USPTO Review – Disclaiming Descriptive Portions of a Brand

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Richard Rimer

February 23, 2022

Trademark applications are reviewed by the USPTO to ensure the application meets certain requirements.  There are over 30 offices of USPTO examiners.  I know dozens of these examiners on a first name basis.

One item the USPTO must check is whether any words or other items in the brand merely describe the goods or services listed.  The USPTO is quick to request that the applicant “disclaim” the rights to these terms to prevent parties from claiming exclusive rights in common words.  These requests are often reasonable, but you should be prudent about giving away your rights.

Calvin filed an application to register his Captain Cajun Canteen.  The USPTO requested that he disclaim the exclusive rights to “Cajun Canteen” since this phrase described his restaurant.  I convinced the USPTO to allow him to disclaim these words independently, but not as a whole phrase given the alliteration. Calvin now has additional rights over the term “Cajun Canteen.”

Introduce me to the brand agency whose clients request brand names with informative words to reduce advertising spend.  Let them know that I can help maximize the protection of those brands.