Resisting The Trademark

Disclaimer Temptation

 

By Peter Karol, a member of our Litigation Practice Group

 

D

isclaimer requirements are something of a fly in the trademark ointment.  A call from your attorney (“Great news!”) informs you that the Patent and Trademark Office has all but allowed your application.  Just one small thing - you need to disclaim three of the four words in your mark.  So, is it time to uncork the champagne, or gear up for a fight with the PTO? Naturally, it depends on the mark.

The PTO will often require an applicant to “disclaim” exclusive rights to one or more terms in a mark.  Even though the PTO has determined that the mark as a whole may be registered, it finds that a certain “component” part of the mark would be unregistrable standing alone (that is, that the component is merely descriptive, generic, etc.).

An ice cream parlor applying to register ABRACADABRA ICE CREAM, for example, would likely be required to disclaim exclusive rights to “ICE CREAM” apart from the mark as shown. The ICE CREAM element, after all, is clearly generic and unregistrable when taken alone.  While Abracadabra should be able to prevent others from calling themselves ABRACADABRA FROZEN YOGURT, the thinking goes, it should not be able to go around town shutting down every parlor that uses the term ICE CREAM in its name.

Applicants are often quick to accept disclaimers, for understandable reasons. After all, the objection can be resolved with an inexpensive and quick phone call, and the examiner is often dangling the promise of immediate publication.  However, there are good reasons to fight a disclaimer, particularly where the material sought to be disclaimed is central to your branding.

Although disclaimed subject matter may still be protected under various theories, a disclaimer should be approached as, in essence, a donation of the subject words or elements to the public domain.  Accordingly, anyone tempted to disclaim should ask herself, “Would I be upset if my direct competitor started using those terms in its own marketing?”  If the answer is yes, then she should strongly consider taking a stand against the requirement.

Sears, for example, was recently faced with such a question when it sought to register the familiar mark SEARS BLUE SERVICE CREW for its retail department-store services (i.e., its in-store sales team). In re Sears Brands, LLC, App. Ser. No. 77/558,337 (T.T.A.B. Dec. 20, 2010). 

The examiner was prepared to allow the application, except that he required disclaimer of the term “Service Crew.” That component term, he contended, is merely descriptive because “it refers to a group of people working together to provide assistance.”  He supported this conclusion with a range of internet evidence, including a printout from a Harley Davidson service shop referring to its own “Service Crew.”

Sears resisted the surely strong temptation to accept the disclaimer and proceed to publication.  Instead, it fought the requirement all the way to the Trademark Trial and Appeal Board, offering there a multifaceted defense against the examiner’s assault on its mark.

In the first instance, Sears offered traditional arguments against a finding that Service Crew was descriptive for the particular services at issue.  For one thing, it asserted, consumers would not necessarily expect a “service crew” to be providing a retail sales-type service, because that term might well be referring to servicing equipment after the sale (which was not claimed).  Therefore, the argument goes, “service crew” is not a natural and obvious way to describe retail department store services.

In addition to the usual arguments against descriptiveness, however, applicants have an additional arrow in their quiver to attack disclaimer requirements, which Sears used to good effect here.  Namely, an applicant can argue that her mark is “unitary” insofar as the entire mark as a whole creates a “single and distinct commercial impression apart from the meaning of its constituent elements.”  In other words, consumers would not parse out each word from the whole phrase; therefore no sub-elements need be disclaimed.

Here, Sears argued that SEARS BLUE SERVICE CREW is a unitary mark because, among other things, “Blue” and “Crew” rhyme, and thus consumers would be likely to perceive the slogan as a unitary (and sonorous) whole.  Further, the phrase SEARS BLUE SERVICE CREW would make no additional sense by breaking it apart into its sub-elements (i.e., there is no such thing as a blue service crew), and consumers would therefore be unlikely to mentally dissect it. 

Although these might not be the most convincing arguments ever made, they proved strong enough to carry the day for Sears. The examiner was reversed by the Board, and Sears’s application should soon be proceeding to the publication stage, without any disclaimer attached to it.

So does this mean that Target or Wal-Mart cannot start their own Target Service Crew or Wal-Mart Service Crew?  Not at all.  Regardless of whether material has been disclaimed in a mark, likelihood of confusion remains a precondition to trademark infringement.
 
In this instance, “Service Crew” will still likely be considered a relatively weak element in Sears’s composite mark as compared to the terms Sears and Blue.  Moreover, TARGET and WAL-MART are both trademarks with substantial strength.
 
Thus consumers would not likely be confused into thinking that there was any affiliation between a Sears Blue Service Crew and a Target Service Crew or Wal-Mart Service Crew.

What, then, was the point of Sears’s appeal?  Most likely, Sears wanted the ability to police its mark against not just big-box rivals, but also smaller retailers, internet pirates, or perhaps even free-lance service providers (who might offer their own service crews for fixing appliances purchased at Sears).

The fact that Sears’s registration will not show Service Crew disclaimed puts more weight behind a routine cease-and-desist letter, and cuts off the easy defense of pointing to the disclaimer in rebuttal to an accusation of infringement. In all, a nervous, smaller defendant might decide to simply pack up his service crew and call it a day when staring at an unblemished federal registration.

The next time you receive a disclaimer requirement, consider protecting the wholeness of your brand, and, like Sears, taking your own service crew up on appeal.