A trademark will be considered unitary when it creates a commercial impression independent of any unregistrable element of the mark. If the mark is declared to be unitary, then no disclaimer is required. If an applicant can avoid a disclaimer it is recommended because disclaimers weaken trademarks. Disclaimers are statements that the applicant or registrant does not claim the exclusive right to use a particular element of the mark (disclaimers often involve descriptive or generic terms). Disclaimers may be limited to certain classes or to only certain goods or services. The examining attorney must consider several factors when evaluating whether a mark is a single or unitary trademark. Some of these factors include the relative location of the respective elements, the meaning of the terms as used in connection with the goods or services, and the commercial impression made by the mark as a whole.
For example, a descriptive word can be combined with a distinctive term and when evaluating the mark in its entirety in relationship to the goods or services, the descriptive significance of the word is lost. See In re J. R. Carlson Laboratories, Inc. 183 U.S.P.Q. 509, 1974 WL 20015 (TTAB 1974), where it was held that E GEM for bath oil containing vitamin E was a unitary mark and thus no disclaimer of the "E" was required. In other cases, the combination of the terms may not create a separate commercial impression and a disclaimer will be required. See In re Lean Line, Inc. 229 U.S.P.Q. 781, 1986 WL 83684 (TTAB 1986), where it was determined that the mark LEAN LINE for low calorie foods was not a unitary mark and a disclaimer of the term "LEAN" was required.
Compound words may be considered unitary marks and therefore will not require a disclaimer. A compound word is comprised of two or more distinct words that are merged together to form one word. Examples of compound words are PROSHOT, BOOKCHOICE, or PULSELIGHT. A compound word that consists of a registrable element and an unregistrable element combined into a single word, will not require a disclaimer. Similar to compound words, telescoped terms will also be considered unitary. A telescoped mark is one that consists of two or more words that share letters. Examples of telescoped terms are SUPERINSE, LITENERGY, or VITAMINSURANCE. No disclaimer of an individual element of a telescoped word is required. This general rule applies regardless of whether the mark is applied for in standard character or as a special design format.
If an applicant wants to avoid a disclaimer, it would be wise to consider a mark that contains a double entendre. A double entendre is a word that is capable of more than one meaning or interpretation. Therefore, when a double entendre mark is applied to the goods or services there will be two meanings or connotations. If one of the meanings is not merely descriptive as applied to the goods or services then the trademark will not be refused registration. However, the second meaning or significance must be one that the public would readily make based on the mark itself. Examples of double entendre marks are SUGAR & SPICE for bakery products and THE SOFT PUNCH for noncarbonated soft drinks.
Trademarks that create incongruity are another category of unitary trademarks. An example of this type of mark is URBAN SAFARI for recreational parks or SNO-RAKE for a snow removal hand tool. When challenging a refusal in an office action or a requirement for a disclaimer, applicants should argue that their mark is a unitary mark that should proceed to the Principal Register without the need for a disclaimer pursuant to Trademark Manual of Examining Procedure §1213.05.
An important rule to keep in mind when filing a trademark application with the USPTO is that an entire mark may not be disclaimed. If a mark is not registrable as a whole, a disclaimer will not allow it to register. There must be something in the mark over and above the unregistrable portion that will allow for registration. If you do not have a term or word capable of registration in your mark, then you must have a distinctive design that will allow the mark to register. It can be difficult to determine which elements of a trademark are distinctive or if two elements merge, do they form a unitary mark? If you need assistance determining if your mark would be designated as a single or unitary mark or if you need assistance preparing a trademark application for filing with the USPTO, please contact our office for a courtesy consultation.