[E-trademarks] Indisputably "merely descriptive" mark registered without disclaimer (and no 2(f) claim)

[Pamela Chestek]

I don't think a disclaimer was necessarily required in this case. "A 
mark or portion of a mark is considered 'unitary' when it creates a 
commercial impression separate and apart from any unregistrable 
component.  ... If the matter that comprises the mark or relevant 
portion of the mark is unitary, no disclaimer of an element, whether 
descriptive, generic, or otherwise, is required." TMEP 1213.05. This is 
a unitary phrase, a slogan.

A missing disclaimer is probably unchallengeable. I don't know off the 
top of my head about disclaimers, but some decisions about registration 
cannot be challenged in a TTAB proceeding because they are within the 
discretion of the PTO - acceptance of specimens is a big one.

What you do instead is challenge it on underlying validity grounds. For 
example, if it's a specimen problem, you challenge on the basis of 
non-use. I think your avenue here would be an argument that the mark is 
merely descriptive, but that's only possible in an infringement case, 
not a refusal - if the mark was cited against you, the PTO isn't going 
to decide it's now invalid in a collateral attack. If you are in a venue 
where you can challenge the validity of the mark, you'll have to 
overcome the prima facie evidence that the mark is distinctive by virtue 
of its registration (assuming it's not more than five years old, in 
which case you're sunk). So it will be a heavier lift.

Pam

Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com

On 4/16/2025 8:46 AM, Jessica R. Friedman via E-trademarks wrote:
>
> The mark COMPUTER SCIENCE FOR THE REAL WORLD is registered for books 
> about computer science in various media without a disclaimer of 
> COMPUTER SCIENCE, despite the fact that COMPUTER SCIENCE clearly is 
> “merely descriptive” for books about computer science, and, the 
> applicant did not claim secondary meaning.
>
> There’s no point asking how the PTO let that application proceed 
> without the disclaimer in the first place. But would this registration 
> actually be enforceable without proof of secondary meaning?  I guess 
> I’m asking whether the clear error in the registration would be a 
> defense to an infringement claim, or even a refusal to register a 
> similar mark, even if I’m not asking the question in quite the right way.
>
> Jessica R. Friedman
>
> Attorney at Law
>
> 300 East 59 Street, Ste. 2406
>
> New York, NY 10022
>
> Phone: 212-220-0900
>
> Cell: 917-647-1884
>
> E-mail:_jrfriedman at litproplaw.com <mailto:jrfriedman at litproplaw.com>_
>
> URL: _www.literarypropertylaw.com <http://www.literarypropertylaw.com>_
>
> 1479430908386_PastedImage
>
>
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