Design trademarks combine figurative element(s) with word(s). The words may or may not be registrable standing alone. That they are or are not registrable is critical to determining confusing similarity. Non registrable terms are non-actionable because they fall into a category that cannot take on trademark status. The outcome of words disclaimed is more obvious; they cannot be used as a basis for infringement. The term “Minibar Systems” for example in Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, D2005-0035 (WIPO March 2, 2005) cannot be resuscitated as being a suggestive phrase when it is “merely” or “purely” descriptive.

Such words cannot be read as the mark, but an integral feature of it.  Disclaimer is an admission that disclaimed elements have no distinction apart from the trademark as a whole.  As is often the case the design is merely a vehicle to qualify for trademark registration words that would otherwise on their own be rejected as generic or descriptive terms that in most instances are disclaimed. Where words have sufficient strength to identify complainant as the source of goods or services it prevails.

Even if the trademark authority has accepted generic terms without disclaimer as part of a design mark no inference can be drawn that they are capable of standing alone. In Fine Tubes Limited v. Tobias Kirch, J. & J. Ethen, Ethen Rohre GmbH, D2012-2211 (WIPO January 30, 2013) the USPTO let “Fine Tubes” stand without disclaimer. Where there is no disclaimer the Panel is put to the task of determining whether the words can stand alone. Complainant contends that it had established unregistered trademark rights in the words “Fine Tubes” that is dominant in its design trademark. Respondent countered by pointing out that the term “Fine Tubes” is purely descriptive of a type of product offered for sale by Complainant and Respondent. The Panel notes

While the term “fine tubes” does not appear to constitute a common English dictionary term, the terms “fine” and “tube” are each common dictionary terms. “Tube”, inter alia, is a noun referring to “any of various usually cylindrical structures or devices”. “Fine” as an adjective is defined variously as “free from impurity”, “very thin in gauge or texture”, “very precise or accurate” and “superior in kind, quality, or appearance”. The combination term “Fine Tubes” may be understood to refer to cylindrical structures or devices that are characteristically free from impurities, thin, precise and/or superior in quality.

However, “there is” [the Panel continues] “a class or type of terms that may not be reserved as trademarks because they are commonly descriptive of a genus or class of thing.” The same point was made by the USPTO in an initial Office Action on Complainant’s application. The Examining Attorney requested a disclaimer of the term “finetubes” apart from the mark as shown, but for unexplained reasons he allowed the trademark to register without the disclaimer. The Panel held that the “fact that the USPTO allowed registration of the combination word and design mark as a whole without a disclaimer is not particularly probative of whether the USPTO would have allowed registration of the term ‘Fine Tubes’ standing alone.”

That no inference could be drawn in Complainant’s favor in Fine Tubes is reinforced by other national trademark authorities. “Relevant trademark office authorities in the jurisdictions where Complainant and Respondent are headquartered have decided that the term may not be registered as a trademark…. [T]his Panel defers to the present state of affairs before the relevant trademark office authorities, noting that there is no compelling reason to reject their judgment in this particular matter.”

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.