Updated: May 10, 2021
One of trademark law's little quirks
One trademark law concept that confuses business owners is the topic of Disclaimers.
Whether you’ve yet to give your trademark portfolio much thought, or you’ve been using Disclaimers for a while with no real understanding of the implications, read on to understand this quirky aspect of trademark law.
First, for those who have been sleeping in the back.
I’ve written in a previous post about how some trademarks are stronger than others. If you missed that post, I highly recommend going back to read it. For purposes of this post, the important thing to remember is that trademarks that are “merely descriptive” or “generic” cannot be registered on the principal register.
But what if?
So what if only part of the trademark is generic or descriptive? Enter Disclaimers.
For example, Charred Oak Consulting LLC owns a registered trademark for CHARRED OAK CONSULTING. The word “consulting” is generic in this case, because the company is in fact a consulting firm. So how were they allowed to still register their trademark? Thankfully for them, “Charred Oak” is pretty arbitrary when applied to the field of consulting. So, they disclaimed the word “consulting” and were able to register the mark.
Sometimes, just one word is enough to save the mark. For example, BRAGG ORGANIC RAW UNFILTERED APPLE CIDER VINEGAR WITH THE ‘MOTHER’ is a popular brand of apple cider vinegar and Bragg Live Food Products LLC owns the registered trademark. However, “Apple Cider Vinegar” is generic and “organic”, “raw”, “unfiltered”, and “with the Mother” are all descriptive attributes of the product. So what did this company do? They disclaimed every word except “Bragg”, and were therefore able to get registered.
How it all works
At first glance, Disclaimers can seem like an awesome way to get otherwise unregistrable parts of a trademark, well, registered.
But Disclaimers have their own downsides.
The Fine Print.
First, remember that registering a trademark is just the beginning of managing a trademark portfolio. Just barely sliding into registration is not the ideal, because a weak trademark is more vulnerable to being challenged later on. Descriptive and generic words are by their nature popular words, and popular words will always attract competitors who either want to use the same trademark, or something close to it. In a trademark battle, a weak trademark is a liability.
Second, a trademark application is public record and becomes part of the evidence that courts consider in the event of a dispute. If the trademark is so borderline that a trademark owner has to argue an Office Action in order to get registered, those legal arguments made in the heat of trying to get registered can backfire later. Legal arguments that were made to secure registration may not be the legal arguments that a trademark owner still wants to stand on ten years later in federal litigation.
Lastly, and most importantly, a Disclaimer will not solve a likelihood of confusion issue. Likelihood of confusion means that the Trademark Office is refusing to register a trademark because it is too similar to another trademark that is already registered for the same or similar goods/services. Sometimes, trademark owners think they can get around this by “disclaiming” certain words, but this is a misconception.
The important thing to remember is that a disclaimer does not remove words from the trademark. A disclaimer is simply an acknowledgement that the exclusive right to use the generic or descriptive words only applies when using the whole trademark. So going back to our example, Charred Oak Consulting exclusively owns its name, but it can’t stop other people from using the word “consulting” by itself.
In summary, a Disclaimer is not a loophole or a fix for an inherently weak trademark. It is simply an acknowledgment that unique words combined with generic/descriptive words can still make for a legitimate trademark. Being legally legitimate and being strong enough to withstand serious litigation are two different inquiries to be discussed with your attorney.
Had enough of Disclaimers? Just one more: Thanks for reading the Bevel Law Blog! While this information is hopefully helpful to you, nothing in this blog is intended to be legal advice. Always consult a lawyer before making any legal decisions based on topics in this blog.
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