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Trademark Glossary

Post Time:2012-09-10 Source:findlaw.com Author: Views:

Abandonment - A trademark application that has been declared abandoned is "dead" and no longer pending. Abandonment can occur under several circumstances. The most common reason is when the U.S. Patent and Trademark Office (USPTO) does not receive a response to an Office Action letter within 6 months of mailing. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.  

Allegation of Use - a sworn statement signed by a trademark applicant (or 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 the goods/services included in the application, and the required fee.

Appeal - A trademark applicant who wants to contest a final refusal from an examining attorney may file an appeal to the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board. An appeal is taken by filing a Notice of Appeal and paying the appeal fee within six months of the mailing date of the action from which the appeal is taken.

Application (Trademark) - 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 filing fee.

Arbitrary Marks - Comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., "Apple" for computers; "Old Crow" for whiskey).

Assignment - A transfer of ownership of a trademark application or trademark registration from one entity to another.

Blackout Period - The period between the date the USPTO's examining attorney approves a trademark for publication and the date of issuance of the Notice of Allowance from the USPTO. The applicant may not file an Allegation of Use during this period.

Certificate of Registration - Official document from the USPTO evidencing that a trademark has been registered.

Certification Mark - Any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

Collective Mark - A trademark or service mark used, or intended to be used, in commerce, by the 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 trademark is considered merely descriptive if it 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. Examples of descriptive marks include: "Medical Guide" for website services featuring medical guides, " Denim" for jeans, and "Spicy Sauce" for salsa.

Design Code Search Manual - Lists the numerical codes for searching designs in the USPTO's trademark database.

Disclaimer - A statement that the trademark 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, without creating a false impression of the extent of the registrant's right with respect to certain elements in the mark.

eTEAS - The USPTO's "electronic Trademark Examination Application System" - electronic trademark filing system. It allows the public to complete various trademark filings and transactions on-line.

Examining Attorney - 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

Fanciful Marks - Comprise terms 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").

Generic Term - Terms that the relevant purchasing public 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. 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 Services - Goods are products. In the context of service marks, a service (1) must be a real activity; (2) must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service.

Identification of Goods and/or Services - A written statement of the goods and/or services included in a trademark application. Every application must include an identification of goods and/or services. If you fail to list any recognizable goods or services, the USPTO will return the application and refund the fee.

Informal Application - A trademark application that has been filed without one or more of the elements required to receive a filing date. The USPTO will return informal applications to applicants.

Intent to Use - Applicants who have not yet used the trademark they wish to register may file an "intent to use" trademark application. 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 Application - Allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application.

Likelihood of Confusion - A statutory basis 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 U.S. Patent and Trademark Office (USPTO). The principal factors considered 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.

Madrid Protocol - The "Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks" (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application."

Mere Descriptiveness - Statutory basis for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services.

Notice of Abandonment - A written notification from the USPTO that an application has been declared abandoned or, in other words, is no longer pending.

Notice of Allowance - A written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

Notice of Publication - A written statement from the USPTO notifying an applicant that its mark will be published in the Official Gazette.

Office Action - A letter from a trademark examining attorney from the USPTO, 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.

Opposition Proceeding - A proceeding 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.

Principal Register - Primary trademark register of the USPTO. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by federal law.

Priority Action - A letter in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication.

Pseudo Mark - A way of locating a word mark that is comprised of an alternative or intentionally corrupted spelling of an English word. The pseudo mark search locates spellings that are very similar or phonetically equivalent to the word mark.

Registration - Federal registration of trademarks involves 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.

Search - After a trademark application is filed, the USPTO will conduct a search of USPTO records for conflicting marks as part of the official examination process. The official search is not done for the applicant but rather to determine whether the mark applied for can be registered.

Service Mark - A word, name, symbol or device that is to 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.

Specimen - A real-world example of how the mark is 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.

Statement of Use - A sworn statement signed by a trademark applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce.

Suggestive Mark - A mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services.

Trade Dress - A product's design, product packaging, color, or other distinguishing nonfunctional element of appearance.

Trademark - protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

Trademark Act - Trademark Act of 1946 (currently contained in Chapter 22 of Title 15 of the United States Code); the major body of U.S. law that governs federal registration of trademarks.

Trademark Trial and Appeal Board - An administrative tribunal at the USPTO. It has jurisdiction over appeals from decisions of the Trademark Office, as well as opposition proceedings and cancellation proceedings.

Use-Based Application - There are four filing bases on which a trademark application may be based. One filing basis is use of the mark in commerce (the other three are filing based on an intent-to-use the mark in commerce, filing based on a pending foreign application, and filing based on a foreign registration). Applicants who file based on use in commerce must be using the mark they wish to register with the goods or services in the application prior to or at the time of filing the application.

Use in Commerce - For the purpose of obtaining federal trademark 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.

Word Mark - A type of trademark comprised of text.

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