Legal Question in Intellectual Property in California

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!


Asked on 8/20/07, 11:29 am

3 Answers from Attorneys
Karla Shippey Law Offices of Karla Shippey

Re: Words to Disclaim

We would be more than happy to assist you with this issue, however, we would need a bit more info on the actual trademark.

Our fees for assisting with a disclaimer and answering an Office Action would be $100.00. However, if you need a brand new mark filed it would be $525.00 inclusive of the government filing fees.

Please feel free to contact us if you would like any assistance.

Warm regards,

Kristin Kirkwood

Paralegal

Law Offices of Karla Shippey

4848 Lakeview Ave., #E

Yorba Linda, CA 92886

Tel: 7146939110

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Answered on 8/20/07, 11:47 am
Gordon Firemark Law Offices of Gordon P. Firemark

Re: Words to Disclaim

Without knowing what the words in question are, it's impossible to advise you.

Our office does lots of trademark applications, and we'd be glad to help. Our fees are a bit higher than Ms. Shippey's, which are startlingly low.

If you'd like a free consultation, please contact me for an appointment.

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Answered on 8/20/07, 12:14 pm
Richard Jefferson M.E.T.A.L. LAW GROUP, LLP

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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Answered on 8/20/07, 12:53 pm


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