Disclaimer Requirement for Multi-Class Trademark Applications

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Recently when working on a Trademark Application for a Pittsburgh-based company, the United States Patent and Trademark Office Examining Attorney rejected the Application and required a disclaimer of the word “ENERGY” as it related to International Class 032 for beverages on the basis that the word “ENERGY” is descriptive for beverages.

There were multiple classes in the Application. If you use the United States Patent and Trademark Office Response to Office Action Form Disclaimer field, the word “ENERGY” would be disclaimed for the entire Application. However, the word “ENERGY” was not descriptive as to a majority of the other classes. You can have a disclaimer that applies to only certain classes or goods.

When faced with the situation where the descriptive part of the mark is limited to only certain goods or services, it is best not to use the general Disclaimer provided by the USPTO Response to Office Action Form. Instead, use the Miscellaneous Statement section of the USPTO Response to Office Action Form to write your own disclaimer statement limiting the disclaimer to only the goods or services considered to be descriptive.

– John C. Thomas III

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