terminology related to patent “speak,” I thought it might be helpful to have a
similar glossary of terms for trademark terminology. Although trademark law tends to be less
complex than patent law, without a fundamental understanding of the terms
trademark lawyers use, it is easy to get lost in a conversation with a
an understanding of trademark law, and in any case, you can impress your
trademark attorney with your grasp of trademark terms and concepts. As with the
patent glossary, this glossary may also grow over time.
has been declared abandoned is “dead” and no longer pending. The most common reason for abandonment of a
trademark or service mark application is when the U.S. Patent and Trademark
Office (“USTPO”) does not receive a response to an Office Action (see
definition below) from the applicant within 6 months from the date the Office
Action was mailed.
Identification of Goods and Services Manual: This manual lists numerous examples of identification
of goods and services that are acceptable to the USPTO for inclusion in trademark applications and registrations.
Distinctiveness: See Secondary Meaning.
a person authorized to sign on behalf of the applicant attesting to use of the
mark in commerce. The allegation of use must include one specimen showing use
of the mark in commerce for each class of goods/services included in the
application, and the required fee.
Use: An Allegation of Use filed
before the Examining Attorney (see below) approves the mark for publication and
prior to issuance of the trademark registration. The Amendment to Allege Use and the Statement
of Use (see below) include the same information, and differ only as to the time
(Trademark): A document by which a
person requests a federal trademark registration. To receive a filing
date, an application must include (1) the applicant’s name, (2) a name and
address for correspondence, (3) a clear drawing of the mark sought to be
registered, (4) a list of the goods or services, and (5) the application
application or trademark registration from one entity to another.
Proceeding: A proceeding before the
Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an
existing registration of a mark.
Registration: Official document from the USPTO evidencing that a mark has been registered.
Classification of Goods and Services: Goods and Services are classified by
an international system, according to international treaties to which the
United States is a signatory. All goods and services included in trademark
applications are classified by the Office according to this system. Goods are classified in International Classes (IC) 001 through 034, and services are classified in IC 035-045.
absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court
can be very difficult, requires meticulous documentation, and places a heavy
burden on the individual. Active Federal
registration of trademark can provide a higher degree of legal protection and
readily-demonstrated evidence of ownership of a mark.
or abandoned status for a
trademark application means that specific application is no longer under prosecution within the USPTO,
and would not be used as a bar against your filing.
Incontestability: See Section 15
describes an ingredient, quality, characteristic, function, feature, purpose or
use of the specified goods or services. If a mark is merely descriptive or deceptively
misdescriptive of the goods or services to which it relates, the mark will be
refused registration on the Principal Register under §2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1).
statement that the applicant or registrant does not claim the exclusive right
to use a specified element or elements of the mark. The purpose of a disclaimer
is to permit the registration of a mark that is registrable as a whole but
contains matter that would not be registrable standing alone.
A USPTO employee who examines (reviews
and determines compliance with the legal and regulatory requirements of) an
application for registration of a federally registered trademark.
The registrant failed to renew the trademark registration at the end of the
that have been invented for the sole purpose of functioning as a trademark or
service mark. Such marks comprise words
that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are
completely out of common usage (e.g., FLIVVER).
registration of a mark. The Trademark Act sets out five filing bases, and an
applicant must specify and meet the requirements of one or more bases before
the mark will be approved for publication for opposition or registration on the
Supplemental Register (see below). The
five bases are: (1) use of a mark in commerce under §1(a) of the Act; (2) bona
fide intention to use a mark in commerce under §1(b) of the Act; (3) a claim of
priority, based on an earlier-filed foreign application under §44(d) of the
Act; (4) registration of a mark in the applicant’s country of origin under
§44(e) of the Act; and (5) extension of protection of an international
registration to the United States, under §66(a) of the Act and the Madrid
understands primarily as the common or class name for the goods or services.
These terms are incapable of functioning as trademarks denoting source, and are
not registrable on the Principal Register (see below) under 2(f) or on the
Supplemental Register (see below). Examples include: CLASSES ONLINE for classes
provided via the Internet, PIZZA.COM for pizza ordering and delivery services,
and LIVE PLANTS for plant nurseries.
Goods and/or Services: A written
statement of the goods and/or services included in an application. Every
application must include an identification of goods and/or services.
provided for in Trademark Act Section 1(b), 15 U.S.C. 1051(b). Applicants who
have not yet used the mark they wish to register may file a trademark
application under this filing basis. An
“intent to use” application must include a sworn statement (usually
in the form of a declaration) that applicants have a bona fide intention to use
the mark in commerce.
International Class (IC): See Classification of Goods and Services above.
Confusion: A statutory basis
(Trademark Act Section 2(d), 15 U.S.C. Section 1052(d)), for refusing
registration of a trademark or service mark because it is likely to conflict
with a mark or marks already registered or pending before the USPTO. After an
application is filed, the assigned Examining Attorney will search the USPTO
records to determine if such a conflict exists between the mark in the
application and another mark that is registered or pending before the USPTO.
The principal factors considered by the examining attorney in determining
whether there is a likelihood of confusion are: (1) the similarity of the
marks; and (2) the commercial relationship between the goods and/or services
listed in the application. To find a conflict, the marks do not have to be
identical, and the goods and/or services do not have to be the same. It may be
enough that the marks are similar and the goods and/or services related.
(NOA): A written notification from
the USPTO that a specific mark has survived the opposition period following
publication in the Official Gazette (see below), and has consequently been
allowed for registration. It does not mean that the mark has registered yet.
an applicant that its mark will be published in the Official Gazette (see
below). If the Examining Attorney raises
no objections to registration, or if the applicant overcomes all objections, the
Examining Attorney will approve the mark for publication. The notice of
publication provides the date of publication. Any party who believes it may be
damaged by registration of the mark has thirty (30) days from the publication
date to file either an opposition to registration or a request to extend the
time to oppose.
setting forth the legal status of a trademark application. There are several
types of Office actions: examiner’s amendments, priority actions, non-final
Office actions, final Office actions, and suspension inquiry letters.
includes regular and special notices of the Office.
Appeal Board in which the plaintiff seeks to prevent the issuance of a
registration of a mark. An opposition is similar to a proceeding in a federal
court, but is held before the Trademark Trial and Appeal Board, a USPTO
administrative tribunal. An opposition may only be filed in response to the
publication of the mark in the Official Gazette.
When a mark has been registered on the Principal Register, the mark is entitled
to all the rights provided by the Trademark Act. For a listing of the advantages of owning a
registration on the Principal Register see “Registration” below.
Opposition: If the examining
attorney raises no objections to registration, or if the applicant overcomes
all objections, the examining attorney will approve the mark for publication in
the Official Gazette.
the establishment of rights in a mark based on legitimate use of the mark.
Although federal registration of trademarks is not required to use a trademark,
owning a federal trademark registration has several advantages, including
notice to the public of the registrant’s claim of ownership of the mark, a
legal presumption of ownership nationwide, the exclusive right to use the mark
on or in connection with the goods or services set forth in the registration,
the ability to bring an action concerning the mark in federal court, the use of
the U.S. registration as a basis to obtain registration in foreign countries,
and the ability to file the U.S. registration with the U.S. Customs Service to
prevent importation of infringing foreign goods.
of Time to File a Statement of Use:
A sworn statement signed by the owner or a person authorized to sign on
behalf of the owner, stating that the applicant still has a bona fide intention
to use the mark in commerce, and needs additional time to use the mark in
commerce. A filing fee per class of
goods/services must accompany the Extension Request.
of Continued Use: A sworn statement,
filed by the owner of a registration that the mark is in use in commerce. It must be filed by the current owner of the
registration and the USPTO must receive it during the following time
periods: (1) At the end of the 6th year
after the date of registration, and (2) At the end of each successive 10-year
period after the date of registration. There is a six-month grace period. If
these rules and deadlines are not met, the USPTO will cancel the registration.
Application: A sworn document, filed
by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations issued on or
after November 16, 1989, remain in force for 10 years, and may be renewed for
10-year periods. Trademark registrations
issued or renewed prior to November 16, 1989 remain in force for 20 years, and
may be renewed for 10-year periods. Trademark
owners have a total of 18 months to file a §9 Renewal Application. The §9
Renewal Application may be filed one year prior to the registration expiration
date or during the 6-month grace period immediately after the date of
expiration. If the §9 Renewal Application is not filed or is filed after the
grace period ends, the registration will expire.
Declaration of Incontestability: A
sworn statement, filed by the owner of a mark registered on the Principal
Register, claiming “incontestable” rights in the mark for the goods/services
specified. An “incontestable”
registration is conclusive evidence of the validity of the registered mark, of
the registration of the mark, of the owner’s ownership of the mark and of the
owner’s exclusive right to use the mark with the goods/services. Filing a Section 15 Declaration is optional.
However, there are certain rules governing when one may be filed. A §15
Affidavit may not be filed until the mark has been in continuous use in
commerce for at least five consecutive years subsequent to the date of
registration. The §15 Affidavit must be
executed and filed within one year following a 5-year period of continuous use
of the mark in commerce.
indicate the source of the services and to distinguish them from the services
of others. A service mark is the same as a trademark except that it identifies
and distinguishes the source of a service rather than a product. The terms
“trademark” and “mark” are often used to refer to both
trademarks and service marks.
(aka Acquired Distinctiveness): A doctrine of trademark law that provides that
trademark protection is afforded to the user of an otherwise unprotectable mark
when the mark, through advertising or other exposure, has come to signify that
a product or service comes from a single source.
actually used on goods or in the offer of services. Labels, tags, or containers for goods are
considered to be acceptable specimens of use for a trademark. For a service
mark, specimens may be advertising such as magazine advertisements or
brochures. One specimen is required for
each class of goods or services specified in the trademark application.
(SOU): An Allegation of Use filed
after issuance of the Notice of Allowance.
The Amendment to Allege Use and the Statement of Use include the same
information, and differ only as to the time when filed.
be registered. Another name for this type of mark is “special form.” If the
mark includes a particular style of lettering, or a design or logo, the mark is
considered to be stylized or in special form. Therefore, applicants must select
the “stylized or special form” mark format when applying for these
types of marks. The mark in special form
must be a substantially exact representation of the mark as it appears on the
specimen or on the foreign registration, as appropriate.
Format: An applicant may submit a
standard character format representation of a mark if (1) All letters and words
in the mark are depicted in Latin characters; (2) all numerals in the mark are
depicted in Roman or Arabic numerals; (3) the mark includes only common
punctuation or diacritical marks; and (4) the mark does not include a design
services at issue, requires imagination, thought or perception to reach a conclusion
as to the nature of those goods or services.
Suggestive words are acceptable for registration (e.g. “Nutrasweet” for
to indicate the source of goods and to distinguish them from the goods of
(USC). The major body of U.S. law that
governs federal registration of trademarks.
Application System (TEAS): USPTO’s
electronic filing system.
Search System (TESS): USPTO’s online
database for searching pending,
Examining Procedure (TMEP): A reference
work on the practices and procedures relative to registration of marks in the
USPTO. It contains guidelines for USPTO
examining attorneys, trademark applicants and owners, and attorneys and
representatives for trademark applicants and owners.
registration, “commerce” means all commerce that the U.S. Congress
may lawfully regulate; for example, interstate commerce or commerce between the
U.S. and another country. “Use in commerce” must be a bona fide use
of the mark in the ordinary course of trade, and not use simply made to reserve
rights in the mark.