Trademarks provide important protection for a company's (or individual's) brand by preventing others from using the mark to provide the same goods or services. This trademark glossary provides definitions for common terms related to trademarks to help you better understand this area of law.
Abandonment: Abandonment can occur when the U.S. Patent and Trademark Office (USPTO) doesn't receive a Statement of Use (or a request for an extension to file it) or a response to an Office Action letter within 6 months of mailing. Abandoned applications are no longer pending but can be reinstated or revived under certain circumstances.
Allegation of Use: A sworn statement signed by the trademark applicant that verifies that the mark is in fact used in commerce, which must include a "specimen" that shows how the mark is used for each class of goods and/or services included in the application.
Appeal: An appeal can be filed with the USPTO's Trademark Trial and Appeal Board in cases where a trademark applicant wants to contest a final refusal from an examining attorney. The applicant must file a Notice of Appeal and pay an appeal fee within six months of the refusal.
Arbitrary Mark: A mark that consists of words that don't describe or suggest a significant characteristic, ingredient, or quality of the goods or services that the mark is associated with, such as "Apple" for computers.
Assignment: The transfer of ownership of a trademark application or registration from one person or company to another.
Blackout Period: This refers to the time period between when the examining attorney approves a trademark for publication and when the USPTO issues the Notice of Allowance.
Certificate of Registration: The official document that shows that a trademark has been registered.
Certification Mark: A mark used by someone other than the trademark owner to identify a good or service has been certified to conform to a particular set of standards.
Collective Mark: A trademark or service mark used (or intended to be used) in commerce by members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.
Descriptive Mark: A mark that simply describes a characteristic, quality, feature, function, use, or purpose of the specified goods or services, such as "spicy sauce" for salsa or "denim" for jeans.
Design Code Search Manual: This manual lists the numerical codes for searching designs in the USPTO's database of trademarks.
Disclaimer: A trademark registrant or applicant's statement he or she doesn't claim the exclusive right to use certain element(s) of the mark. A disclaimer allows a mark to be registered as a whole even though certain element(s) would not be registered standing alone.
Examining Attorney: A USPTO employee who reviews and determines if a trademark application complies with all of the legal and regulatory requirements to be a federally registered trademark.
Fanciful Mark: A term that has been invented solely to be a trademark or service mark such as "Pepsi", "Exxon", or "Kodak".
Generic Terms: Terms that the public understands as the class or common name for particular goods or services, such as "classes online" for classes that are offered through the Internet. Generic terms can't be registered.
Goods and Services: An applicant must list the goods and/or services that the mark is or will be used with. In relation to service marks, a service must be a real activity and performed for the benefit of, or to the order of, a person other than the applicant. The activity performed also has to be different from things that are necessarily done in connection with the sale of goods or performance of another service.
Identification of Goods and/or Services: All trademark applications must identify good and/or services that the trademark will be used for. The USPTO will return any application (and refund the fee) that fails to list recognizable goods and/or services.
Informal Application: If an application is missing any elements required to receive a filing date, it's considered an informal application and will be returned to the applicant.
Intent to Use: When a person files an intent to use application, the applicant is looking to register a mark that he or she has not used yet. This type of application requires an applicant to include a sworn statement that he or she has a genuine intention to use the mark in commerce.
Likelihood of Confusion: This is a statutory basis to refuse registration of a trademark, due to the fact that it will likely conflict with a mark that is already pending or registered with the USPTO. The primary factors for determining the likelihood of confusion are the similarity between the marks and the commercial relationship between the goods and/or services that are listed in the application.
Madrid Protocol: The abbreviated title of the international treaty known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. This treaty allows a trademark owner to file a single international application and seek registration in any country that is a party to the treaty.
Mere Descriptiveness: This is a statutory basis to refuse registration of a mark due to the fact that the mark simply describes a quality, use, characteristic, purpose, feature, ingredient, or function of the specified goods or services.
Notice of Abandonment: The USPTO's written notification that an application has been abandoned and is no longer pending.
Notice of Allowance: This is a written notification from the USPTO that indicates that a mark has survived the opposition period (after being published in the Official Gazette). This notice doesn't mean the mark is registered, but it means that the mark is eligible for registration.
Notice of Publication: This is a written statement from the USPTO indicating that the applicant's mark will be published in the Official Gazette.
Office Action: A letter from an examining attorney that indicates the legal status of a trademark application. Office actions include: priority actions, non-final Office actions, suspension inquiry letters, and examiner's amendments.
Opposition Proceeding: This a proceeding held before the Trademark Trial and Appeal Board where a plaintiff seeks to prevent registration of a mark.
Principal Register: This is the USPTO's primary trademark register, and once a mark is registered on it, it's entitled to all the rights provided by federal law.
Priority Action: This is a letter sent by an examining attorney to inform the applicant what requirements he or she must meet before the application can be approved for publication.
Pseudo Mark: A word that is intentionally misspelled or an alternate spelling for a word that is protected by a mark that already exists. A pseudo mark search finds spellings that are very similar or phonetically equivalent to the word mark.
Registration: Officially establishes trademark rights based on the legitimate use of the mark. While federal registration of a trademark is not required, registration has its benefits.
Search: Upon receiving a trademark application, the USPTO performs a search of its records to determine if the mark can be registered, meaning there aren't any conflicting marks in the records.
Service Mark: This refers to a name, symbol, device, or word that is used to indicate and distinguish services provided by a particular person or company. The terms "trademark" and "mark" are often used to refer to service marks, and the only difference between a trademark and service mark is that the former is used for goods, while the latter is used for services.
Specimen: This term refers to a real-world example of how the mark is used on goods and/or services. Acceptable specimens include labels, tags, or containers for goods.
Statement of Use: A sworn statement signed by the trademark applicant that verifies that the mark is used in commerce.
Suggestive Mark: A mark that requires perception, imagination, or thought to understand the nature of goods or services.
Trademark: Protection for words, symbols, sounds, names, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. As long as trademarks continue to be used in commerce, they can be renewed forever.
Trademark Act of 1946: The Trademark Act (located in U.S.C. Title 15, Chapter 22) is the governing body of U.S. law for federal trademark registration.
Trademark Application: The document needed to file for federal trademark registration, which must include (1) the applicant's name, (2) a name and address for communication, (3) a clear drawing of the mark, (4) a list of the goods or services that will be associated with the mark, and (5) the filing fee.
Trademark Electronic Application System (TEAS): The USPTO's electronic trademark filing system.
Trade Dress: A product's packaging, color, design, or other distinguishing element of appearance that is non-functional.
Trademark Trial and Appeal Board: This is the board at the USPTO that has jurisdiction over cancellation hearings, opposition hearings, and appeals of Trademark Office decisions.
Use-Based Application: Four bases are available for filing a trademark application: (1) use of the mark in commerce, (2) intent to use the mark in commerce, (3) pending foreign application, and (4) foreign registration. When a person files a use-based application, the mark must be in use before or at the time of filing.
Use in Commerce: In the context of trademarks, commerce refers to all commerce that Congress may lawfully regulate, such as interstate commerce or commerce between the U.S. and a foreign country. The use in commerce must be a genuine use of the mark in the ordinary course of trade, and not just used to receive trademark protection.
Word Mark: A type of trademark that consists of text.
Getting Legal Help
If you have any questions about the trademark terms listed in this glossary, or if you would like help filing an application for a trademark, you may want to contact a local trademarks attorney.
For more information and resources related to this topic, you can visit FindLaw's Trademarks section.
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