What is a Trademark Disclaimer, Anyway?

Taking a slight break from the current news and topics this week to talk about our favorite topic at OG+S: trademarks.

A Little Background:

Not every word or phrase in the universe can be trademarked. Specifically, words that are generic or descriptive (without something more) cannot be protected. It sounds complicated, but most of the time, it’s really not. In fact, whether you realize it or not, you intuitively know this already. Time for an example:

Example 1: If I were to start a store called “Collin Schaefer’s Eyeglasses Emporium” I probably could not trademark that name out of the gate, for a few reasons. Most notably, the words “Eyeglasses Emporium” are generic or at best, descriptive of what my store is or what product I’m selling (in this case, eyeglasses). To put it another way, when you see my sign, “Collin Schaefer’s Eyeglasses Emporium” you know exactly what I’m selling, right? From a policy perspective this rule makes sense, the government does not want to condone a monopoly on the use of commonplace words that everyone uses on a daily basis.

So, the above example is super blatant – but what about trademarks that contain words that can be trademark and words that cannot? Enter, the disclaimer.

The Disclaimer:

Example 2: What if I want to trademark the product name “Zyertz Window Cleaner”? Certainly, Zyertz is a made up word, so it’s fanciful enough to be trademarked without an issue – but, “Window Cleaner,” not so much. In this case, the USPTO would allow the registration of “Zyertz Window Cleaner” as a whole, but would ask that I disclaim the words “Window Cleaner” because they are generic\descriptive of my product. If I agree, my entire mark will be protected – but because of the disclaimer, I could not maintain a trademark infringement suit against someone who starts a competing product called “Kaboom Window Cleaner” on the basis of their use of the words “Window Cleaner.”

So, all in all, most of the time disclaimers are not a huge deal, even expected – in some cases.

But, we’re overlooking a big disconnect between marketing considerations and trademark law.

The Common Disconnect:

Marketing often wants the product to be as easy for the consumer to understand as possible. The thinking is, the easier it is for a consumer to understand my brand and product, the less money I will have to spend teaching them what it is, and then, convincing them to buy it. (Certainly, I’m sure the marketing department at Xerox was less than pleased in the early days – what the heck is a Xerox, anyway? I think “Copy Machine” lets the customer know exactly what they’re buying.)

But of course, we know that “Copy Machine” could never be trademarked for photocopiers because that’s way too generic\descriptive of the product. So, therein lies the constant struggle: do I choose an easy to understand name knowing that I may never be able to trademark it? Or, do I choose a name I know I can trademark, but also know I will have to spend more money on getting the consumer to understand and associate the name with my product?

Or, do I thread the needle (like many companies do) and try to get the best of both worlds? A fanciful part of the mark, followed by a descriptive part of the mark that I may have to disclaim?

You know what our answer is: go for a name you can trademark! Threading the needle is not impossible with some careful planning, and a federal trademark goes a long way when stopping competitors (and more importantly, knockoffs and hucksters). Additionally, undoubtedly more money will be spent in the beginning to clue customers in on a new, randomly named product – but the payoff in the long run can be huge because now you own the trademark (and hopefully, that market).

Zyertz Window Cleaner anyone?

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