Thursday, May 5, 2011

Should I Make Disclaimer When I File TM Application?

Dear Rich: I am applying for a trademark and I had a question. I want to use my trademark for a website for people who own daycare businesses. (I already have the domain name.) The trademark has the word "DayCare" in it and I know that I can't trademark that part of the name. Should I make a statement giving up rights to "Daycare" under the "additional statement" section. What do you think? You're correct that nobody who runs a daycare business can claim trademark rights to the word "daycare" -- it is a generic term for  businesses that care for kids. So most people who include it in their trademarks will have to disclaim it. As a general rule, most trademark attorneys would probably take the position that it's best not to disclaim anything unless asked to do so by a trademark examiner. The reasons for this blanket rule: (1) you can't always predict what the examiner will ask you to disclaim -- for example, though it's highly likely you'll be asked to disclaim the term, there's always the possibility that the examiner may not ask for it because you are providing online services (and not daycare services), (2) adding a disclaimer later won't derail your application (though it will slow the process), and (3) by taking the initiative yourself, you may mistakenly disclaim an essential element of your mark.
That Said Dept. That said, if you're certain that an examiner will ask you to make the disclaimer -- for example, your competitors have been asked to make similar statements in their applications (you can review all existing applications and registrations online) -- and you're in a hurry to get your registration, then make the disclaimer at the time you file the application. (The intake box is shown below).