Trademark disclaimer - NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE

[Area52]

This disclaimer is commonly seen in trademark records.

Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "xxxx xxxxx" APART FROM THE MARK AS SHOWN ("xxxx xxxxx" being two words used in the registered mark)

Does this mean that the words "xxxx xxxxx" can be used by others, even if the products or services provided are similar?

[domaingenius]

I think that here you have hit on the unfairness of the UDRP in that even if a domain is notin violation of a trademark it can still be lost at a UDRP. Similarly under trademark law even though they do not have exclusive use for the words but if your use happens to be the same as or similar to their TM then you could find yourself challenged by
them. Again I have always argued that TM owners of distinctive trademarks should ONLY be able to use them in the same form and spirit as they were issued to them by the TM
office, but wide ranging as they are allowed to in UDRP.

DG

[flamewalker]

That means that if you TM a phrase for a service or product, you aren't claiming exclusive use for the term for any and all uses. Basically you can use the term for non-competitive uses most likely.

For example, Game Replay can be TM'ed for online video game rentals, and someone can get it and use it for online video game movie storage. However if someone created a competing online rental store using the name Game Replay, the TM owner would have a case.

EDIT: so generally no you can't use the same term for a product or service the same as a TM... unless its a descriptive term like Apple for selling apples etc, in which case it can't be tm'ed anyways.

[Acro]

What that means is exactly that: the mark does not claim exclusivity of Word #1 but only in conjunction with Word #2.

[Area52]

Originally Posted by Area52

This disclaimer is commonly seen in trademark records.

Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "xxxx xxxxx" APART FROM THE MARK AS SHOWN ("xxxx xxxxx" being two words used in the registered mark)

Does this mean that the words "xxxx xxxxx" can be used by others, even if the products or services provided are similar?

Just to clarify, "xxxx xxxxx" is just an example. It could be one word or combination of words. "THE MARK AS SHOWN" I believe, refers to how the word(s) are used in a particular logo or other graghic representation. Seems to me that this disclaimer would only be necessary if the word or phrase is considered generic or widely used by the public.

[domaingenius]

The below was very timely ,having been published today;
une 12, 2008
O2's bubble bursts as it loses trademark case
Amanda Andrews and Michael Herman

O2, the British mobile operator, has lost its four-year battle with rival 3 over the use of its bubble trademark in a television advertisement.

O2 had claimed 3, which is part of Hutchison Whampoa, the Hong Kong conglomerate, had infringed its bubble trademark in an advert that first aired in 2004. The advert featured O2's signature bubbles alongside more attractive tariffs from 3.

The judgment, announced today by the European Court of Justice, found that 3 could use robust but fair advertising that incorporates the bubbles as long as it does not cause consumer confusion; 3 could be sued for infringement if it breaches these rules.

The European court ruled that four conditions must be satisfied for a proprietor to prevent the use of a trademark or a logo. These were that it must be used in the course of trade, without consent, in respect to similar or identical goods, and in a way likely to cause confusion.
Related Links

* O2 chief plots next steps in mobile battle

* Rivals entitled to use O2's bubbles

* O2 hit by tough German market

O2 initially took its case to the British High Court and Court of Appeal, before taking it to the European Court of Justice. The High Court dismissed the claim against 3 and, after an appeal by O2, Britain's appeal court put the matter to the European Court of Justice.

Giles Crown, 3's lawyer at Lewis Silkin, said: "The judgment confirms 3’s right to engage in robust but fair advertising.

"It is also great news for other advertisers engaged in comparative advertising. They are entitled to do so provided they don’t cause any consumer confusion. However if they do, they could still be sued for trademark infringement. In this way the judgment balances the interests of the comparative advertisers and the rival brand owners.”

Other experts warned that despite the ruling, brand owners may still be able to block comparative advertising by using copyright laws.

Robin Fry, an intellectual property partner at law firm Beachcroft, said: "The freedom apparently given by this court ruling is very limited: most advertisers will still want to include a visual reference to their competitor's product - which remains unlawful if it means that any 'artistic work' is shown."

Andy Millmore, a partner at law firm Harbottle and Lewis, warned that the ruling could become a “counterfeiters charter” without further clarifications.

“This judgment appears to be saying that if there is no question of someone being confused over whose product it is, then trademark laws do not engage. This is what will be worrying, and will be seen as part of a trend towards limiting trademark protection.

“For example, somebody could say ‘ buy my fake Rolex watch for five pounds’. If the rationale in this ruling is extended beyond comparative advertising, then because they’ve made clear that the watch is fake - and therefore there is no possible confusion in the minds of the consumer - the logical extension is that the sale is also permissible," Mr Millmore said.

[DNQuest.com]

This is in refernced to registered marks (I think that is what the OP is asking). The designation is given when multple words/phrase becomes a registered mark. It means that there are terms of the registered mark which the mark holder cannot claim as a TM by itself. Example, the gov issues a registered mark for "Bob's Boat Supply", there would be the disclaimer that "Boat Supply" cannot be claimed a TM without Bob in the title.

[jberryhill]

http://domains.adrforum.com/domains/...ns/1155839.htm

Adopting the approach in Minibar North America Inc. v. Musk, D2005-0035 (WIPO Mar. 2, 2005), the words “Game Exchange” have been disclaimed together and “Game Exchange” is essentially the entire substance of the disputed domain name. Once the disclaimed expression has been discounted, there is nothing left in the trademark with which there can be said to be confusing similarity.

[flamewalker]

Excellent example JB. Just goes to show how important creating a protectable trade name is, rather than using a generic term for your business name/service name (in that case, Game Xchange/Game Exchange).