Suppose you have a pending U.S. trademark application for your trademark on goods or services for your business and a term or wording in the trademark is descriptive of your goods or services. During the examination of your trademark application, the examining attorney refuses registration because the term is merely descriptive of your goods or services and requires a disclaimer. Should you always agree to the disclaimer because your trademark application will be passed onto publication? The answer is NO! and you should argue against the requirement for a disclaimer particularly if the descriptive term is a unitary or incongruous term or a double entendre.

First, how do you determine whether a term in your trademark is merely descriptive? “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3, U.S.P.Q.2d 1009, 1009 (Fed. Cir. 1987)). The terms in a trademark are merely descriptive in relation to the goods and/or services, and not in the abstract. Id. (citing In re Abcor Dev. Corp., 588 F.2d 811, 813-14, 200 U.S.P.Q. 215, 218-219 (C.C.P.A. 1978); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 U.S.P.Q.2d 1778, 1783 (Fed. Cir. 2003)).

Second, are descriptive terms subject to a disclaimer in a trademark application? According to 15 U.S.C. § 1052(e)(1), merely descriptive terms are unregistrable, and subject to disclaimer if the mark is otherwise registrable. Can an examining attorney require you to comply with a disclaimer requirement and add a disclaimer to the trademark application? Yes, an applicant can be required to disclaim an unregistrable component of a trademark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. § 1056(a). What happens if you don’t comply with the disclaimer requirement and add the disclaimer to the trademark application? Your trademark may be refused registration because you did not comply with a disclaimer requirement. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 U.S.P.Q.2d 1859, 1860 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 U.S.P.Q. 46, 47 (C.C.P.A. 1975).

Is there an exception to the disclaimer requirement? Yes, there is an exception to a disclaimer requirement based on the descriptive term being so merged with other elements of a composite mark, that they form a unitary, non-descriptive whole that renders a disclaimer unnecessary. In re EBS Data Processing, Inc., 212 U.S.P.Q. 964, 966 (T.T.A.B. 1981). What is a unitary, non-descriptive whole? “[A] unitary [phrase] simply has no ‘unregistrable component,’ but is instead an inseparable whole.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 U.S.P.Q.2d 1047, 1051 (Fed. Cir. 1991).

Under the USPTO Trademark Manual of Examining Procedure (T.M.E.P.) § 1213.05, a trademark or portion of a trademark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. The examining attorney must consider several factors in determining whether the term is part of a single or unitary trademark: whether lines or other design features physically connect it; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp., 950 F.2d at 1561, 21 U.S.P.Q.2d at 1052.

Can the applicant argue against the disclaimer requirement in a pending trademark application with the USPTO?  Yes, the applicant can always argue against the disclaimer requirement. To establish that a disclaimer is required, the examining attorney has to present evidence that the term is merely descriptive of the goods or services. The applicant should argue that the term is unitary, congruous, or a double entendre. The examining attorney is analyzing only the term to be disclaimed, never considering the trademark in full. The applicant should argue that by doing so, the examining attorney demonstrates why it is improper for unitary marks to be broken up into separate components to analyze whether a disclaimer is required. T.M.E.P. § 1213.05. The applicant may argue that based on the limited evidence of record, the USPTO has not met the difficult burden of establishing that the term is merely descriptive for the goods or services. See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143 (Fed. Cir. 1987). Descriptiveness is a fact-intensive determination, and any doubts are to be resolved in the applicant’s favor. Id.

However, can the argument against the disclaimer requirement be successful with the USPTO?  In a recent case before the Trademark Trial and Appeal Board (“TTAB”), In re Ol Happ’s Place Restaurant, LLC, Serial No. 90738221, (Decided January 26, 2024) (Non-Precedent), the TTAB found that the wording “BARN AND GRILL” is unitary and a double entendre such that the requirement for a disclaimer of “grill” in BARN AND GRILL is unnecessary. In Ol Happ’s Place Restaurant, Ol Happ’s Place Restaurant, LLC, the applicant of the trademark application, sought registration on the Principal Register of a word and design mark

for “restaurant services; bar services”. The examining attorney refused registration based on the applicant’s failure to comply with a disclaimer requirement. The applicant refused to add a disclaimer of “GRILL” in the trademark application and appealed the final refusal. On appeal, the USPTO reasoned that the term “BARN AND GRILL” brings to mind a restaurant with a barn and a grill and also brings to mind the common term “bar and grill”. As such, the USPTO issued a decision finding that the disclaimer of “grill” was unnecessary, reversing the disclaimer requirement.

In summary, during the examination of a U.S. trademark application, an examining attorney may require an applicant to disclaim an unregistrable term of a trademark otherwise registrable if the term is merely descriptive of the goods or services. As a practice tip, the applicant should always argue against the disclaimer requirement because either the examining attorney has not established by sufficient evidence that the term is merely descriptive of the goods or services and/or that the term is unitary, incongruous, or a double entendre. In the alternative, if the applicant wants to comply with the disclaimer requirement, the applicant should state that it disagrees with the disclaimer requirement and that the disclaimer is being made under protest to the further prosecution of the application.