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Brown & Michaels

"What's it mean..." - Our Trademark Glossary


A B C D E F GH I JK LMN O P QR S T U VWXYZ


This trademark dictionary is meant to contain most of the most commonly used words and phrases which turn up in trademark practice. Is there a "trademarkese" term you don't understand and can't find here? E-mail us and we'll add it. 

- A -

Abandonment - Ceasing to use a mark, with the intention not to resume using the mark again. Once a mark is abandoned, someone else may adopt it for their goods or services. Abandonment may be presumed if a mark has not been used for three years or more. However, that presumption may be overcome, if the owner of the mark has made minor continuing use, or has plans to resume use.  

Acceptable Identification of Goods and Services Manual - a database maintained by the USPTO, containing a list of descriptions of goods and services which the USPTO will automatically accept in applications to register marks. An application e-filed through the TEAS system may use these descriptions to increase the likelihood that the application will be accepted without rejection based on the descriptions - applications e-filed through TEAS Plus must use descriptions selected from this list. Note that it is not enough that you have found a description on the list which sounds good and the USPTO will accept - that description must also accurately describe the goods or services that you are actually selling!

Acquired Distinctiveness - A mark which is basically descriptive of a characteristic of the goods or services to which it is applied can acquire distinctiveness over time as the mark is exclusively used to distinguish one user's goods from the rest of the marketplace. After a period of exclusive and unchallenged use, a mark which has acquired distinctiveness begins to function as a true trademark and may be registered under section 2(f) of the Trademark Act on the Principal Register

Allegation of Use - (formerly called "Statement of Use"). Once an application to register a mark based on an intent to use (ITU) has been allowed, the applicant must file an Allegation of Use with the date of first use and a specimen of use before the mark will be registered. 

Allowed - approved for registration.

Appeal - asking a higher authority to review a decision. Some decisions of Examining Attorneys (i.e. final rejections)  may be reviewed by appeal to the Trademark Trial and Appeals Board (TTAB). Some TTAB decisions may be appealed to the Court of Appeals for the Federal Circuit (CAFC). Some decisions which are not appealable may be overturned by petitioning the Commissioner of Trademarks. 

Application Number: Each application for a trademark is assigned an application number, which consists of a two-digit series number and a six-digit serial number, conventionally separated by a slash (/). For example, in the application number 85/123,456, the series is "85" and the serial number is "123456".  

Arbitrary - Arbitrary marks use ordinary words, but the words are not associated with the product. For example, "Shell" for petroleum products, "Wishbone" for salad dressing, "Amazon" for a bookseller, "Apple" for computers.

Assignee - buyer

Assignment - (v) "selling" a trademark or application, and (n) the document evidencing the sale. Note that trademarks may not be assigned without also selling the goodwill of the business associated with the mark, and ITU applications cannot be assigned, except to a purchaser of the entire business. See also "license". 

Assignment in Gross - sale of just a trademark, without the accompanying business and goodwill. Assignments in Gross are not permitted in US law. 

Assignor - seller

- B -

Blurring - use of a famous mark by another in a way which makes it less clear that the mark belongs to the original owner. Blurring is a form of trademark dilution.  For example, even though Kodak does not sell ice cream, and is unlikely to ever sell ice cream, it could act against someone selling "Kodak Ice Cream" on the grounds of blurring. 

Brand - The name of a product. All brands are trademarks, but not all trademarks are brands. The word "brand" is often used to emphasize the trademark nature of a mark - for example, "Scotch brand adhesive tape". The word derives from cattle brands, marks burned into the hides of cows to distinguish one rancher's herd from another. 

- C -

CAFC - Court of Appeals for the Federal Circuit - The Federal Appellate Court which primarily hears appeals from District Courts or the USPTO in patent and trademark cases. 

Cancellation - Action to remove a mark from registration, brought by someone who believes they are injured by the continued registration of the mark. Cancellation Actions are brought in the Trademark Trial and Appeals Board (TTAB). The cancellation is begun by filing a Petition to Cancel setting out the grounds for the cancellation, to which the registrant must file a Reply. Thereafter, the cancellation action is, in effect, a trial in the Trademark Trial and Appeals Board (TTAB). Each side has discovery, takes testimony, and files briefs. If the TTAB rules for the plaintiff, the registration is canceled.  

CCPA - Court of Customs and Patent Appeals - a Federal court which heard cases from the Patent Office, the Customs Court and the International Trade Commission. In 1982 the CCPA and the appellate division of the Court of Claims were merged to form the CAFC.

Certificate of Registration - the printed certificate issued by the USPTO when a mark is registered.  

Certification Mark - A special kind of trademark which indicates that goods or services meet a specific standard. Certification marks may only be used to certify other people's goods, never one's own. The Woolmark (reg. tmk.954,688) or the Underwriters Laboratories (UL) Seal (reg. tmk. 782,589) are examples of certification marks. 

Class - see International Class

Coined - Coined or Fanciful marks are those which have no meaning, outside of the mark itself. "Kodak" or "Xerox" are good examples. Neither had any meaning in any language before they were invented to describe new products.

Collective Mark - A mark used by members of a group to identify their goods or services. Examples of collective marks would be "IGA" for supermarkets owned by members of the International Grocers' Alliance, or "FTD" for members of Florists' Transworld Delivery.  
Collective Membership Mark - A mark used by members of a group to indicate membership in the group (as opposed to Collective Marks which are applied to their goods or services). An example of a Collective Membership Mark would be the ARRL in a diamond symbol used by ham radio operators who belong to the American Radio Relay League, or the AAA in an oval mark used by members of the American Automobile Association.  
Color (claim to) - In most cases, a trademark may be used in any color. However, in some cases color may be a part of a mark, as in the Mobil trademark with "M-bil" in blue and a red "o". Or, the mark may itself be a color, as in pink insulation (a trademark of Owens Corning). In such a case, it is said that there is a "claim to a color". 

Common Law trademark - Under US law, a trademark is created by use in commerce - that is, selling goods bearing the mark, or performing services in connection with the mark. Unregistered trademarks created by use in commerce are protected under state law, and are referred to as "common law trademarks" (as opposed to "registered trademarks"). 

Community Trademark - trademark registered under the European Union trademark registration system, administered by OHIM. The Community trade mark (CTM) was introduced in 1996 to cover the whole of the European Union and is valid in all Member States (27 of them, as of January 2007).

Composite Mark - a mark which includes both a word mark and a design. The FTD mark, shown above, is a composite of the letters "FTD" and the Mercury-holding-flowers design. 

Compound Word Mark - a mark which comprises two or more words run together into one. For example, CHAPSTICK is a compound mark made up of the words "CHAP" and "STICK". 

Concurrent Use - An agreement to allow more than one party to use a mark at the same time. Concurrent use agreements usually split the markets within which each party may use the mark, either geographically or by a particular market segment. 

Constructive Date of First Use - in registrations issued based upon an Intent to Use application, the date of first use is legally the date of application, rather than the actual date the mark was used in commerce. Because this date is a legal fiction, it is called "constructive" first use, rather than "actual" first use. 

Constructive Notice - if a mark is registered, anyone who begins the use the mark after the date of registration is legally considered to know about the mark, whether or not they actually took the time to look on the register. It is thus not necessary to prove that they actually knew about the mark ("actual notice") - their adoption of the mark with "constructive notice" of its registration is not considered to have been in good faith. 

Continued Use (Statement of) - See Section 8

- D -

Date of First Use - actual or constructive

Date of First Use in Commerce - the date the mark was first used in commerce which may lawfully be regulated by the US Congress -  that is,  in more than one State or between the United States and a foreign country (15 U.S.C. §1127). See "Use in Commerce"

DEAD (status indicator) - the USPTO TESS system flags a registration or application as "DEAD" status if it has become abandoned or expired or cancelled for any reason. Note that just because the record has a "DEAD" status, that does not mean that the mark is abandoned - the registration might have expired due to the failure of the owner to file a form, while they are still extensively using the mark itself, so that their common law trademark rights continue. 

Deceptive Mark: A deceptive mark is one which is (a) misdescriptive of the character, quality, function, composition or use of the goods; such that (b) prospective purchasers are likely to believe that the description actually describes the goods; and therefore (c) the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase. Deceptive marks may not be registered. An example of a deceptive mark is "Organic Aspirin" for a dietary supplement which is not aspirin (Bayer Aktiengesellschaft v. Stamatios Mouratidis, Opposition No. 91185473 (TTAB 2010)).

Deceptively Misdescriptive: A mark which is characterized by an examining attorney as "deceptively misdescriptive" meets tests (a) and (b) for being "Deceptive" (see above), but not test (c). Deceptively misdescriptive marks can be registered on the Supplemental Register and can acquire distinctiveness for the purposes of registration under section 2(f). 

Descriptive - Descriptive marks convey an immediate idea of ingredients, qualities or characteristics of the goods or services. "Very Best" might be a descriptive mark. "Chapstick" is descriptive, as it immediately suggests a stick for chapping. If the mark functions to identify the source of the goods, either when adopted or through use, it may be registrable, but is afforded less protection than coined, arbitrary, or suggestive marks. The division between suggestive and descriptive marks is not always easy to spot.

Design Mark - a mark which consists of a graphic element (sometimes called a "logo"). "Mr. BIC", at right, is a design mark. 

Dilution - use of a mark by others in such a way as to reduce the value of the mark to the mark owner. The term "dilution" refers to both "blurring" and "disparagement" or "tarnishment".  The Trademark Dilution Revision Act of 2006 provides relief from the likelihood of dilution (rather than requiring proof of actual dilution), but only for "famous" marks. 

Disclaimer - an indication on a trademark registration that the registrant does not claim any rights in a part of their mark, apart from the entire mark as shown. The disclaimed part is usually generic or descriptive wording. For example, registration 3,212,694 for "Dippin' Dots Ice Cream (plus design)" has a disclaimer to the words "Ice Cream". That means that Dippin' Dots has agreed not to attempt to stop others from calling their products "ice cream", but they can still sue those selling "Dippin' Dots Ice Cream".  

Disparagementsee tarnishment

Division (of application) - splitting an application into two (or more) applications, so that one or more of them can proceed to registration while the others remain pending. This procedure is used where an applicant has applied to register the mark on an intent-to-use basis, and the application is allowed, but they have only used the mark in commerce on some of the listed goods or services. They can divide the application, splitting out the goods they are selling into a new application for which they then file an Allegation of Use. The registration will issue on the new application, while the parent application continues to remain pending. 

Domestic Representative - a US representative of a foreign trademark owner on whom legal papers relating to the mark may be served. The foreign owner may name a Domestic Representative, but they are not required to do so. 

Drawing - that part of a trademark application or registration which shows the mark. In standard character marks, the "drawing" is simply the mark itself in ordinary type. 

- E -

ESTTA - the USPTO's electronic filing system for documents to be filed in the TTAB - appeals or opposition/cancellation actions. 

ETAS - the USPTO's electronic filing system for trademark assignments and related ownership documents. (EPAS is the equivalent for Patent Assignments) Most other trademark documents (applications, statements, etc.) are filed through TEAS

Examining Attorney - employee of the US Patent and Trademark Office (USPTO) who reviews trademark applications. Each Examining Attorney is assigned to a Law Office, and handles applications in one class of goods or services. 

Examination - the review of a patent application by an Examining Attorney.  The Examiner will review the application for conformity with regulations ("formality"), and will do a search of the databases to see if there are any earlier registrations or pending applications which pose a likelihood of confusion with the mark being applied for. The results of the examination are reported to the applicant in an Office Action, in which the Examiner may object to parts of the application, and/or reject it as confusingly similar to other marks. The applicant is given a time (usually six months) within which to respond to the Office Action by arguing or amending the application, after which the Examining Attorney may allow the application or reject it again.

Excusable non-use - at various times in the life of a registration, the owner must file a "Section 8" Allegation of Use, indicating that the mark is still in use in commerce on all of the listed goods or services. Normally, if the mark is no longer being used on an item in the listing of goods or services, that item must be canceled from the registration when filing the Section 8 allegation. However, there are some unusual circumstances in which the registration may be maintained even though some goods or services are temporarily not being sold under the mark. Examples of things which might be considered "excusable non-use" might be a trade embargo on an essential component or a fire or other disaster in the only plant which makes the product. For more information see the Trademark Manual of Examining Procedure (TMEP) section 1604.11.

Extension Request - when an Intent-to-Use application is allowed, the owner must file an Allegation of Use within six months. If the owner cannot do so, but still has a bona fide intent to use the mark, a request to extend the deadline for another six months can be filed. The deadline can be extended in this manner, six months at a time, up to a total of three years from the date of the notice of allowance. 

- F -

Fair Use - use of a trademark by someone other than the trademark owner. In order to be considered "fair use", the mark must be used to correctly refer to the owner's goods ("nominative use") in a way which makes it clear that the person using the mark is not applying the mark to his own goods. For example, it is fair use of a trademark to use the mark to compare your goods to the mark owner's ("The Chevy Malibu gets better mileage than the Rolls-Royce Corniche!") or to indicate compatibility ("Our floor mats fit Ford Explorer"). It would also be fair use for an author to use a trademark in a work of fiction ("John picked up his Norelco shaver and turned it on"), or, if the use is accurate, in a work of non-fiction ("Samsung televisions use a proprietary tuner circuit which..."). Not to be confused with the much better-known "fair use" principle for copyrights

Family of Marks - a number of marks owned by one owner which share a common element. For example, at one time Eastman Kodak had a family of "Kod-" marks - Kodachrome and Kodacolor for film, Kodabrome for paper, Kodalux for film processing, Kodell and Kodalaire for fabrics, etc. 

Famous Mark - a mark which has achieved such renown as to be entitled to additional protection, beyond the areas of commerce in which it is actually in use. Famous marks are protected against the likelihood of dilution under the Trademark Dilution Revision Act of 2006. For example, the mark "Xerox" is famous enough that no one could adopt and use the mark for ice cream, even though Xerox Corporation has never sold that product and probably never will.  

Fanciful - See "Coined"

Filing Basis - the grounds on which one applies to register a trademark. Such basis could be actual use in commerce (section 1(a) of the Trademark Act), a bona fide intent to use (section 1(b)), ownership of a foreign application to register the mark (section 44(d)) or of a foreign registration (section 44(e)), or based on a Madrid Protocol registration (section 66). A single application to register a mark can include multiple filing bases - for example, one might file an application for a mark based on actual use of the mark on t-shirts in class 025 and based on an intent to use the mark on coloring books in class 016. 

Filing Date - the date on which the application is filed in the USPTO. If the application is filed electronically through the TEAS system, the filing date is the date that the application was e-filed. If it was filed by mail, it's the date the application was actually received in the USPTO mail room. If the application is not complete when it is filed, the USPTO may refuse to assign a filing date until the missing parts are filed.  

Foreign Equivalents - Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. (TMEP 1207(b)(vi)) For example, BUENOS DIAS was held to be confusingly similar to the mark GOOD MORNING. 

Fraud on the Trademark Office - making a false statement of fact in a filing in the Trademark Office with an intent to obtain (or maintain) a registration. If a registration is obtained or maintained based on fraud, it can be cancelled. Recent cases have held that it is "fraud on the trademark office" to file an Allegation of Use which includes even one item of goods out of a long list on which the mark is not being used. 

- G H -

Generic - a word which identifies the goods, as opposed a trademark which identifies a source of goods. For example, if one is selling "Crest toothpaste", the trademark is "Crest" and the generic term is "toothpaste". One should always use the generic identifier with a trademark and be careful in how the mark is used, otherwise a term which starts out as a trademark may, over time, become generic - see our Trademark Do's and Don'ts page and also genericide

Genericide - the process by which a mark becomes a generic term by ceasing to identify the source and becoming the name of the goods. Such a mark is lost to the trademark owner, and may be used by anyone to describe their goods. Examples of generic terms which were once trademarks are escalator, brassiere, turpentine, yo-yo and aspirin (at least, in the US - Aspirin remains a trademark in many other countries).  

Geographically Deceptive - see Geographically Misdescriptive

Geographically Descriptive - a mark which merely indicates the location from which goods originate, and not a source (i.e. producer) of goods. Marks which are merely geographically descriptive are not registrable, on the grounds that one should not be able to stop others from the same area from producing goods by appropriating the name of the town or state in which one operates. Marks which are primarily geographically descriptive may be registered on the Supplemental Register, and may be registered on the Principal Register once they become distinctive over a number of years of undisputed use - for example, Ithaca shotguns are registered on the Principal Register (and are no longer made in Ithaca, New York). 

Geographically Misdescriptive - a mark which falsely implies a connection with a geographical location from which the goods do not originate, normally because the location has a positive connotation for goods of that sort. For example, using the mark "Napa Valley chardonnay" for a wine made from Ohio-grown grapes in Pittsburgh, Pennsylvania, would be geographically misdescriptive. Marks which are geographically deceptive or misdescriptive may not be registered, even on the Supplemental Register.  

Geographic Origin - see Protected Designation of Origin

Goods - things (tangible or intangible) which are sold bearing a trademark, as opposed to services, which are things done under a service mark.   

- I -

Incontestability - after a mark has been registered for five years on the Principal Register without opposition, a mark owner may file an Affidavit of Incontestability to make the registration incontestable under Section 15 of the Trademark Act (15 U.S.C. §1065). If the registration is incontestable, the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions (15 U.S.C. §1115(b)). 

Infringe - an accused mark infringes a trademark if its use creates a likelihood of confusion with another mark.  

Intent to Use - a trademark owner may apply to register a proposed mark before it has actually been used in commerce, if there is a bona fide intent to use the mark on the listed goods or services. Once the application is examined and allowed, however, the mark will not be registered until the applicant has actually used the mark in commerce and has filed an Allegation of Use

International Class - by international treaty, goods and services are grouped into uniform classes which are used by most Trademark Offices worldwide. International trademark classification, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and are promulgated in the volume entitled International Classification of Goods and Services for the Purposes of the Registration of Marks, published by the World Intellectual Property Organization (“WIPO”). For example, clothing is in class 025, printed materials in class 016, and "Legal services, namely, preparation of applications for trademark registration" in class 045.  A listing of these classes can be found in the Trademark Manual of Examining Procedure (TMEP), section 1401.02. International classes are primarily intended for the convenience of the Trademark Office - just because a mark is classified in a different class than yours does not mean that there is automatically no likelihood of confusion. For example, while clothing is in class 025, retail sale of clothing (that is, the service of operating clothing stores) is in class 035. Since clothing stores often sell clothing under the same mark as the store name, an evaluation of likelihood of confusion for clothing should also include marks for clothing stores. 

ITU - see Intent to Use

- JK -

 

- L M N -

Lanham Act - the Trademark Law, codified in volume 15 of the US Code (15 USC) Chapter 22. The sections of the Lanham Act are often used in place of the actual US Code citations. Thus, a filing under 15 USC 1051(a) is usually called "Section 1(a)". 

License - a document permitting a Licensee to make goods or offer services which would otherwise infringe trademark rights owned by another. A license can be exclusive or non-exclusive. If an exclusive license is granted, the patentee may not issue any other licenses conflicting with the exclusive license. Licenses may be limited by geographical area or field of use. Most licenses involve periodic payment of royalties, although some are paid-up in advance. Trademark licensors must control the quality of the goods or services offered by licensees.  See also "assignment"  

Likelihood of Confusion - the standard of comparison between two trademarks for purposes of determining registrability and infringement. Evaluation of the likelihood of confusion requires comparing not just the marks themselves, but also the relative strengths of the marks, the duration and extent of each party's use in commerce, the goods or services on which the marks are used (or for which they are registered), the market in which they are sold, the sophistication of the consumers in that market and how carefully they may consider a purchase of those goods or services, and other factors. Note that the standard is likelihood of confusion - actual confusion is not required. 

LIVE (status indicator) - indication on the USPTO TESS database that a registration is still current, or that an application is still pending. 

Logo - (short for "logotype") - see Design Mark

Madrid Protocol - a system of international registration of marks, administered by the World Intellectual Property Association (WIPO). This provides a single Madrid registration which can be enforced in as many Madrid member countries as the owner designates (and pays for) - sort of "one stop shopping" for international trademark protection. A business located in one of the Madrid Protocol countries can file one application in their home country's Trademark Office (or equivalent), based on an application or registration in their home country, which designates any or all of the other Madrid members. The Madrid application will be evaluated by each of the designated countries, and if the country's Trademark Office does not object, the Madrid registration will become effective in that country. See our Madrid Protocol page for more information. 

Membership Mark - see Collective Membership Mark

Merely Descriptive - An Examining Attorney may reject an application to register a mark on the grounds that it is "merely descriptive" of a characteristic of the goods or services. This rejection may be overcome by amending the application to the Supplemental Register. After five or more years of uncontested use, a merely descriptive mark may have acquired distinctiveness and be eligible for registration on the Principal Register

Multiple Class Application / Registration - a trademark application or registration which lists goods and/or services in more than one International Class. Most USPTO fees are charged "per class", so the government fees for filing one application in two classes are the same as filing two applications, each in one class. The primary advantages to multiple-class applications/registrations are that once the mark is registered there is only one registration to keep track of, and most law firms (including ours) charge by the application/registration and not by class, so you can save on attorney's fees by filing one multiple-class application rather than multiple single-class applications. 

Mutilation: Marks have to be registered as they are used. If one attempts to register only part of a mark, and the specimens supplied with the application show that the actual mark includes additional elements, the application may be rejected on the grounds of "mutilation". For example, in In re Cutting Edge Beverages, LLC,  (TTAB 2010), the applicant tried to register the international "not" symbol (a circle with a diagonal slash) when the specimen showed the symbol with the word "CRASH" in the middle. The TTAB held this was "mutilation", in that the mark would be perceived as "not crash", rather than just the "not" sign alone. 

Nominative Use - see Fair Use

- O -

OED - Office of Enrollment and Discipline - the part of the USPTO which licenses and disciplines patent attorneys and agents; Also Oxford English Dictionary, but you knew that, didn't you?

Office Action - Once a trademark application is filed, it will be assigned to an Examining Attorney, who will review it for format and wording, and do a search for conflicting marks. The application will be rejected, most often because the Examining Attorney objects to the description of goods or services. The document which the Examining Attorney provides to explain why the application is rejected is called an "Office Action". 

Official Gazette - once upon a time, a weekly printed publication in which the Trademark Office publishes information about marks which have been approved for registration (see Published and Opposition), as well as notices of rule changes, etc. Today, the OG is not printed, but is only distributed electronically - the last 52 weeks of the Official Gazette are available on the USPTO website. Note that the electronic version of the TMOG does not include notices, which are available elsewhere on the USPTO website

OHIM - the European Union agency responsible for registering trade marks and designs that are valid in all 27 countries of the EU. 

Opposition - an action filed against an application by anyone who feels they may be hurt if the mark is registered. Oppositions may only be started during the thirty-day period after the mark is published. The opposition is begun by filing a Notice of Opposition setting out the grounds for the opposition, to which the applicant must file a Reply. Thereafter, the opposition is, in effect, a trial in the Trademark Trial and Appeals Board (TTAB). Each side has discovery, takes testimony, and files briefs. If the TTAB rules for the opposer, the application is abandoned. If the TTAB rules for the applicant, the mark proceeds to registration. 

- P -

Paid-up License - a license in which all royalties are paid in advance, usually in a lump sum at signing, so that no further royalties are due during the term of the license. 

Paris Convention - an international treaty which provides that if a national of a member country files a trademark application in his own country, then follows up with an application in another member country within a six months, he can claim priority from the original application for the later-filed application. 

Petition - a document asking the USPTO to do something, usually accompanied by a fee.  

Principal Register - the "regular" register on which registered trademarks are registered, as opposed to the Supplemental Register

Priority Date - sometimes, a trademark application is given the effect of a filing date which is earlier than its actual filing date by effect of a law or international treaty such as the Paris Convention or Madrid Protocol. The "priority date" is the filing date of some earlier application upon which the application is based - for example, if an applicant files an application in Japan on January 1, 1999, and follows up by filing a US application on May 15, 1999, he can claim a priority date of January 1, 1999, for the US application, even though it was not actually filed for nearly a six months afterward. 

Product Configuration - a special kind of trademark, in which the mark is the shape or configuration of the product itself. Product configuration is never inherently distinctive, but may acquire distinctiveness through use in commerce over a period of years. The configuration must be non-functional, and serve to distinguish the source of the goods (as with any trademark) - that is, one seeing the distinctive configuration should be expected to say, "that shape tells me the product comes from company x" not "that is the shape of product x". For example, Registration No. 3,293,722,  is a product configuration registration for a pipe coupling, in which the mark is described as "The mark consists of a configuration for the goods featuring two raised horizontal bands running across the center of the goods." See also "trade dress". 


Reg. No. 3,293,722

Prosecution - the applicant's side of the Examination process, convincing the Examiner to issue a trademark registration. 

Prosecution History - the written record of the Examination Process. Also known as the "File Wrapper", because all of the papers involved in a trademark application were once covered in a paper wrapper. Today, the Trademark Document Retrieval (TDR) system contains much the same information in electronic form. 

Protected Designation of Origin - A system for protecting marks which indicate not a specific producer of goods, but rather a geographic region from which they come. This is formalized in the European Union, which specifically recognizes and protects such marks. For example, in Europe, Cheddar Cheese must come from Cheddar, England, or Champagne wine must come from Champagne in France. France has a similar system called "Appellation d'origine contrôlée". The TRIPS agreement, to which the US is a party, requires the US to extend protections for foreign Protected Designations to the US, but there are exceptions, for example where the designation has become generic here (cheddar cheese being a good example of that). See also Geographically Descriptive and Geographically Misdescriptive In the US, certification marks or collective marks serve a similar function - for example, Harris Tweed is a Certification Mark for a specific kind of cloth originating in the Isles of Harris and Lewis in Scotland, Vidalia is a Certification Mark for onions from Vidalia, Georgia, or Florida or Idaho for oranges or potatoes, respectively, from those states. 

Pseudo Mark - entry on the USPTO TESS database which lists phonetic or actual meaning equivalents for marks which are suggested or mis-spelled. For example, a mark "SK8ING 2 U" would have a pseudo mark entry of "SKATING TO YOU". The pseudo marks are assigned by the USPTO, but applicants are invited to review them and suggest alternatives. 

Published for Opposition - once an application is approved by the Examining Attorney, it will be "published" in the Official Gazette of the Trademark Office. Anyone who believes their interests would be damaged by the registration of the mark has thirty days after the publication to file a Notice of Opposition (or request an extension of time to file the notice). In the past, the OG was a real paper publication, and marks were published by being listed in the paper book which came out once a week. Today the "publication" is entirely on line. 

- Q R -

Registration - (v) the act of registering a trademark; (n) indication of ownership of a registered mark on the Principal or Supplemental Register in the USPTO (or equivalent in a foreign country); also short form of "Registration Certificate", the document issued by the USPTO indicating a mark is registered. 

Registered Trademark - a mark which is registered on the Principal or Supplemental Register in the USPTO (or equivalent in a foreign country). Although most (if not all) states maintain their own trademark registration systems, the term "Registered Trademark" usually refers to Federal, not State, registration. 

Registered Trademark Symbol - ® - the "r-in-a-circle" symbol next to a mark means that the mark is registered. Improper use of the symbol is considered fraud - see TMEP 906.04

Renewal - Trademarks, as such, do not need to be renewed - trademarks continue in existence as long as they are used in commerce. Trademark Registrations must be renewed every 10 years, by the filing of a Section 9 Renewal Application with a Section 8 Allegation of Continued Use. Note that until November 16, 1989, the term of a registration was twenty years. At the latest, in May 2010 the last of the twenty-year trademark registrations will have expired or, upon renewal, transitioned to the current ten-year term.  

Royalty - a payment by a licensee to the owner of a patent under the terms of a license. Royalties are usually either a percentage of the sales price of a product, or a fixed dollar amount per unit. Royalties are usually paid on a periodic basis - monthly, quarterly or annually.   

- S -

Section 8 declaration/affidavit - a declaration filed with a specimen of use to indicate that a mark owner continues to use a mark in commerce. The Section 8 declaration is filed between five and six years after registration, and with every renewal

Section 9 application  - see Renewal

Section 15 declaration/affidavit - see incontestability

Section 1(a) - Lanham Act section (15 USC 1051(a)) regarding "application based on use in commerce" - a basis for filing and registration of a mark. 

Section 1(b) - Lanham Act section (15 USC 1051(b)) regarding "application based on bona fide intent to use" - a basis for filing (but not registration). 

Section 2(f) - Lanham Act section (15 USC 1052(f)) regarding "acquired distinctiveness" - a basis for filing and registration of a mark.

Section 44(d)Lanham Act section (15 USC 1126(d)) dealing with filing an application to register a mark based upon priority from an application filed in a foreign country and an intent to use in this country. A basis for filing, but not registration - registration requires actual use (section 1(a)) or issue of the foreign registration (section 44(e)). 

Section 44(e) - Lanham Act section (15 USC 1126(e)) dealing with filing an application to register a mark based upon a registration issued in a foreign country and an intent to use in this country. A basis for filing and registration. 

Section 66 - Lanham Act section dealing with Madrid Protocol. (15 USC 1141)

Serial number - a six-digit number assigned by the USPTO to identify a trademark application. The six digit serial number, prefixed by a two digit series number, makes up the eight-digit application number. The six-digit serial numbers are assigned sequentially as applications are filed (except for serial numbers starting at "975,000" which are reserved for divisional applications), and serial numbers will repeat from series to series. Note that the USPTO  e-commerce systems are not very consistent about this terminology - TEAS, TESS, TDR, ETAS, Assignment Search and TARR use "serial number" and "application number" seemingly interchangeably. 

Series number -  the two-digit prefix to the application number, often followed by a slash, and followed by the six-digit serial number -  for example, 85/123,456. Trademark applications have series numbers in the "seventy" and "eighty" series. As assigned in recent years, the series number indicates how the application was filed and (in a broad sense) when it was filed. As of July 2013, you might expect to see these series numbers: 

  • 70 - very old records, registered before the 1905-1920 Trademark Acts
  • 71 - applications filed under the 1905-1920 Trademark Acts and under the present Lanham Act, up to 1956
  • 72 - applications filed January 1956-August 1973 (originally classified under the old US classes)
  • 73 - applications filed after the adoption of the International Class system in September 1973 through November 1988
  • 74 - applications filed under the 1988 revisions to the Lanham Act, from November 1988 through September 1995
  • 75 - applications filed October 1995 through March 2000
  • 76 - paper-filed applications filed after March 2000
  • 77 - electronically filed applications filed between September 14, 2006 and March 31, 2010
  • 78 - applications filed electronically before September 14, 2006
  • 79 - Madrid Protocol applications
  • 85 - electronically filed applications filed after April 1, 2010 and before July 1, 2013.
  • 86 - electronically filed applications filed after July 1, 2013 and before April 13, 2016
  • 87 - electronically filed applications filed after April 13. 2016
  • 89 - special marks protected by other laws or by treaties (note: since these are not registered, they do not have registration numbers)

Service Mark - a trademark which serves as an indication of source of services. The service might be the sale of goods - for example, "Sears" is a service mark of Sears, Roebuck and Company for "retail store services". "Kenmore" is Sears' trademark for the appliances they sell in those stores. Sometimes the same mark may serve as both a service mark and trademark - for example, "Old Navy" is both a service mark for retail clothing store services and a trademark for the clothing sold in the stores which bear the Old Navy mark.  

Services -  Services are actions a vendor does for others in commerce. The "for others" is important in the trademark context - if a company advertises its own goods, it is not offering "advertising services". In order to be offering "advertising services" the company would have to be preparing advertisements for other companies for their goods. 

Slogan - phrase used in advertising for goods or services. Slogans can be registered as word marks, for example McDonald's "I'm Lovin' It" slogan for restaurant services, Reg. No. 2,978,887.  

Sound Mark - a trademark in the form of a sound. For example, the song "Sweet Georgia Brown" is a service mark for the Harlem Globetrotters for entertainment services. 

Specimen - a document or photograph showing use of a mark in commerce. The Trademark Office requires a mark owner to file a specimen of use for each class in which a mark is to be registered. Specimens must be filed with applications based on use in commerce, with allegations of use filed in Intent to Use applications, and with Section 8 declarations/affidavits. 

Standard Characters Mark - a word mark which is made up of letters, numbers and punctuation, without reference to any specific type font or other stylization. (see "Stylized") 

Statement of Continued Usesee Section 8

Statement of Useobsolete - see Allegation of Use

Stylized - A word mark which is in a particular typeface or format or color, or anything other than just simple letters and numbers. The well-known mark "IBM" in striped letters form is a stylized mark .

Suggestive - Suggestive marks are less broadly protected, since the words in the mark are associated with the product. They become stronger through use, as the mark acquires distinctiveness. "Rent-a-Wreck" for auto renting services is suggestive.

Supplemental Register - the Supplemental Register contains marks which are considered by an Examining Attorney to be too descriptive to actually distinguish the registrant's goods from those of others, but which are strong enough not to be considered "generic". Registration on the Supplemental Register accords many of the benefits of Principal Register registration - use of the "r-in-a-circle" symbol, appearance on the USPTO database of registered marks,  the right to sue for infringement - but such registrations cannot become incontestable. After five years or more of registration on the Supplemental Register an owner can apply to register on the Principal Register based on "acquired distinctiveness". 

Surcharge - additional fee charged by the USPTO when filing a renewal or Section 8 form during the six-month "surcharge period" after the normal filing deadline. 

Surname (rejection for being primarily) - Under §2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness. In other words, if a consumer would view the word "Jones" on a hammer primarily as meaning that someone named Jones made the hammer (as opposed to a specific manufacturer), "Jones" functions primarily as a surname and not a source of goods. Over time, however, the mark may become associated with the Jones Hammer Company, and will thus become a valid trademark. 

Suspension - if an Examining Attorney feels that there is a likelihood of confusion between a mark in an application and another mark in another pending application which was filed earlier, the later-filed application will be suspended until the earlier-filed application is registered or abandoned. If the earlier application is registered, the later application will be rejected. If it is abandoned, the later application will be approved (assuming there are no other problems, of course). 

- T -

Tag Line - see "slogan". 

Tarnishing / Tarnishment - use of a mark in a way which would bring disrepute to the mark. Tarnishment is a form of trademark dilution. For example, Mattel has brought many cases against strippers using the name "Barbie Doll" on the grounds that associating their "Barbie" mark with that industry tarnishes their famous mark. 

TARR Trademark Application and Registration Retrieval - obs. - replaced by TSDR  

TBMP - manual of procedures and rules for practice before the Trademark Trials and Appeals Board (TTAB)

TDRTrademark Document Retrieval - obs. - replaced by TSDR

TEAS - Trademark Electronic Application System (pronounced "teas") The USPTO electronic filing system for trademark-related documents. Note: not for trademark assignments - use ETAS - or documents related to appeals or opposition/cancellation actions in the TTAB - use ESTTA.

TEAS Plus - a type of application filed through TEAS. By filing the application as TEAS Plus, an applicant receives a discount on filing fees (currently $50 per class). TEAS Plus applications must use entries from the Manual of Acceptable Descriptions (no free-form goods/services descriptions), and must have all of the information necessary for a complete application when filing. Also, TEAS Plus applicants must supply a valid e-mail address for communications, and must maintain it during pendency of the application. If an Examining Attorney later discovers some information was missing, the discount will be lost. 

TESSTrademark Electronic Search System - the USPTO's trademark search database. For instructions on how to use TESS, see our "How to do a trademark search" page. TESS is the trademark equivalent of PATFT for patents. 

TMEPTrademark Manual of Examining Procedure - the USPTO publication giving rules and procedures for practice before the Trademark Office. Note: See TBMP for the equivalent manual for TTAB practice. TMEP is the trademark equivalent of MPEP for patents. 

Trade Dress - a special kind of trademark covering distinctive packaging for a product. For example, the egg-shaped package for L'Egg's panty hose is registered for "hosiery and pantyhose" - see drawing at right. For service marks, trade dress protection would cover distinctive store designs, such as the KFC striped awning and cupola registration at right, for "Rendering aid and assistance in the establishment and/or operation of restaurants" 

 
L'Eggs package
Reg. TM 2,710,553


KFC Store design
Reg. TM 1,599,822

Trade Name - the name under which an individual or company is known. Trade names differ from trademarks in that a trade name identifies the company, and a trademark identifies a source of goods or services. It's all in the way the mark is used. A company's trademark may be the same as its trade name, but does not need to be. Trade names are often registered under state law through a "doing business under an assumed name" law (often called a "dba form"), or may be a corporate or LLC name registered in a state agency. 

Trademark (n) - An indication of the source of goods or services, created by use of the mark in commerce on the goods or in connection with the services. Strictly speaking, a trademark used for services is a "service mark", but the term "trademark" is usually understood to encompass both trademarks and service marks, as well as special-purpose marks such as Collective Marks, Collective Membership Marks, Certification Marks, etc. . 

Trademark (v) - "Trademark" isn't a verb. Stop using it that way, right now!

Transliteration - what a mark expressed in a foreign language or non-English characters (Chinese, Japanese, Arabic, etc.) would sound like if pronounced in English. 

TSDR - Trademark Status and Document Retrieval - the USPTO's trademark status and documents database system. The current status of any trademark registration or application can be found in TSDR, as well as copies of any documents which were filed with respect to the registration or application. TSDR is the trademark equivalent of PAIR for patents. It replaced the earlier TARR and TDR systems in late 2012.   

TTAB -  Trademark Trial and Appeals Board - the part of the USPTO Trademark Office which handles appeals from decisions of Examining Attorneys as well as actions between two parties, such as Oppositions, Cancellations and Concurrent Use Actions. 

Typed Mark - See standard characters

- U -

US Class - an obsolete system of classifying goods and services for use only in the USPTO. Older trademark registrations in the USPTO database will still show one or more US classes, but the system was replaced by International Class many years ago, and such classifications should be regarded as irrelevant historical artifacts. 

Use - a mark is "used" on goods when "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and on services when it is used or displayed in the sale or advertising of services." (15 U.S.C. §1127)

Use in Commerce Section 45 of the Trademark Act (15 U.S.C. §1127) defines “use in commerce” as "use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark" on commerce which the US Congress may lawfully regulate - that is, "in more than one State or in the United States and a foreign country"

USPTO - United States Patent and Trademark Office - branch of the Department of Commerce which is in charge of patent and trademark matters. Often called simply "the Patent Office". Since 2004, the USPTO has been located in Alexandria, Virginia. It was in Crystal City, Arlington, VA, from the 1960's, and in Washington, DC, before that. Interesting bit of trivia - the Patent Office was the only government building in Washington which was not burned by the British when they occupied the city during the War of 1812. 

- VWXYZ -

Word Mark - a trademark which is made up of words or letters or numbers, or a combination of them. Such a mark may be in standard characters or stylized, or might be a part of a composite mark (combined with a design mark). 


A B C D E F GH I JK LMN O P QR S T U VWXYZ


Off-site links

USPTO Glossary of Terms

 


Don't forget our "Trademark FAQ" page - it has lots of information about trademarks and the registration process. 

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