It is common for the United States Patent and Trademark Office (USPTO) to require you to disclaim exclusive rights of particular words in a trademark, which normally occurs with general terms or descriptive phrases. For instance, if you want a trademark for your company’s name, “Brick Top’s Auto Shop,” the term “Auto Shop” would most likely be too general by itself to permit USPTO registration as a trademark. While you should be able to gain exclusive rights to the words, "Brick Top's," to prevent another company from using it, as in "Brick Top's Sandwich Shop,” you would most likely have to disclaim exclusive rights to the words, "Auto Shop." This means that another company could potentially register a trademark for the name, "Jones Auto Shop," but would not be able to register a company with the words, "Brick Top's."
If the words that are to be disclaimed ("Auto Shop") are not particularly essential to the branding of your organization, and you are unafraid that your competitor’s use of those same words will cause any kind of confusion to your consumers, than accepting the disclaimer may be beneficial. Clearly, there are tons of auto shops out there in the market, and your brand recognition may come from unique words, such as, "Brick Top's." By agreeing to disclaim the words, "Auto Shop," it may be possible to insure a faster publication of the trademark.
However, if the words that need to be disclaimed are essential to the branding of your organization, there are ways of proving that the words must be accepted as part of the entire trademark. For instance, if your company is using a term that is normally seen as descriptive, i.e. “Auto Shop,” proving that your company provides services that differ from those normally found in an auto shop may allow you the exclusive rights to use those words as a part of your mark. Another way to claim exclusive rights of a general term would be to show that the trademark is unitary, meaning it creates a single, recognizable unit that is unlikely to be split into its individual components in the mind of the consumer. Using the “Brick Top’s Auto Shop” example, the rhyming nature of the words may give the phrase a unitary mark, which creates in the consumer’s mind a singular unit eligible to be trademarked.
-by Dorian V. George, Legal Assistant
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Labels: branding, intellectual property, trademark, trademark application, trademark disclaimer