A disclaimer requirement: giving up a word you never owned anyway
The examining attorney identified a component of your mark that is generic or descriptive on its own, and requires you to state that you claim no exclusive right to that component apart from the mark as a whole.
15 U.S.C. §1056(a) · TMEP §1213
What the refusal is really about
This is normally the least costly item in an office action. It is a statement about one piece of your mark, not a refusal of the mark.
Your rights in the mark as a whole are unaffected. What you give up is the ability to stop someone else from using that one ordinary word on its own — which you never had, because ordinary descriptive words stay available to everyone in the trade.
The disclaimer is entered in a specific field with specific wording, and getting the wording wrong is a common reason a response comes back.
Most disclaimer requirements are worth simply agreeing to. Arguing about one usually costs more, in time against a hard deadline, than the point is worth.
What the examining attorney weighs
The test applied here: An unregistrable component of an otherwise registrable mark must be disclaimed.
- whether the component is generic or merely descriptive of the goods
- that disclaiming does not concede the mark as a whole is unregistrable
Agreeing is usually right — but notice what it sits next to
Where a disclaimer needs thought is when the same office action also refuses the mark as merely descriptive. Then the two items pull against each other: you are arguing that the mark as a whole requires imagination, while conceding in the same document that one of its components describes the goods. That is a perfectly coherent position — a mark can contain an unregistrable component and still be registrable as a whole — but it has to be said explicitly rather than left for the examining attorney to reconcile. The other thing to check before agreeing is scope. Read exactly which component you are being asked to disclaim. If the requirement reaches further than the ordinary word, or covers the distinctive part of your mark, it is worth answering rather than accepting, because a disclaimer you agree to is on the record for good.
What makes a response stronger
- Using the disclaimer wording exactly as the USPTO expects it, in the correct field
- Reading precisely which component the requirement covers before agreeing to it
- Saying plainly, where a descriptiveness refusal sits alongside it, that disclaiming a component concedes nothing about the mark as a whole
Your deadline, and the number a lot of pages still get wrong
You have 3 months from the issue date printed on the office action — not from the day the email arrived, and not from the day you opened it. One extension of 3 more months is available for $125, and you have to request it before the original date passes (37 C.F.R. §2.62(a)(2)).
This changed on December 3, 2022. Before that the period was a flat six months, and a great deal of guidance still published online says so. If a page tells you that you have six months by right, it is describing the old rule.
USPTO: if a response is filed after the deadline the application will be abandoned and application fees will not be refunded. That is the whole reason to act on this now rather than in a month.
You are allowed to answer this yourself
If the applicant is domiciled in the United States or one of its territories, you may respond to an office action in your own name. You filed the application yourself; you may answer it yourself. Nothing about a refusal changes that.
If the applicant is domiciled anywhere else, the USPTO requires a US-licensed attorney to represent you. markanswer cannot help in that case and refuses the sale before taking any payment, rather than selling you a document you are not permitted to file.
When to hire a trademark attorney instead
If the requirement reaches the distinctive part of your mark, or if agreeing would leave you with a registration too narrow to be worth having. At that point what the registration is actually worth is the question, and it is worth an hour of a professional's time.
Answering this one in your own name
markanswer drafts the response from your office action and your own answers about your business, organised the way the examining attorney reads it, with a plain statement under every argument of where it is weak and what evidence would help. You review it, correct anything that is not true of you, sign it and file it yourself through TEAS. $149, once. Read a complete one first — it is free.
The other four refusals
This page explains a category of USPTO refusal in general terms. It is not legal advice about your application, and markanswer is not a law firm and never represents anyone before the USPTO. Every citation on this page comes from the same committed authority list the drafting step works from.