Fighting for a Strong Mark by Resisting a Disclaimer Request: Short-Term Pain for Long-Term Gain

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A strong brand is central to a successful food, beverage, hospitality, or retail business. Knowing this, you  make every effort to choose a strong trademark and take all steps necessary to protect it, including retaining an attorney to assist you in applying with the United States Patent and Trademark Office (USPTO) for a federal registration. Your attorney soon informs you of an exciting update – your trademark is essentially approved! There is only one seemingly simple hurdle to overcome: The USPTO examining attorney requests that you disclaim a word in your trademark. All you need to do is agree to this disclaimer, and your trademark will be published – the last stop before approval. Assuming no oppositions by others are filed, a registration seems almost in hand.

The offer is tempting. After all, you’ve already invested considerable time and money in the trademark registration process, and agreeing to the disclaimer quickly resolves an issue that may be preventing allowance (for an intent-to-use basis application) or registration (for a use basis application). Before you give in to the temptation, however, take a moment to consider whether such a disclaimer is really in your best interest. Indeed, it may not be.

A trademark disclaimer is an acknowledgement that you do not claim exclusive rights to a specified portion of your mark. While the trademark in its entirety may be registered, the disclaimed portion is “unregistrable” on its own. For example, disclaimers can be necessary for words or symbols within a mark that are generic, merely descriptive, or geographically descriptive. The disclaimer, therefore, establishes in the record that you are claiming no exclusive rights to this unregistrable portion apart from its inclusion in the mark in its entirety.

The presence of a disclaimer does not remove the unregistrable portion from your mark, as the mark is protected as a whole, nor does it affect the appearance of your mark or how you use it. It does, however, appear on the mark’s certificate of registration. Consequently, the disclaimer is a public admission that a component of your mark is unregistrable.

Such an admission can hurt your ability to enforce your trademark rights. Consider the scenario in which you want to enforce trademark rights against a third party’s mark that contains a term that you have disclaimed in your own mark. For example, your mark “SWEET DREAMS” disclaimed “sweet” for ice cream because the examining attorney asserted “sweet” describes the taste of ice cream. Although you considered “SWEET DREAMS” a double entendre, meaning that “sweet” did not need to be disclaimed, you decided not to push back, and you agreed to the disclaimer. You promptly received your "SWEET DREAMS" registration.

Later, you discover that another party is using “SWEETEN YOUR DREAMS” for ice cream. You determine that the third party’s mark is confusingly similar to your own, based in part on the fact that the third party’s mark includes a form of “sweet.” If you attempt to enforce your mark in this case, the third party may rely on your disclaimer to argue that your lack of exclusive rights in “sweet” weakens the likelihood of confusion between the marks. However, your offensive position would have been virtually a slam dunk had you not disclaimed “sweet” on your registration.

Avoiding a disclaimer can also give you a defensive advantage. Consider the scenario in which you receive a cease-and-desist letter alleging that your mark, “SWEET DREAMS” (disclaiming “sweet”), for ice cream, is confusingly similar to a third party’s mark, “DREAMY,” for an ice cream shop. Your disclaimer of “sweet” likely places more legal emphasis on “dreams” in evaluating a likelihood of confusion because the disclaimer functions as an admission that the disclaimed word is descriptive or generic – an unfortunate result, given the similarity of “dreams” and “dreamy” and the relatedness of the respective goods and services. In this case, your willingness to accept a disclaimer to obtain a smoother path to registration for "SWEET DREAMS" could become a nightmare that causes you to lose the mark all together.

In such a scenario, a strong position is to argue that your mark as a whole (SWEET DREAMS) is not confusingly similar to the third party’s mark (DREAMY). Such an argument, however, is weakened by the presence of a disclaimer of exclusive rights in “sweet.” The disclaimer allows the third party the easy advantage of arguing that the presence of “sweet” does little to lessen confusion, given that you have disclaimed rights to the word apart from the mark as a whole. Accordingly, had you not entered a disclaimer for “sweet,” you would have had a stronger defense against the third party’s allegation of a likelihood of confusion.

Therefore, the next time you are faced with a request for a disclaimer, resist the temptation to simply agree in order to expedite the application process. While agreeing is often a fast track to publication and, ultimately, registration, it may be more valuable to spend time assessing and crafting an argument against the necessity of the disclaimer. Fortunately, there are legal arguments to help accomplish this, which may help you in choosing a mark.  

For example, consider whether consumers would view your mark as a whole as creating a distinct commercial impression separate and apart from the meaning of its individual parts. If so, you may have a strong argument that a disclaimer is unnecessary on the basis that your mark is a “unitary” mark, meaning consumers would be unlikely to parse out the individual components of the mark.

In the “SWEET DREAMS” for ice cream hypothetical, there is a strong argument that the mark is a “unitary” mark that does not require a disclaimer. Specifically, although the term “sweet” is merely descriptive of the goods (ice cream), the mark as a whole has a distinct commercial impression apart from the descriptive use of “sweet” because it is a reference to a common idiom for wishing someone good night. Further emphasizing the unitary nature of the mark, it can be argued that the mark is a double entendre, as the mark as a whole is capable of two interpretations – a reference to the common idiom and a reference to the sweet taste of ice cream. Consequently, a disclaimer is not necessary.     

Pushing back against a disclaimer request may result in the short-term pain of delaying registration; however, it may also provide the long-term gain of maximizing your ability to both enforce and defend your trademark rights down the road. Even if you cannot overcome the disclaimer requirement by argument, you’ll sleep better knowing you tried to obtain stronger trademark protection.