In cases in which registration of a mark is barred under the Trademark Act (e.g., under §§2(a), 2(b), 2(c) and 2(d)), a disclaimer of an unregistrable component will not render the mark registrable. See, e.g., American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ("While the disclaimer is appropriate to indicate that respondent claims no proprietary right in the disclaimed words, the disclaimer does not affect the question of whether the disclaimed matter deceives the public, since one cannot avoid the Section 2(a) deceptiveness prohibition by disclaiming deceptive matter apart from the mark as a whole."). See TMEP §1213.11 concerning disclaimers with regard to likelihood of confusion.

1213.02(b) Generic Matter and Matter Which Does Not Function as a Mark

If a mark is comprised in part of matter which, as applied to the goods and services, is generic or does not function as a mark, such matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register. If, however, matter which would otherwise be generic or would not function as a mark is part of a unitary mark or part of a separable unitary element of a mark, the examining attorney should not require a disclaimer of such matter. See TMEP §1213.06(a).

Regarding disclaimers of unregistrable components in applications to register marks on the Principal Register pursuant to §2(f), see In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766, 768 (TTAB 1986) ("[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").

Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (CCPA 1980) ("Section 6 is equally applicable to the Supplemental Register."); In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," found registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn's Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) ("Section 6 of the Trademark Act of 1946, which provides for the disclaimer of 'unregistrable matter', does not limit the disclaimer practice to marks upon the Principal Register.").

An accurate pictorial representation of descriptive matter is equivalent to the written expression and, thus, disclaimer is required pursuant to the same rules applicable to merely descriptive wording. See Thistle Class Association v. Douglass & McLeod, Inc., 198 USPQ 504 (TTAB 1978) (thistle design found synonymous to the word "thistle," which is used in a descriptive sense to designate a class of sailboats).

No disclaimer of highly stylized pictorial representations of descriptive matter should be required because the design element creates a distinct commercial impression. See In re LRC Products, Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (outline of two gloved hands held arbitrary and fanciful), and cases cited therein.

1213.02(d) Entity Designations

Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must be disclaimed because an entity designation has no source-indicating capacity. In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) ("the element 'INC.' [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark. evaluation, to have no source indication or distinguishing capacity").

The only exception to this practice is where the entity designation is used in an arbitrary manner (e.g., "THE LTD." or "KIDS INC." for clothing). In this case the term has trademark significance and a disclaimer should not be required.

1213.03 "Composite" Marks

A "composite" mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. An unregistrable component of a composite mark is subject to disclaimer. However, if a composite mark (or portion thereof) is "unitary," an individual component of the mark (or of the unitary portion) which would otherwise be unregistrable need not be disclaimed. See TMEP §1213.06 et seq.

The same principles apply to disclaimer of an unregistrable component of a mark, whether the mark is a combination of wording and designs or consists entirely of wording or entirely of designs.

1213.04 Compound Word Marks

A compound word mark is comprised of two or more distinct words or words and syllables which are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR). Often, in compound word marks, the words or syllables are distinguished or highlighted by capitalizing the first letter of each (e.g., TimeMaster) or by presenting them in differing color, script or size (e.g., RIBtype). Regarding drawings for compound word marks, see TMEP §807.09(a)(i).

A compound word mark which is appropriately represented by a typed drawing may be presented as one unitary term (e.g., BOOKCHOICE) or as separate words (BOOK CHOICE). The examining attorney should determine whether the mark may be presented as separate words based upon its commercial impression, taking into account any specimens of record. It would not be appropriate to represent a compound mark as separate words unless it would be reasonable to conclude that the commercial impression of the mark is that of separable words. (E.g., in the mark "ExFone," "Ex" would not be viewed as a separate word; therefore, in a typed drawing, the mark should be presented as one word.)

All compound word marks, as defined above, are considered unitary, and a disclaimer of a component will not be required unless the mark is appropriately presented in the application in a typed drawing as two or more separate words. A compound word mark which is appropriately presented in a typed drawing as two or more separate words is not considered unitary per se and a disclaimer of unregistrable components may be required.

1213.04(a) Telescoped Words

A telescoped mark is one comprising two or more words which share letters (e.g., HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, POLLENERGY). Regarding drawings for telescoped marks, see TMEP §807.09(a)(i).

A telescoped word is considered unitary. Thus, no disclaimer of an individual portion of a telescoped word will be required, regardless of whether the mark is shown in a typed or special-form drawing.

If, however, a telescoped word is itself unregistrable, a disclaimer of the telescoped word may be required. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for banking services in the absence of a disclaimer of "FIRST TIER," in view of evidence that the term describes a class of banks). Regarding dis

claimers of misspelled words in general, see TMEP §1213.09(c).

1213.04(b) Compound Words Formed with Hyphen or Other Punctuation

When a compound word is formed by hyphenating two words or terms, one of which would be unregistrable alone, no disclaimer is necessary. "X" Laboratories, Inc. v. Odorite Sanitation Service of Baltimore, Inc., 106 USPQ 327, 329 (Comm'r Pats. 1955) (requirement for a disclaimer of "TIRE" deemed unnecessary in application to register TIRE-X for a tire cleaner).

Word marks consisting of two terms joined by an asterisk (e.g., RIB*TYPE), a slash (e.g., RIB/TYPE) or a raised period (e.g., RIB-TYPE) are analogous to hyphenated words. Thus no disclaimer of portions of marks formed by asterisks, slashes or raised periods is necessary. (While hyphens, asterisks and slashes may be used in typed drawings, raised periods may not. Thus, a mark comprised in part of a raised period must be represented by a special-form drawing to depict the raised period. However, if otherwise appropriate, the mark may be represented in a typed drawing by substituting a hyphen for the raised period. See TMEP §807.09 et seq.)

1213.05 Trade Names

Unregistrable components of trade names or company names shall be disclaimed pursuant to the same rules that apply generally to trademarks. See In re Martin's Famous Pastry Shoppe, Inc., 221 USPQ 364 (TTAB 1984), aff'd on other grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

1213.06 "Unitary" Marks

1213.06(a) Unitary Matter in General

A mark or portion of a mark is considered "unitary" when it creates a commercial impression separate and apart from any unregistrable component. That is, the elements are so merged together that they cannot be divided to be regarded as separable elements. If the matter comprising the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required.

For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning. An

example is the term "Black Magic," which has a distinct meaning of its own as a whole. The word "black" is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods which are black in color.

In the following cases, marks were considered unitary: B. Kuppenheimer & Co., Inc. v. Kaiser-Roth Corp., 326 F.2d 820, 822, 140 USPQ 262, 263 (CCPA 1964) (KUPPENHEIMER and SUP-PANTS combined so that they shared the double "P," making "an indivisible symbol rather than two divisible words"); In re HampshireDesigners, Inc., 199 USPQ 383 (TTAB 1978) (DESIGNERS PLUS+ for sweaters held unitary; thus, no disclaimer of "DESIGNERS" deemed necessary); In re J.R. Carlson Laboratories, Inc., 183 USPQ 509 (TTAB 1974) (E GEM for bath oil containing vitamin E held unitary; thus, no disclaimer of "E").

But see the following cases in which marks were found not unitary: Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991) (EUROPEAN FORMULA above a circular design on a dark square or background considered not unitary); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (LEAN LINE for low calorie foods considered not unitary; requirement for disclaimer of "LEAN" held proper); In re IBP, Inc., 228 USPQ 303 (TTAB 1985) (IBP SELECT TRIM for pork considered not unitary; refusal of registration in the absence of a disclaimer of "SELECT TRIM" affirmed); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (UNIROYAL STEEL/GLAS for vehicle tires considered not unitary; requirement for disclaimer of "STEEL/GLAS" deemed appropriate); In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (PHACTS POCKET PROFILE, for personal medication history summary and record forms, considered not unitary; refusal to register in the absence of a disclaimer of "POCKET PROFILE" affirmed. "A disclaimer of a descriptive portion of a composite mark is unnecessary only where the form or degree of integration of that element in the composite makes it obvious that no claim other than of the composite would be involved. That is, if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary.").

The examining attorney must exercise discretion in determining whether a mark or portion of a mark is unitary, in which case disclaimer of a nondistinctive component should not be required. It is not always easy to articulate why matter is unitary. However, if one cannot spell out exactly why a mark is unitary, then the mark is probably not unitary and nondistinctive elements within the mark must be disclaimed. In general, a mark is unitary if the whole is something more than the sum of

its parts. The following sections provide examples of different types of unitary marks.

1213.06(b) Types of Unitary Marks 1213.06(b)(i) Slogans

A registrable slogan is one that is used in a trademark sense. A registrable slogan is considered unitary and should not be broken up for purposes of requiring a disclaimer.

If an unregistrable slogan is a component of a registrable mark, then the examining attorney should require that the slogan be disclaimed.

If a mark consists entirely of a slogan which is merely descriptive or which is not being used as a mark, then registration should be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA'S FRESHEST ICE CREAM for flavored ices, etc., held incapable of distinguishing applicant's goods and unregistrable on the Supplemental Register); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE! held to be an unregistrable common commercial phrase).

1213.06(b)(ii) "Double Entendre"

A "double entendre" is a word or expression capable of more than one interpretation. For trademark purposes, a "double entendre" is an expression that has a double connotation or significance as applied to the goods or services. The mark comprising the "double entendre" will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services.

A true "double entendre" is unitary by definition. An expression that is a "double entendre" should not be broken up for purposes of requiring a disclaimer. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), in which the Board found inappropriate a requirement for a disclaimer of "LIGHT" apart from the mark "LIGHT N' LIVELY" for reduced calorie mayonnaise, stating as follows:

The mark "LIGHT N' LIVELY" as a whole has a suggestive significance which is distinctly different from the merely descriptive significance of the term "LIGHT" per se. That is, the merely descriptive significance of the term "LIGHT" is lost in the mark as a whole. Moreover, the expression as a whole has an alliterative lilting cadence which encourages persons encountering it to perceive it as a whole.

See also In re Symbra'ette, Inc., 189 USPQ 448 (TTAB 1975) (SHEER ELEGANCE for panty hose held to be a registrable unitary expression; thus, no disclaimer of "SHEER" considered necessary).

The following cases illustrate situations in which marks were considered to be "double entendres" and, hence, registrable unitary marks: In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for bakery products); In re Simmons Co., 189 USPQ 352 (TTAB 1976) (THE HARD LINE for mattresses and bed springs); In re Delaware Punch Co., 186 USPQ 63 (TTAB 1975) (THE SOFT PUNCH for noncarbonated soft drink); In re National Tea Co., 144 USPQ 286 (TTAB 1965) (NO BONES ABOUT IT for fresh pre-cooked ham).

The multiple interpretations which make an expression a "double entendre" must be associations that the public would make fairly readily. See In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE held merely descriptive for banking services, despite applicant's argument that the term also connotes the Pony Express, the Board finding that, in the relevant context, the public would not make that association).

If all meanings of a "double entendre" are merely descriptive in relation to the goods, then the mark comprising the "double entendre" should be refused registration as merely descriptive.

1213.06(b)(iii) Incongruity

If two or more terms are combined in a mark to create an incongruity (e.g., URBAN SAFARI, MR. MICROWAVE, DR. GRAMMAR), the mark is unitary and no disclaimer of nondistinctive individual elements is necessary.

1213.06(b)(iv) Sound Patterns

At times a mark will form a unitary whole through a rhyming pattern, use of alliteration or some other use of sound which creates a distinctive impression. In such a case, the mark is regarded as unitary and individual elements should not be disclaimed. See In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).

1213.06(b)(v) Display of Mark

The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary. See, e.g., In re Texsun Tire and Battery

Stores, Inc., 229 USPQ 227, 229 (TTAB 1986) ("[T]he portion of the outline of the map of Texas encircled as it is with the representation of a tire and surrounded by a rectangular border results in a unitary composite mark which is unique and fanciful.").

1213.07 Entire Mark May Not Be Disclaimed

An entire mark may not be disclaimed. That is, if a mark is not registrable as a whole, disclaimer will not make it registrable. There must be something in the combination of elements in the mark, or something of sufficient substance or distinctiveness over and above the matter being disclaimed, which would make the composite registrable after the import of the disclaimer is taken into account. Ex parte Ste. Pierre Smirnoff Fls, Inc., 102 USPQ 415 (Comm'r Pats. 1954).

In Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991), the Court of Appeals for the Federal Circuit stated as follows:

[U]nder traditional disclaimer practice, an applicant could not disclaim all elements of a composite mark. Section 1056(a) codified this policy. A mark which must be entirely disclaimed has no 'unregistrable component,' but is instead entirely nonregistrable. In other words, a mark which must be entirely disclaimed has no ‘otherwise registrable' parts. Therefore, such marks do not qualify as composite marks for which the Commissioner may require a disclaimer.

1213.08 Removal Rather than Disclaimer

When it is not clear that matter forms part of a mark, the examining attorney must consider whether it is appropriate for the applicant to amend the drawing of the mark to remove such matter, rather than to disclaim it. Regarding deletion of matter from the mark on a drawing, see TMEP $8807.13 and 807.13(a). An applicant may not amend the drawing, either to add or delete matter, if to do so would constitute a material alteration of the mark. See 37 C.F.R. §2.72(a); TMEP $807.14(a).

There are circumstances under which the applicant may remove matter from the mark shown in the drawing, or may elect not to include certain matter on the drawing in the application as filed. See Institut National Des Appellations D'Origine v. Vintners International Co., Inc., 958 F.2d 1574, 1582, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (CCPA 1950). Matter may not be omitted from the drawing, however, if such omission would result in an

incomplete representation of the mark, sometimes referred to as "mutilation." See TMEP §807.14(b). In other words, the matter presented for registration must convey a single distinct commercial impression. If a mark is not unitary in this sense, it cannot be registered. Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991).

1213.09 Form of Disclaimers 1213.09(a) Wording of Disclaimer

1213.09(a)(i) Standardized Printing Format for Disclaimer

As of November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted. Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date. Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983. The disclaimed matter is taken from the disclaimer of record and inserted into the standardized disclaimer format for printing and data base purposes. The standardized disclaimer text is as follows:

No claim is made to the exclusive right to use , apart from the mark as shown.

See notice at 1022 TMOG 44 (September 28, 1982). See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm'r Pats. 1983) ("[T]he use of the standardized form is solely for the purpose of printing and data base purposes, not for the limitation of registrant's rights.").

For the record only, examining attorneys continue the past practice of accepting disclaimers with additional statements pertaining to reservation of common law rights, although §6 of the Trademark Act of 1946 states that no disclaimer shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter. Disclaimers with such additional statements can be entered by examiner's amendment. The examining attorney should inform the applicant or attorney who authorizes such an amendment that the disclaimer will be printed in the standardized format.

1213.09(a)(ii) Unacceptable Wording for Disclaimer

Wording which in effect claims matter, rather than disclaiming it, is not acceptable. The matter to which the

benefits of registration pertain is that shown on the drawing in its entirety, and no "claim" to that effect is necessary. A disclaimer should be no more than a statement which identifies matter to which the applicant may not have exclusive right when considered apart from what is shown on the drawing.

Thus, statements that the applicant "claims" certain matter in the association shown, are not acceptable. The examining attorney should require correction of such wording and of variations which amount to the same thing. Likewise, a statement that the mark is "not claimed except in the association shown," or similar wording, is not acceptable, and the examining attorney should require correction. See Textron Inc. v. Pilling Chain Co., Inc., 175 USPQ 621, 622 (TTAB 1972), concerning an application which included the statement, "The mark is not to be claimed except in the setting presented." The Board found this wording unacceptable, noting, "The alleged disclaimer filed by applicant is in such vague terms that it actually disclaims nothing."

1213.09(b) Disclaimer of Unregistrable Matter in Its Entirety

Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms which form a grammatically or otherwise unitary expression (e.g., "SHOE FACTORY, INC."), the examining attorney must require that they be disclaimed in their entirety. See, e.g., In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm'r Pats. 1987) (denying petitioner's request to substitute separate disclaimers of "GLASS" and "TECHNOLOGY" for the disclaimer of "GLASS TECHNOLOGY" in its registration of GT GLASS TECHNOLOGY in stylized form, the Board finding "GLASS TECHNOLOGY" to be a unitary expression and noting, "Disclaimers of individual components of complete descriptive phrases are improper."); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984) ("CERTIFIED HEARING AID AUDIOLOGIST" found to be "a unitary expression that should be disclaimed in its entirety"); In re Surelock Mfg. Co., 125 USPQ 23, 24 (TTAB 1960) (proposed disclaimer of "THE" and "RED" and "CUP" held unacceptable to comply with requirement for disclaimer of "THE RED CUP," the Board concluding, "A disclaimer of the individual components of the term 'THE RED CUP', under the circumstances, is meaningless and improper.").

This standard should be construed strictly; thus, disclaimer of individual words separately will usually be appropriate only when the words being disclaimed are separated by registrable wording.