[E-trademarks] Arguing in favor of a disclaimer to avoid 2d

[Laurie Marshall]

Trademark has a word which could arguably be considered merely descriptive (several other marks have a disclaimer of this word for similar goods). Examiner did not ask for a disclaimer and cited a mark with the exact word (the word was not disclaimed in the cited mark).  Has anyone successfully argued in response to an OA that a word(s), should be disclaimed since it is descriptive and thus, should not be the subject of a 2d objection given our not claiming exclusive rights to the word? I tried to do this once and was unsuccessful as I wound up with both a disclaimer requirement and the Examiner maintained the 2d. Wondering if anyone has had a different result.  Thanks!

Laurie Marshall, Esq.
Marshall Law Group, PLLC
TradeMarks The Spot
TMthespot.com
917-566-1003

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