Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Rose]

Hi Folks,

Suppose I had applied for and received a trademark for a consumer product that contained three words, the middle word of which was a "laudatory" term.  If decided to market the product without using the middle laudatory term, would it be necessary to apply for a new trademark to receive protection.  

For example suppose my original trademark was "Darn Good Pickles".  And my disclaimer read as follows: "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "GOOD PICKLES" APART FROM THE MARK AS SHOWN."  

Could I market the product as "DARN PICKLES" and receive protection?  Or would I need to apply for a new trademark?  Hope someone can help.  Thanks in advance!

[JSonnabend]

The short answer is you would need to file a new registration.  The slightly longer answer is that a disclaimer does not remove the disclaimed words from the mark, it only impacts your ability to claim protectable rights in the disclaimed words separate and apart from the mark, and so the complete mark -- disclaimed portion and all -- is the mark covered by the registration.

Also remember, you do not "trademark" something by receiving a registration.  Only actual use can give you any substantive trademark rights.

- Jeff