Many Office Actions contain a Disclaimer Requirement.  This is very common!

Let’s get the legal language out of the way:     

Your Office Action should state that the USPTO believes a word or a design in your trademark “describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark.”

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So, what does that mean?

Let’s use an example.  Let’s say that I’m selling t-shirts, and my trademark is “ZULUMA COTTON T-SHIRTS”.  ZULUMA is a random word and does not mean anything in relation to the t-shirts I’m selling.  But what about COTTON T-SHIRTS?  COTTON is a feature of the t-shirts, and T-shirts is the literal product that I’m selling.  So, I would definitely be required to disclaim COTTON T-SHIRTS in order to successfully register my trademark.

Another way to think about disclaimers is to ask yourself: Would it be unfair to have trademark protection for these words in my industry?  

If you google “Cotton T-shirts”, you will see that almost every clothing business will need to be able to use these words in order to advertise.  So, it wouldn’t really be fair for me to receive trademark protection over the COTTON T-SHIRTS wording. After all, other clothing companies clearly need to constantly use that wording!

Let’s use another example.  Suppose I’m a restaurant owner, and my trademark is “MOMMA TIA’S MEATBALLS MUMMY TUMMY”.  What word do you think would need to be disclaimed?  

Here, “MEATBALLS” would need to be disclaimed, because this word is simply describing a feature of the restaurant that sells meatballs.  

Similarly, you should ask yourself: Would it be unfair to have trademark protection for the wording “MEATBALLS” in my industry?  

Yes, because the restaurant industry as a whole would need to constantly be able to use the wording MEATBALLS to describe their goods and services!

So, your trademark will still be read as “MOMMA TIA’S MEATBALLS MUMMY TUMMY”, but you will not have trademark protection for the word MEATBALLS.

If you received a disclaimer requirement, the USPTO is stating that you need to disclaim the word or design in order for your trademark to be registered.

Your Office Action should have provided the specific word or design that needs to be disclaimed.  It may also include dictionary evidence or third-party examples of this wording or design in your industry.

So, you will need to respond to the USPTO that you agree with or consent to the disclaimer.

Alternatively, if you disagree with the disclaimer, you would need to write a response to the USPTO arguing why you do not believe that wording merely “describes an ingredient, quality, characteristic, function, feature, purpose, or use” of your goods and services.  

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