requires a disclaimer only after lodging an objection. This makes sense for several reasons.

First, the objection may never come. Why disclaim part of a trademark when filing an application, if there is chance the PTO may not object? Indeed, the PTO might view individual word elements as being part of “unitary” trademark — a trademark whose elements take on a different meaning when viewed as a whole. By waiting, an applicant can ensure that it only disclaims the minimum amount of its mark — if any — needed to obtain registration. 

Second, a disclaimer could be viewed as an admission. A trademark owner’s voluntary relinquishment of exclusive rights to elements of its mark could come back to haunt the owner if it seeks to enforce such rights later in court. If an owner has already publicly agreed it doesn’t own exclusive rights in an application for federal registration, it won’t take long for the allegedly infringing party to point that fact out to the court.

Third, the owner of an intent-to-use application might want extra time to go to market. If the PTO objects on the basis of a needed disclaimer, the owner gets six months to respond. That’s six months of extra time the owner can get for free, without having to pay $150 per class to extend the deadline for filing its proof of use. Free time can be good!

Overall, there’s usually little advantage to agreeing to a disclaimer as part of the application. Disclaiming later might not be better than disclaiming early, but disclaiming early easily could be worse than disclaiming later.