The USPTO has helpful videos and TEAS instructions to help out trademark applicants, but how disclaimer affects your legal rights and potential to be initially rejected for registration via office action?
Let’s talk about the disclaimer in terms of registrability and trademark owner’s right.
“Disclaimer” is pretty straightforward as it means you “disclaim” that you have an exclusive right to a certain word or phrases within your mark. You register your trademark to use the trademark exclusively, so disclaimer apparently works against you.
What happens if you fail to include a proper disclaimer?
To avoid an office action initially rejecting your application for trademark registration, you will want to add a disclaimer to certain words that simply describe your product or service including generic terms, common symbols, and geographical identification. See How to satisfy a disclaimer requirement | USPTO
Let’s say you failed to include disclaimer when needed.
The USPTO will initially refuse registration by issuing an office action with a suggestion that what portion of your trademark should be disclaimed.
If you simply agree to the examiner’s suggestion in writing, you’re good to go. The re-examination usually take place in a couple days to months, depending on your examiner’s work schedule, but you only delay using ® next to your trademark.
You can possibly persuade that the disclaimer suggested should not be required while responding to the office action, so if you are not certain if you disclaim certain words, maybe you should take a shot without a disclaimer. Of course, if you don’t mind some delay and writing back and forth with the USPTO.
Let’s say you included disclaimer when not needed.
I can’t really think of a situation where a trademark examiner issues an office action because the examiner believes you do not need a certain disclaimer.
For one, examiners presumably do not know your product or service as much as you do. If you submit a disclaimer, they will probably simply acknowledge it.
What does disclaimer do to your legal right?
It certainly reduces the scope of your trademark right. And it comes to the likelihood of confusion issue with competing marks. I will explain with a hypothetical example of Buffalo Paradise®.
Buffalo Paradise®—a vegetarian restaurant
Here, your buffalo is, of course, herbivore, but that does not mean it describe a vegetarian cuisine or food service. You do not need a disclaimer.
Because you do not have a disclaimer, your registration can potentially block someone registering Buffalo Heaven™ for a restaurant service. There is no set formula, but the first word “Buffalo” is kind of dominating, and thus they are confusingly similar.
Buffalo Paradise®—a wing restaurant
Here, you probably have to disclaim Buffalo.
As you do not have a right to Buffalo, so the Buffalo Heaven™ becomes less confusingly similar to your trademark, which means somebody can more likely register Buffalo Heaven™.
Disclaimer only works against your trademark right.
In the above hypothetical scenario, we compared only “paradise” and “heaven” because of disclaimer. But when you compare Buffalo Paradise™ and Snack Heaven™, the word “Buffalo” makes Snack Heaven™ very different from Buffalo Paradise® even though “heaven” and “paradise” are similar in meaning.
In other words, disclaimer only reduces your trademark right.
When required, disclaimer works against you. So, an ideal trademark would not have a disclaimer. However, sometimes you want to include certain words that need to be disclaimed no matter what.
In that case, I recommend you start the trademark registration process in advance using an ITU application and do not include disclaimer in your initial application. A lack of your disclaimer does not cost your extra USPTO fees. It costs extra time and some work, but if you started early, you can afford waiting for a few months more before you start print out brochures and build signs for your business with ®, sitting on your priority date (filing date).