Commonly, a disclaimer is required if an element of your mark is generic or merely descriptive of the goods or services sold in connection with that mark. For example, if the mark “Excalibur Frozen Delights” is used in connection with ice cream and frozen desserts, it is likely the word “frozen” would need to be disclaimed because it merely describes a feature of the goods. Essentially, the disclaimer is a concession that the disclaimed element is not per se distinctive and thus, available for use by others on similar products. Therefore, the owner of “Excalibur Frozen Delights” could not prevent others from incorporating the word “frozen” into their trademarks for similar goods.
Though a disclaimer concedes that the disclaim element is not per se distinctive, it does not render the mark powerless. First, a mark with disclaimed components can still prevent confusingly similar marks from being registered with the USPTO. Trademark law requires that when determining the likelihood of confusion between a registered mark and an applied-for mark, the entirety of the mark, including any disclaimed elements, must be considered. Additionally, a disclaimer does not prejudice the right of an applicant to defend its mark against trademark infringement and unfair competition in a court of law. Lastly, once the trademark acquires secondary meaning, the registrant is not barred to seek registration of the mark, without of disclaimer of the previously disclaimed component.
Even if marks with disclaimed components are still granted some protections, its strength as a trademark is certainly weaker than that of a mark without a disclaimer. Therefore, it is strongly advised for a trademark applicant to consult with a trademark attorney before voluntarily disclaiming elements of a mark.