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Trademark Glossary

Trademarks are crucial for safeguarding a company's or an individual's brand. They prohibit others from using the same mark to offer similar goods or services. This trademark glossary provides definitions for common trademark terminology. This glossary covers many terms that small business owners looking to learn more about how to protect their company should know.

Abandonment:

Abandonment occurs when the U.S. Patent and Trademark Office (USPTO) doesn't receive a Statement of Use or a response to an Office Action letter within 6 months of its mailing. An application is not abandoned if you file a request for an extension to file it.

Abandoned Application:

An application filing with the USPTO that is not active or pending. The trademark applied for will not advance to registration unless the applicant asks for reinstatement or revival.

Allegation of Use:

A sworn statement signed by the trademark applicant verifying that the mark is in use in commerce. A "specimen" that shows how the mark is being used for each class of goods and/or services must be with the application.

Appeal:

A trademark applicant files an appeal with the USPTO's Trademark Trial and Appeal Board to contest a final refusal. The applicant must file a Notice of Appeal and pay an appeal fee within six months of the examining attorney's 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. An example would be "Apple" for a computer.

Assignment:

The transfer of ownership of a trademark application or registration from one person or company to another.

This can also refer to the examining attorney at the USPTO once they have the application to review.

Blackout Period:

This refers to the period between when the examining attorney approves a trademark for publication and when the USPTO issues the Notice of Allowance.

Business Name:

The name that a company uses to conduct business is a business name, or trade name. A business name or trade name can be a company's legal name, brand name, or fictitious name (commonly referred to as a "DBA", Doing Business As).

Certificate of Registration:

The official document once an application and mark have been approved. It 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 that has been certified to conform to a particular set of standards. The standards are set by an organization or entity that is not the USPTO. For example, "100% Certified Louisiana Seafood" through the Louisiana Department of Wildlife and Fisheries Program.

Collective Mark:

A trademark or service mark used (or intended to be used) in commerce by cooperative members, an association, or other collective group or organization members. This includes a mark indicating membership in a union, association, or organization. An example is the "EPA Energy Star" blue logo through the Environmental Protection Agency and the U.S. Department of Energy.

Descriptive Mark:

A descriptive mark is a term that defines a feature, quality, function, or purpose of a particular product or service. Examples are "spicy sauce" for salsa or "Tasty Bakery" for a bakery. Protecting descriptive marks under trademark law can be difficult due to their lack of inherent distinctiveness.

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 that they don'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 to stand alone. For example, "No claim is being made to the exclusive right of the term bakery" in an application for "Tasty Bakery."

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 invented solely to be a trademark or service mark such as "Netflix," "Cheetos," or "Kodak."

Generic Terms:

Terms that the public understands as the class or common name for particular goods or services. An example is "classes online" for classes offered through the internet. Registration is not available for generic terms.

Goods and Services:

An applicant must list the goods and/or services with which the mark is or will be used. With service marks, a service must be a real activity and performed for the benefit of, or to, a person other than the applicant. The activity performed also has to be different from things done in connection with the sale of goods or the performance of another service.

Identification of Goods and/or Services:

All trademark applications must identify goods 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. It gets returned to the applicant.

Intent to Use:

Applicants are looking to register a mark that they have not used yet when filing an intent to use application. This type of application requires applicants to include a sworn statement that they have a genuine intention to use the mark in commerce within six months of approval.

Intellectual Property:

A category of rights that protect creations of the mind or types of creative works such as:

  • Images
  • Ideas
  • Symbols
  • Logos
  • Writings
  • Designs

There are four types of intellectual property rights:

These are intangible assets.

Inventor:

An individual who invented or discovered the invention.

Lanham Act (Trademark Act of 1946):

The U.S. trademark law is primarily governed by the Lanham Act. When a business uses a logo or name in commerce, common law rights are acquired automatically and enforceable in state courts. Marks registered with the USPTO have a higher level of protection in federal courts than unregistered trademarks.

Likelihood of Confusion:

This is a statutory basis to refuse registration of a trademark because 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 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 because the mark simply describes a quality, use, characteristic, purpose, feature, ingredient, or function of the specified goods or services. An example the USPTO gives is "creamy" for yogurt.

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 is a proceeding held before the Trademark Trial and Appeal Board where a plaintiff seeks to prevent the registration of a mark.

Principal Register:

This is the USPTO's primary trademark register. Once a mark is registered, it's entitled to all the rights provided by federal law.

Priority Action:

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 phonetically equivalent or very similar spellings to the word mark. An example would be "MacDonalds" for the fast-food restaurant "McDonald's."

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. It checks to make sure there are not any conflicting marks in the records.

Service Mark:

This refers to a name, symbol, device, or word 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. The only difference between a trademark and a service mark is that trademark is for goods and a service mark is 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 and website screenshots for services for sale.

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. An example is "Netflix" for online streaming services.

Trademark:

A type of protection for intellectual property that consists of colors, names, words, sounds, or symbols that distinguish services and goods from those sold or manufactured by others and indicate the goods' source. As long as trademarks continue to be used in commerce, they can be renewed forever.

Trademark Act of 1946:

The Trademark Act (located in 15 USC Ch. 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:

  • The applicant's name
  • Name and address for communication
  • Clear drawing of the mark
  • List of the goods or services that will be associated with the mark
  • Filing fee

Trademark Electronic Application System (TEAS):

The USPTO's electronic trademark filing system. TEAS is accessible for free on the uspto.gov website.

Trademark Electronic Search System (TESS):

The USPTO's searchable trademark database. Users can use this USPTO database to search for both pending and existing trademark applications. TESS is accessible for free on the uspto.gov website.

Trademark Infringement:

When someone uses a trademark that is identical or very similar to another business's trademark in connection with goods or services that will likely confuse, deceive, or cause mistakes among consumers. To ensure legal protection, trademark owners may take legal action against infringers by:

Trademark License:

This refers to an agreement between the owner of a trademark and another party, granting permission for the other person or business to use the trademark. The license gives the other party the legal right to use the trademark.

Trade Dress:

Non-functional elements of a product's appearance, such as its packaging, color, or design, that make it unique. An example of trade dress would be the outside packaging of a PlayStation 5 gaming console.

Trademark Trial and Appeal Board (TTAB):

The board at the USPTO handles:

  • Cancellation hearings
  • Opposition hearings
  • Appeals of decisions made by the Trademark Office

United States Patent and Trademark Office (USPTO):

The USPTO is the federal agency in charge of awarding patents and registering trademarks in the United States. They review each trademark application to determine if it meets the necessary criteria for protection. The USPTO provides an online database of registered patents and trademarks that can be accessed by the public.

Use-Based Application:

Describes the basis or reasons for a trademark request. 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 (foreign meaning outside of the United States)
  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 for Trademark Protection

For trademark legal advice or help with trademark applications, please contact a local trademark attorney.

For more information and Trademark FAQs related to this topic, you can visit FindLaw's Trademarks section.

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