TMEP 1213.01: History of Disclaimer Practice

October 2017 Edition of the TMEP

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1213.01    History of Disclaimer Practice

There was no statutory authority for disclaimer prior to 1946. As various court decisions were rendered, USPTO practice fluctuated from, first, registering the composite mark without a qualifying statement; later, requiring a statement in the application disclaiming the unregistrable matter in the mark; and, finally, requiring removal of the unregistrable matter from the mark on the drawing. This fluctuation ended with the decision of Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920), in which the United States Supreme Court held that to require the removal of descriptive matter from a composite mark was erroneous, and commended the practice of a statement of disclaimer. Thus, the practice of disclaimer was established officially in the USPTO, although still without statutory support.

The Trademark Act of 1946 created a statutory basis for the practice of disclaimer in §6, 15 U.S.C. §1056.