1.5 Disclaimed Words
The USPTO has indicated that “[t]he purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone and therefore do not function as a trademark.”
Where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the Complainant to provide additional evidence that the words have acquired a secondary meaning and, thus, status as a trademark as required by policy.
A disclaimer disclaims any right in the disclaimed term apart from the mark as shown in its entirety.
Additional Information
Relevant Decisions
Nostrum Oil & Gas Plc v. MERCY 3fold, JOY, WIPO D2024-1519, <zhmnllp.com>, Denied
The Complainant has shown rights in respect of the Complainant’s trademark. However, the verbal elements “LLP”, “ZHAIKMUNAI” and “A MEMBER OF THE OIL & GAS GROUP ” of this trademark are disclaimed as non-protectable… However, if the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms.
USA QP ENTERPRISES Inc. dba USA Quickprint v. Admin Support / CR Consulting Ohio LLC, NAF FA2310002066056 (2023), <usaquickprint.com>, Denied
Where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the complainant to provide additional evidence that the words have acquired secondary meaning and, thus, status as a trademark as required by Policy ¶ 4(a)(i).
Scentsational Shoppe, Inc. v. Jeffrey Potts, The Common Scents, Inc., WIPO D2023-3525 <perfume-oils.com>, Denied
If “the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.3.
riskmethods GmbH v. LEVEL2 LLC / Lever 10 inc., WIPO D2019-0286 <riskmethods.com>, Denied
The disclaimer affects only the registration in the United States. No disclaimer has been given in respect of the other registrations.
Eric Levy v. Joseph Ahmadi, WIPO D2014-1369 <YourNeighborhood.com>, Denied
This omission is important, because it obscures the fact that the registration specifically disclaims any right in the text YOURNEIGHBORHOOD apart from the mark as shown. The Panel suspects legerdemain on the part of Complainant. Not only was this important information omitted from the Complaint, but Complainant actually asserted in the pleadings that “the Domain Name completely incorporates Complainants’ [sic] Mark.” The manifest falsity of that statement persuades the Panel that Complainant was trying to pull a fast one.
Digest Commentary
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Digest Vol.5.16 <cigarettesmokeremovalservices.com>, Transfer
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Digest Vol.5.8 <insurancesfornonprofits.org>, Transfer