What Are They?
A disclaimed term is where part of your trade mark application has an unregistrable element, and you are indicating that you do not hold any exclusive rights of this “disclaimed term”.
For many businesses such as “Costa Coffee” that have descriptions of their business in their name, a disclaimer is needed for the word “Coffee” as to prevent the first trade mark owner from having a total monopoly over any other shop using the term coffee in their name. A disclaimer does not prevent you from using the disclaimed term in your trade mark, or alter the appearance of your applied trade mark, it is just a statement that other businesses are freely allowed to use the unregistrable part of your trade mark application.
What words would typically need a disclaimer?
Descriptive of your product/service – One of the main requirements for a trade mark is that it be distinctive, and not in anyway descriptive as to what your business sells. For example, Burger from “Burger King” is disclaimed as it describes the fast food chain’s business. Likewise, if your business was selling fast food, you would not be able to have exclusive right to having a burger in your logo.
Geographical indicators – Any words or image that indicate as to the origins of the goods or services must be disclaimed. For example, for a business named “Birmingham Fields” making clothing, the term Birmingham must be disclaimed. Likewise, a UK based business using the United Kingdom outline as part of their logo would have to disclaim the outline.
Generic Terms – Words that are common within the classification that the trade mark is applied for. For instance, although once a trade mark held by Apple, the terms “App” has now become generic for computer software, so any trade mark with the term “App” in it would have to be disclaimed.
Laudatory words – superlatives that describe the business or product as superior to competitors would need a disclaimer. For example, “probably the ‘greatest’ beer in the world” greatest would be disclaimed.
Well known symbols – Any symbols that are well known within the classification. A financial business would need to disclaim “£” if it is part of their business name or logo.