Michael Atkins - Seattle Trademark Lawyer

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The owner of a federally-registered trademark is presumed to be the exclusive, nationwide user of the mark in connection with the goods or services listed in the registration.

However, that presumption does not usually extend to generic or descriptive elements of a mark, apart from the mark as a whole. That means the owner of SEATTLE’S BEST COFFEE, for example, doesn’t get exclusive rights to the word “coffee.” Registration or no registration, it can’t object to other companies using that term as part of their trademarks.

The U.S. Patent and Trademark Office gives this common-sense principle teeth by requiring applicants for federal registration to “disclaim” exclusive rights in descriptive and generic elements. The language it requires applicants to adopt is that “No claim is made to the exclusive right to use ‘[the generic or descriptive element(s)]’ apart from the mark as shown.” This language means that apart from the mark as a whole, the owner acknowledges it can’t stop other trademark owners from using those generic or descriptive elements.

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Copyright © 2006-2021, Michael G. Atkins. All rights reserved. I'm a partner and Seattle intellectual property attorney at Atkins Intellectual Property, PLLC, where I focus my practice on issues involving the Lanham Act, including trademark infringement, unfair competition, trade dress infringement, trademark dilution, false designation of origin, counterfeiting, cybersquatting, trademark licensing, trademark applications, trademark registrations, the U.S. Patent and Trademark Office (PTO), and the U.S. Trademark Trial and Appeal Board (TTAB). Thanks for checking out my blog. Please visit again soon!