Lawyers love disclaimers, but so does the U.S. Trademark office, but not for the reasons you’d think. This blog explains disclaimers in this narrow context and why these disclaimers give rights to the public, rather than taking them away.
A trademark is a symbol, a word or a series of words that is legally protected as a representation of a company or product. When choosing which words to include in a trademark, it is important to understand that some words cannot be trademarked. Purely descriptive words, for example, cannot be trademarked.
But merely descriptive words, when used together with unique words, can be part of a protected trademark.
For example, if an applicant applies to register “Salty Dan’s Fish Market” as a word mark, the applicant must add a disclaimer that reads something like this: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “SEA SALT” “FISH MARKET” IN CLASSES 29, 30 AND 31 APART FROM THE MARK AS SHOWN.”
The disclaimer is needed because the term “fish market” is an “unregistrable” component of the overall mark. In other words, “fish market” is merely descriptive, and other companies need to use those words to describe their general business operations, e.g., that they operate a “fish market.” The disclaimer simply prevents Salty Dan from suing anyone who uses the words “fish market,” unless the use involves the entire name: “Salty Dan’s Fish Market.”
Other words in marks are also not registrable, including laudatory words (“The Best Ever”), generic words/designs (a picture of a yo-yo), geographic words/designs (Lakeville), business designations (Inc.), informational words (address information), well-known symbols (like the dollar sign for financial services) or deceptively misdescriptive words.