Disclaimers are a frequently raised issue by the Trademark Office. I see such rejections most often when a mark owner files the application himself and includes too much material in the mark, but they do occasionally arise when a trademark attorney files the application as well. Whoever files the application, disclaimers are common. Let’s say I run a diner here in Phoenix, and I want to register my diner’s name as a trademark. I submit an application for the mark TOM’S DINER. Whoops, I am definitely going to get a requirement to disclaim any rights in the word DINER apart from my larger mark.
A disclaimer is properly required anytime there is a separately unregistrable portion of a mark. Frequently, the Trademark Office will require that a disclaimer be made because a portion of the mark is merely descriptive. In the above example, DINER simply describes what Tom’s Diner is, so it may not add any distinctive aspect to the mark. You certainly couldn’t get a trademark on the word DINER in connection with diner services, so the Trademark Office will require you to disclaim any right in that word apart from your greater mark.
Not all disclaimer requirements should be given in to. The requirements are sometimes wrong. For instance, if the alleged descriptive portion of the mark is used in a distinctive way, it shouldn’t be disclaimed. Or, if the alleged descriptive portion of the mark isn’t actually descriptive (perhaps the word has several different meanings, only one of which is descriptive), then it shouldn’t be disclaimed. Many other reasons for not disclaiming exist.
If the disclaimer is inappropriate, it may or may not be worth the argument. If, for example, the Trademark Office makes a disclaimer requirement and then also informs you that your mark is confusingly similar to another mark, based on the non-disclaimed portions, you may want to try to argue that the word should not be disclaimed. It is improper for the Trademark Office to consider the non-disclaimed portions of a mark only, but it still happens. While the Trademark Office should consider the mark as a whole (though it give greater weight to the non-disclaimed portion), arguing that no part of your mark should be disclaimed can add strength to an argument against over the likelihood-of-confusion rejection.
While it is frequently recommended to not include unregistrable portions of the mark, there may be reasons that you want to register material that will have to be disclaimed anyway. If, for example, your whole name (TOM’S DINER) has garnered recognition and you think its value is as a whole, rather than as just TOM’S. Or, perhaps there are a number of other marks for TOM’S, and you think that adding DINER will help distinguish your application. There can be other reasons as well.
You should contact a trademark attorney if you have received an Office Action that requires a disclaimer. While often times the disclaimer is appropriate, there may be very strategic reasons to disclaim or not disclaim portions of your mark.