Publications

One of These Things is Not Like the Other: Limiting Disclaimers Within Classes of Services

Bylined Articles
Sterne, Kessler, Goldstein & Fox P.L.L.C.

In a precedential decision earlier this month, the TTAB found that a disclaimer of a term is required as to all services in a Class if it is descriptive as to any services in that Class. This decision appears to contravene Section 1213 of the Trademark Manual of Examining Procedure, which says “[a] disclaimer may be limited to only certain classes, or to only certain goods or services.”

Applicant UST Global applied to register the mark INFINITY LABS for various services in Classes 35, 36, 40, 41, and 42 related to business incubation services, think tank services, and scientific and technical services. During prosecution, the Examining Attorney required a disclaimer of LABS, arguing that the word LABS means “a place equipped for experimental study in science or for testing and analysis,” and was therefore descriptive of all of the services covered by the application. In response to the Office Action, the Applicant entered a disclaimer as to all the services in Class 35 services and a portion of the services in Class 42, and did not enter the disclaimer for the remaining services in Class 42 or the services in Classes 36, 40 and 41. The Examining Attorney issued a final Office Action again requiring a disclaimer as to all of the services, and the Applicant appealed.

After analyzing the issue of descriptiveness of the term LABS in In re UST Global (Singapore) Pte. Ltd., the Board found that the term is descriptive of all of the services in the application in Classes 40 and 41, and a portion of the services in Classes 36 and 42. Invoking a “well-settled principle,” the Board affirmed the refusal to register the entirety of Classes 36, 40, 41, and 42 until the Applicant enters a disclaimer of LABS for the remaining services in the application.

Notably, despite its finding that the term LABS is merely descriptive only to specific services in Classes 36 and 42, the Board did not give any reasoning as to why it would not allow a disclaimer to only apply to particular services within  Classes 36 and 42, only that it was already “well-settled.” However, there is a footnote in the Conclusion section of the opinion that says that the ruling in this case “would not prevent a future applicant from dividing its application” to separately appeal a disclaimer with respect to particular services. This holding seems to contradict Section 1213 of the Trademark Manual of Examining Procedure, which says “[a] disclaimer may be limited to only certain classes, or to only certain goods or services.”

An interesting distinction in this case is that the ruling does not speak to how the Board would treat a similar disclaimer requirement with respect to goods. The boundaries of descriptiveness are arguably less subjective when applied to goods, so it is easy to imagine a situation where a term within a mark is descriptive as to some goods within a Class but not others. For example, perhaps the term SILVER would be found to be descriptive of metal-containing goods in Class 14, but not other goods in that Class, like “emeralds.”

In light of this decision, Applicants should carefully consider the descriptiveness of terms as applied to their services (and perhaps goods), and consider a filing strategy where services within a Class are divided between two separate applications – one where a term would be considered descriptive, and one where the term would not be considered descriptive. Alternatively, given the Board’s footnote in this decision, it also appears that it would be possible to wait for the Examining Attorney to make a decision about the descriptiveness of particular services, and then divide out the application at that point.  In any case, a disclaimer of a term is simply a statement in the USPTO record that indicates that a registrant is not claiming rights to the disclaimed portion of the mark alone, apart from the other wording, and does not change the fact that a registrant still has rights to protect their mark as a whole.


This article appeared in the May 2020 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.