- Hi everyone,
I am Attorney Aiden Durham
with 180 Law Co in Colorado
and welcome back
to All Up In Yo'Business.
(upbeat music)
On this episode of All Up In Yo'Business,
we're gonna talk about trademarks
and things that can come up
during the trademark application process.
Specifically I'm gonna tell you guys
about trademark disclaimers.
What it means to disclaim a part of your trademark
and why and when you might need to do so.
But first, don't forget to like,
subscribe and share
and check the description for links
to additional information and resources,
including my new introduction to trademarks guide,
that you can download for free,
that link is in the description.
And while you're there,
make sure you check out my channel memberships
because I'm gonna be posting a member's only video
as a followup to this one,
where I'll walk you through the process of responding
to a disclaimer requirement
on your trademark application.
All right, so the trademark application is
a long and pretty involved process.
It is by no means short or easy
and there are a lot of different things
that can come up along the way.
Typically, within about three months
after you've submitted your trademark application,
your application will be assigned
to an examining attorney
with the United States Patent and Trademark Office.
This examining attorney
is the person who's gonna be
evaluating your application
to make sure all the information
on your application is complete
and that your trademark is available
and eligible for registration.
The examining attorney will issue an office action,
if there are any issues
with your trademark application,
if information needs to be clarified or corrected,
or sometimes the examining attorney will just have questions
or we'll need some additional information
from you for your trademark.
It's super common to receive some kind of an office action
on your trademark application.
But office actions can be issued
for a huge variety of reasons.
There are all kinds of different reasons
that the examining attorney
might give you an office action.
One of the really common reasons
that you might receive an office action
on your trademark application
is for a disclaimer.
It will look something like this,
now don't get this confused
with other types of disclaimers
that you might hear of in business,
or in the legal world.
This isn't the kind of disclaimer
that you might use to
avoid liability for something,
this is a totally different kind of disclaimer.
When it comes to trademarks,
a disclaimer is a statement that you, the applicant
or the trademark owner,
do not claim the exclusive right to use a specific element
or elements of the trademark.
This usually happens when the trademark contains words
which are merely descriptive,
generic or otherwise don't function
as a trademark.
The purpose of the disclaimer with trademarks
is to permit the registration of trademark
that's registrable as a whole,
but which contains elements
that might not be registrable on their own.
For example, descriptive terms used alone,
typically aren't going to be eligible
for trademark registration.
The fact that a trademark contains descriptive words,
is not enough to justify refusal to register it.
Unless the trademark consists
of only those descriptive words,
registration can't be refused
assuming of course it's otherwise eligible for registration.
When it comes to trademark registration,
a disclaimer of a certain word
or component of a trademark
is really just saying that,
as it relates to that exact trademark,
no rights are being asserted in the disclaimed element alone
only in the trademark as a whole.
In other words, simply put,
what the disclaimer
all you're really saying is that
you're not claiming any rights
to use that exclusive term on its own
except for exactly how you're using it in your trademark.
If you know, for sure that a certain term
or a portion of your trademark
is going to need to be disclaimed,
you can just disclaim it
right off the bat
in the application
when you submit it
but you don't have to do that in the application.
The examining attorney will issue an office action,
if he or she determines that a disclaimer may be necessary,
and they'll also give instructions
and direction about how to make that disclaimer.
So you don't need to be especially concerned
about the disclaimer issue,
When you submit your trademark application.
The office action will say something like,
"Applicant must provide a disclaimer
of the unregistered double part of the applied for mark
even though the mark as a whole,
appears to be registrable."
It'll then go on to specify the element or elements
of your trademark which need to be disclaimed
and the reasons for it.
Like I said, it's typically
because that element or that word
or term is generic
or merely descriptive of an ingredient,
quality, characteristic,
function, feature, purpose
or use of your goods and services.
It will typically also include some additional evidence
like a dictionary definition of the word
or something to support their claim
that the word is descriptive
or otherwise needs to be disclaimed.
The office action will then go on to say
something like "applicant may respond to this issue
by submitting a disclaimer
in the following format"
and then they'll tell you
exactly what you need to disclaim
and exactly how that needs to look.
The phrase, the exact phrase that they're looking for
is "no claim is made to the exclusive right to use "X"
apart from the mark as shown."
Again, make sure you check out my channel memberships,
so you can watch the exclusive members only video
about how to actually respond
to the disclaimer requirement
in an office action.
I'll give you a few examples
of how disclaimers work.
So I or my business rather
has two registered trademarks
and one pending application.
I have a registered trademark
for my business name 180 Law Co
as well as for All Up In Yo'Business.
My trademark for 180 Law Co is used with my law office,
where I provide legal services.
The term "law" is disclaimed
because that describes the services that I offer.
So as part of that trademark registration,
I had to disclaimed the word "law"
in my trademark.
Very similarly with All Up In Yo'Business
I used All Up In Yo'Business with this channel
and with other services that have to do with business.
So the word "business" in my trademark
is descriptive of the goods or services
that I use the trademark with
and so I had to disclaim the word "business"
in that registration as well
and really all that means is that
I don't have the right to enforce against someone else
using the word "law"
or "business" in their trademark,
unless they're using it
in a very similar way
that makes it look like 180 Law Co
or All Up In Yo'Business.
Really, I'm just saying that
I don't have any specific rights
to the word "business"
or the word "law"
except for how I'm using them
in my trademark registrations.
But it doesn't impact my ability
to enforce my trademark rights
against somebody else
who may be using a trademark
that's similar to mine as a whole.
Now these rules for disclaimers and trademarks
don't apply exactly the same across the board.
There are a lot of situations where
we might not have to disclaim a descriptive term
or a term that might otherwise need to be disclaimed
and sometimes it's appropriate
to respond to the office action with reasons
why the disclaimer shouldn't be required.
But in most situations,
if the examining attorney is asking for a disclaimer,
it's usually appropriate
to make that disclaimer requirement
and ultimately in most situations,
it doesn't really have a huge impact
on your trademark registration
or the overall strength of your trademark rights.
So to summarize,
a disclaimer on your trademark registration
is simply an acknowledgement that
you don't have exclusive rights
to a certain element of your trademark.
In most situations,
a disclaimer isn't gonna have any significant impact
on your trademark
one way or the other,
but there are certainly situations
where it might be beneficial
or appropriate to try
to avoid that disclaimer requirement.
Even though responding to this disclaimer requirements
in office actions are relatively easy
and straightforward in most cases.
It's still always a good idea
to consult with a lawyer
before you make a disclaimer
on your trademark.
That's all for this episode folks,
drop a comment below,
let me know what you think
and don't forget to check the description
for additional links
and information
and resources
including a link to download my introduction
to trademarks guide
and check out my channel memberships,
if you want access to that exclusive members only content.
Thank you all so much for watching,
I am Aiden Durham
and I'll see you next time.
(upbeat music)