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Asked in CA May 26, 2022 ,  0 answers Visitors: 2

Words to Disclaim

I applied for a plain (no distinctive artwork) trademark for my company (software design and installation) consisting of three words. The first word is a newly-coined but currently much used buzzword in our niche of computing. The second word is a fairly common adjective. The third word is a common noun. Together, the three-word combination is unique and also is currently used by us to describe our product and services in interstate commerce.

When I applied for the mark, I disclaimed all three words, foolishly thinking that I was disclaiming trademark rights in each as a stand-alone term.

Turns out that isn't the way the USPTO reasons.

Can anyone help me by explaining which of the three words I should disclaim (or maybe none of them)?

Looking in do-it-yourself books like Nolo's, it sounds as though maybe I should disclaim ONLY the most common of the three terms, but I don't understand the reasoning and I'd like to get it right this time!

Data From  LAWGURU_Question

3 Answers

Anonymous
Reply

Posted on / Aug. 20, 2007 12:53:00

Re: Words to Disclaim

That can sometimes be an involved question.

You may want to just not disclaim anything and let the USPTO tell you what they want you to disclaim in an office action. This may take you longer to get approved but at least it will be right.

Anonymous
Reply

Posted on / Aug. 20, 2007 12:53:00

Re: Words to Disclaim

That can sometimes be an involved question.

You may want to just not disclaim anything and let the USPTO tell you what they want you to disclaim in an office action. This may take you longer to get approved but at least it will be right.

Anonymous
Reply

Posted on / Aug. 20, 2007 12:53:00

Re: Words to Disclaim

That can sometimes be an involved question.

You may want to just not disclaim anything and let the USPTO tell you what they want you to disclaim in an office action. This may take you longer to get approved but at least it will be right.

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