The Trademark Disclaimer Provision of the Lanham Act: Is USPTO Flexibility Worth Litigant Ambiguity?, 17 J. Marshall Rev. Intell. Prop. L. 305 (2018)

Most trademark applicants and the attorneys who counsel them are familiar with the requirement that they disclaim terms within their trademarks because those terms are descriptive or generic. The United States Patent and Trademark Office’s authority to direct applicants to disclaim terms is codified in the Trademark Disclaimer Provision of the Lanham Act, which provides examiners with a great deal of discretion. The same provision has been interpreted as providing applicants with the options of: taking conflicting positions, e.g., that the term is neither descriptive nor generic in the context of their marks, when asserting common law rights; and pursuing rights without disclaiming the term when there has been a showing of secondary meaning. But for all of the ease of implementation and application, now, more than half of a century since codification of the Trademark Disclaimer Provision, one should consider whether it is worth the effort and ask: Does anyone gain by allowing examiners to require that applicants disclaim generic and descriptive portions of their marks?