What is a disclaimer in trademarks?

Oftentimes, the United States Patent and Trademark Office (USPTO) will issue an office action after you have filed your trademark requiring a disclaimer for one or more of the words contained in the mark. Assuming there are no other outstanding issues, simply agreeing to the disclaimer will allow your mark to proceed to publication. But what does a disclaimer mean, and should you argue with the USPTO?

Usually, a disclaimer is not unexpected as they are almost always required for words that are highly descriptive of the services you are offering.  You cannot claim exclusive rights to certain highly descriptive terms, except as in use with your mark. This means that there are, and/or could be, marks with those same terms, but no one could register a mark that is confusingly similar to your mark, or a mark that would cause confusion in the marketplace.  

Take for example trademarks that contain common phrases such as, ‘restaurant,’ ‘bar,’ ‘grill,’ ‘pizza,’ etc. Those words are descriptive, and although they can be contained in a trademarked phrase, you cannot exclude others from using those words except as in use with your mark. You can obviously have the word ‘pizza’ in your trademark, but you cannot trademark a phrase that is confusingly similar to ‘Pizza Hut.’ So, if the USPTO requires a disclaimer, frequently there is not much use in trying to argue with them, nor is there usually much harm in agreeing with them, unless you feel that the word they want disclaimed is in fact not descriptive of your services.

This is a big reason why fanciful, invented words can make the best, strongest trademarks. If they are in fact invented words, no other marks will contain them. Keep that in mind as you try and come up with a name for your company, or whatever it is that you are trying to trademark.