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ARTICLE · 07 SEPTEMBER 2021

Disclaimers And Unitary Marks

Cowan, Liebowitz & Latman, PC
Cowan, Liebowitz & Latman, PC
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Cowan, Liebowitz & Latman, PC

Cowan, Liebowitz & Latman, PC

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When can the U.S. Patent and Trademark Office require you to make a disclaimer in your application to register a mark, what does it mean, and when can you resist doing so?

United StatesIntellectual Property

When can the U.S. Patent and Trademark Office require you to make a disclaimer in your application to register a mark, what does it mean, and when can you resist doing so? 

When filing a trademark application, there are multiple steps.  If the examining attorney determines that there is an issue, he or she will send an office action to the applicant. There are many issues that may be raised in an office action that can prevent a trademark from being registered.  One of them is a disclaimer requirement.

A disclaimer is a statement that the applicant does not claim the exclusive right to use a descriptive, generic, geographic, or otherwise unregistrable wording, design or symbol apart from the mark as shown in the application.  The reason for the disclaimer is that anyone should be free to use that component in other marks.

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