What does “apart from the mark as shown” Mean?
Apart from the mark as shown means that the Trademark Registration conveys rights in the entire mark. That is, the rights extend to both the protectable and the disclaimed components.
If the mark includes an unregisterable component, then the government makes you disclaim the exclusive right to part of the trademark. So, when combined as a whole, you get rights to the protectable and unregisterable parts of the trademark. The disclaimer’s job is to make it clear that there is no claim to the unregisterable component.
There are multiple reasons why a mark needs a disclaimer. For example, there must be a disclaimer if a mark is generic, descriptive, geographically descriptive mark, or laudatory words.
A generic mark refers to the category of a product or service. Ironically, the more successful the trademark, the less protection it will receive. The owner loses its exclusive rights to its trademark when it becomes generic.
A trademark can become generic if the mark becomes synonymous with a product or service. This is measured by what the public’s mind associates with a particular word. For example, the word Kleenex became the same a tissues. Another example is Aspirin being synonymous with a pain-killer.
A descriptive mark occurs when the mark describes a good or a service. Merely descriptive marks can only receive trademark protection in the U.S. if they achieve something called a “secondary meaning.”
For example, in re Brown-Forman Corporation, it was found that the words ROGUE was descriptive. Accordingly, when consumers come across GALA ROUGE wine, they will view GALA as the brand name, and ROUGE as the color of the wine.
Words or designs that describe the origin of your goods or the location of your services must be disclaimed. For example, Alaska in Alaska Air would need to be disclaimed.
Laudatory words relate or express praise to a company or trademark. This includes phrases like “The Best Ever.”