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Is opposition possible regarding disclaimed elements of a configuration trademark ?

Sacramento, CA |

A disclaimer states that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration, apart from the mark as a whole. A disclaimer is appropriate to disclaim non distinctive matter of a tradedress mark. A mark that consists of product design trade dress is namely never inherently distinctive. As per definition a trade dress consists of a combination of distinctive and non-distinctive elements. It may occur, that an applicant disclaims a particular element which he considers to be non-distinctive, but it appears that this matter once has been claimed as a disctinctive element of a tradedress by a previous applicant. Has the previous applicant a ground for opposition?

To clarify the question: Can you oppose to an element, which the applicant has disclaimed ? ( in case you have claimed this or a likely similar element in an earlier application)

Attorney Answers 5

  1. If I understand the question, you probably cannot oppose based upon a disclamed element.

    I am an Attorney-at-Law, licensed to practice law only in the state of California. Unless we have both signed a formal retainer agreement, you are not my client, and my discussion of issues does not constitute legal advice. Opinions expressed herein are those of the author, and do not necessarily represent the opinions of those who hold other opinions.

  2. Q: "Can you oppose to an element, which the applicant has disclaimed ... ?"
    R: No. The trade dress of a product or its packaging is the cumulative whole of its elements. Any opposition to the registration of that dress must be to that cumulative whole.

    The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

  3. I agree, no.

    If this is regards to an actual opposition proceeding or one that you intend to initiate, I strongly advise seeking some help with it. These can get rather complicated quickly and even experienced TM lawyers often have to research rules and methodology.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Natoli-Lapin, LLC

    DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.

  4. I take it you want to oppose the disclaimer element because you claim it is distinctively yours and not properly disclaimed. You would likely need to just write a CDL to the applicant and demand they stop using your trademark and advise them it is not subject to disclaimer and cannot be a part of their mark without likelihood of confusion as to source with your mark. Except that YOU have no business writing such a letter. If you write it, you will likely end up saying or not saying something and lose your trademark. Trademark conflicts need to be handled by trademark attorneys not novices. You are here asking because you don't know enough to do this on your own. Recognize that and get an attorney.
    For Sacremento, you might contact Scott Pink

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

  5. The Opposition is based upon the entire mark as a whole.