To protect your brand, trademark is a MUST. In our resource “3 Steps to Register Your Trademark”, we broke down how to protect your mark. Remember, marks that are “fanciful,” “arbitrary,” or “suggestive” are more likely to receive trademark protection. Marks that are “descriptive” or “generic” cannot usually be protected. So what happens when your brand includes a mix of these types of marks? In some cases, you may still be able to protect your branding elements by disclaiming the descriptive or generic portion of the mark.
Okay, So Here’s an Example:
Say your business is called “Wilkmazz Pizza.”
- “Wilkmazz” is fanciful, because it’s a made-up word with no dictionary meaning.
- “Pizza” is generic, because it describes an entire class of product. Imagine if the United States Patent and Trademark Office (“USPTO”) allowed people to trademark words that are generic, like pizza. That would prevent everyone else from describing what they’re selling. And we don’t want that! Think of how hard it would be to find a good slice of pizza!
- “Pizza” is also possibly descriptive, if you are, in fact, selling pizza, because it describes what your business does/product is.
This is where disclaiming trademark comes in!
Disclaiming, In a Nutshell.
Disclaiming just means that you do not claim the exclusive right to a non-protectable element of your mark. So if USPTO says, “Yo, you can’t register WilkMazz Pizza as a trademark because pizza is generic…” Well, we’ve got a couple of things to say about that…
- To USPTO: don’t you ever say pizza is generic again; pizza is incredible.
- To You: don’t let USPTO crush your dreams just yet! You can disclaim “Pizza” from your mark!
That’s the whole point of the disclaimer: it allows you to register a mark that can be protected as a whole, but contains descriptive or generic elements that aren’t protectable standing alone, without giving you rights to the non-protectable elements in the mark.
So, the generic or descriptive element is still techhhhhnically part of your mark, but you can’t use it to differentiate your brand from another brand. For example, once “Pizza” is disclaimed, you can enforce your trademark against a competitor business that is using “WilkMazz” in their name, but not because they use the word “Pizza” in their name.
There’s a Catch, Though.
Protection of your mark may depend on whether the non-protectable element is generic or descriptive. When you disclaim an element that is only generic, you’re good to go! BUT, when the element is descriptive, your trademark may still get rejected, even if you disclaimed part of it.
Why the distinction? Well, the short answer is that it has to do with where generic and descriptive fall on the spectrum of trademark protection. Generic words can never be protected on their own, but descriptive words may eventually become “distinct” enough to warrant protection. Because of this, generic and descriptive elements are evaluated differently by USPTO examiners, and unfortunately, it’s really up to the examiner to decide that a mark is descriptive.
Still confused about how this works? Let’s revisit our Wilkmazz Pizza example to clarify:
|BUSINESS NAME||WHAT DOES THIS BUSINESS DO?||WHAT IS THE ELEMENT “PIZZA” CONSIDERED?||WILL A DISCLAIMER WORK?|
|Wilkmazz Pizza||Sells pizza, duh.||Generic AND descriptive.||Maybe, maybe not. It’s really up to USPTO.|
|Wilkmazz Pizza||It’s a law firm that has nothing to do with pizza, the partners just liked how it sounded.||Just generic, not descriptive, because they don’t actually do anything pizza related.||Yes, it’s all good!|
We hope this resource helps you understand another possible option available to you in protecting your brand, but if you still have questions about the trademark process, let us know! And at the very least, maybe this resource gave you an idea of what to eat for dinner tonight- just don’t forget to save us a slice. 🍕😎
By: Olivia Phillips – 12/22/17
Disclaimer: Although this article may be considered advertising under applicable law and ethical rules, the information in this article is presented for informational purposes only. Nothing should be taken as legal advice. Reading this article does not form an attorney-client relationship with us. An attorney-client relationship is formed through a signed engagement agreement. If you would like further information, wilkmazz pc would love to help you out! Feel free to reach out with any questions.
Photo by Brad Neathery