Trademark Glossary

| A | B | C | D | E | F | G | H | I | J | K | L | M | N | O | P | Q | R | S | T | U | V | W | X | Y | Z |

A

Appeal
An appeal is a request, made by a trademark applicant, for a review of the final decision made on their trademark application.

Applicant
An applicant is the party filing for a trademark registration.

Arbitrary Trademark
An arbitrary trademark is a term to describe the protectability of a trademark. An arbitrary trademark is a very strong mark as it has virtually no meaning in relation to the goods and services it’s used in connection with.
Example: Apple as a brand of computers
Learn more about the sliding scale of protectability for trademarks.

Assignment
An assignment is the transfer of ownership of a trademark.
Learn more about trademark assignments.

C

Cancellation Proceeding
A Cancellation Proceeding is a legal proceeding where a third party argues for the cancellation of an existing trademark registration before the TTAB.

Cease and Desist
A Cease and Desist is an email/letter from a trademark owner to another party, informing the other party of the trademark infringement and asking them to stop.

Certification Mark
A certification mark is a type of trademark that indicates that a product or service meets specific standards, such as the quality of goods and services, the region of origin for goods and services, or the group of people who provided the goods and services.

Clearance Search
A clearance search is a search done prior to filing a trademark application to ensure your desired trademark is available.

Common Law Rights
Common Law Rights are limited trademark rights that are established by using your trademark in commerce. These rights are typically limited to your specific geographic area.

Conflicting Trademark
A conflicting trademark is a trademark that is similar to another mark and used with related goods and services.

Continued Use
Continued use is the ongoing use in commerce of a trademark for its protected goods and services; is required to maintain trademark registration

Country of Origin
Country of Origin is the foreign country that a U.S. trademark applicant either lives in or has their business established in.

D

Dead Trademark
A dead trademark is an inactive trademark application or registration in the USPTO’s database. If a trademark is dead, it will not conflict with a pending application.

Declaration
A Declaration is a signed statement verifying that the information submitted to the USPTO on a trademark application is true. The signee also agrees that they are aware of the legal penalties for knowingly submitting false information.

Default Judgement
A Default Judgement is a judgment you may receive if you did not respond to a Notice of Opposition or did not provide information required within the trial calendar. Generally, the TTAB will issue a favorable ruling for the opposing side.

Defendant
A Defendant is the party that a legal proceeding is being initiated against

Descriptive Trademark
A descriptive trademark is a term to describe the protectability of a trademark. A descriptive trademark is not very strong as it immediately conveys the characteristics of the goods or services the trademark is being registered for. Example: American Airlines

Dilution
Dilution is the weakening of an existing trademark due to a similar trademark being used in commerce.

Disclaimers
A Disclaimer is a notice in the application that the applicant is not claiming the rights to a generic/descriptive word in their trademark.

Distinctive
Distinctive/Distinctiveness is the level of uniqueness/recognizability of a trademark as the source of a particular good or service.

Domicile Address
On a trademark application, a domicile address is the place an individual resides or an entity’s place of business

Drawing
A drawing is a depiction of the trademark you are registering that must be included in a trademark application.

E

Enforcement
Enforcement is the process of taking legal action to ensure that your trademark isn’t being infringed upon by any other similar trademarks in the USPTO trademark database.

ESTTA
ESTTA is short for Electronic System for Trademark Trials and Appeals; the platform where all TTAB filings are submitted.

Ex Parte Proceeding
An Ex Parte Proceeding is a USPTO legal proceeding that involves only a single trademark owner

Examiner’s Amendment
An Examiner’s Amendment is an amendment to a trademark application, made by the USPTO’s examining attorney with permission of the applicant. It can be used as an expeditious way to propel the application forward after a change has been made.

Examining Attorney
An Examining Attorney is a member of the USPTO that reviews trademark applications to ensure they adhere to all legal requirements.

Excusable Nonuse
Excusable Nonuse is a period of time where your trademark is not used in commerce for a specific reason, which must be approved by USPTO.

Expired Registration
Expired Registration is an inactive trademark registration that no longer benefits from federal protection. Typically occurs if renewal filings were not made in a timely fashion.

Expungement Proceeding
An Expungement Proceeding is a proceeding filed against a trademark registration if it is believed that the mark has not been used in commerce. This was included as part of the Trademark Modernization Act of 2020.

F

Fanciful Trademark
A fanciful trademark is a term used to describe the protectability of a trademark. A fanciful trademark is the strongest type of mark as it is usually a made up word. Without strong advertising, these types of trademarks would have no consumer recognition. Example: Rolex

Filing Basis
Filing basis is the legal basis for filing a trademark application.

Filing Date
Filing Date is the date that your trademark application was filed. It is also known as a trademark’s priority date.

Filing Fee
A filing fee is a government fee associated with filing to register your trademark.

Final Office Action
A Final Office Action is the last office action issued by the USPTO before refusing your trademark application.

First Action Pendency
First Action Pendency is the length of time between the submission of a trademark application and when the application is first examined by a USPTO examining attorney.

G

Generic Term
A generic term is a term that the relevant purchasing public understands primarily as the common name for the proposed goods and/or services.

Goods and Services
Goods and Services describe the products sold or services offered in connection with a trademark; this defines the scope of your protection under the law.

I

Incontestable Trademark
An Incontestable Trademark is a heightened form of trademark protection that you can apply for after 5 years of continued use in commerce.

Infringement
Infringement is the act of using another entity’s intellectual property, whether it is intentional or accidental.

Intellectual Property
Intellectual Property is a creation from the human mind; most common forms include trademarks, copyrights, and patents.

Inter Partes Proceeding
An Inter Partes Proceeding is a USPTO proceeding that involves the trademark owner and at least one other third party.

International Class
International Classes are a numbered system for classifying the goods and services that trademarks can protect. There are 45 different classes recognized by the government and are categorized by the purpose or function of the goods/services.

Interstate Commerce
Interstate Commerce is a requirement for a trademark to be registered with the USPTO. Means that the goods/services protected by the trademark have been sold or provided out of state.

L

Lanham Act
The Lanham Act is the primary federal trademark law in the U.S. outlawing trademark/copyright infringement, amongst other things.

Legal Entity
A legal entity is an entity that, under the law, has the legal rights to sue or be sued (in addition to other legal rights, such as entering contracts, etc.)

Licensee
A licensee is another party who has been granted permission by the registered trademark owner to make and distribute products or services using that mark

Licensor
A licensor is the registered owner of the trademark who grants a third party permission to use a registered trademark.

Likelihood of Confusion
Likelihood of Confusion is the determination of whether or not your trademark and another may be confused by consumers.

Live Trademark
A live trademark is an active trademark application or registration that can be used to block the registration of a new conflicting trademark application.

M

Madrid Protocol
The Madrid Protocol allows an applicant to apply for registration in any country that is part of the Madrid Protocol by filing a single application.

Material Alteration
Material Alteration is the act of altering the trademark to the point that it is no longer similar enough to the original trademark.

Merely Descriptive
“Merely Descriptive” is a possible reason for denial of a trademark application due to mere descriptiveness of the goods/services.

Monitoring
Monitoring is the process of searching the USPTO trademark database to determine if any similar trademarks are being registered that may infringe on your own registered trademark.

N

Non-final Office Action
A non-final office action is typically the first office action issued by the USPTO.

Notice of Abandonment
A Notice of Abandonment is an official notice from the USPTO issued when an applicant does not properly respond to all of the USPTO Examining Attorney’s Office Action refusals.

Notice of Allowance
A Notice of Allowance is a notice that may be issued when a mark is filed under a 1(b) intent to use basis; requires applicant to prove use in commerce before the mark reaches registration.

Notice of Opposition
A Notice of Opposition is a notice filed by an opposing party seeking to block another party’s trademark application.

Notice of Publication
A Notice of Publication is a notice given to the trademark applicant that their trademark will be published for Opposition.

O

Office Action
An Office Action is an official action issued by USPTO on a trademark application. They typically require a response within three months to fix an issue with the application or respond to a more substantive refusal.

Opposition Proceeding
An Opposition Proceeding is a proceeding overseen by the TTAB that has been filed by an entity believing they will be damaged by the registration of another trademark. It occurs after a trademark has been Published for Opposition and before the mark in question has been registered.

P

Paris Convention
One of the first intellectual property protection agreements recorded. It is still in effect today.

Petition to Revive an Application
A Petition to Revive an Application is a written request to the USPTO that it changes a trademark application status from abandoned to active.

Plaintiff
A Plaintiff is the party initiating legal proceedings against another party.

Principal Register
The Principal Register is the United State’s federal trademark register that is reserved for the most unique trademarks. If your trademark is on the principal register you are presumed to have federal ownership of that mark in all 50 states.

Priority Action
A Priority Action is an official letter issued by a USPTO examining attorney to a trademark applicant after a discussion of the application in question. It lists the specific actions an applicant must take to address any issues with their trademark.

Psuedo Mark
A Psuedo Mark is an alternate/intentionally wrong spelling of a trademark that sounds the same as the actual mark. It is often used in a clearance search to look for similar trademarks.

Publication for Opposition
Publication for Opposition is the publication of a trademark in the Trademark Official Gazette. This begins the 30-day period where other entities are allowed to file a Notice of Opposition to the registration of a trademark.

R

Reexamination Proceeding
A Reexamination Proceeding is a filing requesting the USPTO reexamine a TM registration. It may be filed within the first five years of the mark registration if an opposing party believes your mark has not been used in commerce.

Registration Basis
Registration basis is the legal basis for a trademark registration.

Registration Certificate
A registration certificate is the certificate provided to the trademark owner when it is officially registered with the USPTO.

Registration Number
A registration number is the unique number given to your trademark once it has becomed registered with the USPTO.

Renewal
A renewal is the maintenance process for trademark registrants that occurs at regular intervals. It typically includes proving continued use of a trademark in commerce.

S

Section 1(a) Filing Basis: Actual Use in Commerce
The Section 1(a) Filing Basis is the basis used when applying to register a trademark that is already being used in commerce.

Section 1(b) Filing Basis: Intent to Use in Commerce
The Section 1(b) Filing Basis is the basis used when applying to register a trademark that is not being used in commerce yet. Use in Commerce must be proven before the trademark can become registered.

Section 44(d) Filing Basis: Foreign Application
The Section 44(d) Filing Basis is the basis used on a U.S. trademark application when you have a trademark application filed in your home country. The U.S. application must be filed within six months of the filing of the foreign application.

Section 44(e) Filing Basis: Foreign Registration
The Section 44(e) Filing Basis is the basis used on a U.S. trademark application when you have already registered your trademark in your home country. This can streamline the application process and increase the chances of approval.

Section 8: Declaration of Use or Excusable Non-Use
A Section 8 is a required signed statement trademark owners must regularly file to maintain ownership of their trademark. Confirms that the trademark is being used in commerce for the goods and services listed in the registration.

Section 9: Renewal Application
A Section 9 is a trademark maintenance filing that must be submitted ever 10 years.

Section 15: Declaration of Incontestability
A Section 15 Declaration of Incontestability is a filing that a trademark owner may make after five years of continued use, claiming incontestability for their trademark.

Serial Number
A serial number is the identification number given to you when filing a trademark application with the USPTO.

Service Mark
A service mark is an alternate form of a “trademark” used to denote a service as opposed to a good.

Signatory
A signatory is the main person who signs the trademark application.

Special Form Drawing
A special form drawing is the depiction of the trademark that you’re registering if it has special, stylized text in a specific style, color, or font

Specimen
A specimen is a real-world example of how your trademark is currently being used in commerce. A specimen must be submitted for each good/service listed in an application before the trademark can become registered.

Standard Character Drawing
A standard character drawing is the portrayal of the trademark that you’re registering if it only has characters, numbers, punctuation, etc. (no design).

Statement of Use
A Statement of Use is a written statement indicating the applicant’s trademark is currently being used in commerce.

Substantive Refusal
A Substantive Refusal is a more serious type of Office Action that indicates an issue with the substance of the trademark itself.

Suggestive Trademark
A Suggestive Trademark is a term to describe the protectability of a trademark. A suggestive trademark gives consumers a hint about the nature of goods or services, but require consumers to use their imagination to reach a conclusion as to the nature of the goods/services. Example: Netflix

Supplemental Register
The Supplemental Register is the secondary trademark register maintained by the USPTO for trademarks that are not as distinctive. Trademarks on this register can move to the Principal Register over time, if they become distinctive to consumers.

Suspension
A Suspension is a temporary pause on examination of your trademark application to allow time for any issue affecting your application to be resolved.

T

Technical Deficiency
A Technical Deficiency is typically an easily addressable issue with an application. These may include insufficient identification of goods & services, disclaimers, and/or improper specimens.

TESS
TESS is short for Trademark Electronic Search System. It is used to search the USPTO’s trademark database.

TMEP
TMEP is short for Trademark Manual of Examining Procedure. It provides Examining Attorneys (as well as applicants, other attorneys and representatives) guidelines with references for trademark examination.

Trade Dress
Trade Dress is a specific type of trademark that can immediately evoke brand recognition with consumers through designs, colors, shapes, packaging, designs, or even atmosphere.

Trademark Licensing
Trademark Licensing is an agreement in which a registered trademark owner, the licensor, grants another party, the licensee, permission to make and distribute products or services under that trademark.

Trademark Modernization Act of 2020
The Trademark Modernization Act of 2020 is a law that streamlined procedures for eliminating unused trademark registrations.

Trademark Portfolio
A trademark portfolio is a collection of the federally registered trademarks under your ownership.

TTAB
TTAB is short for Trademark Trial and Appeal Board. They are a neutral body that determines ownership of a registered trademark.

U

UDRP
UDRP is short for Uniform Domain Name Dispute Resolution Policy.

USPTO
USPTO is short for United States Patent and Trademark Office. It is the United States’ government agency in charge of intellectual property.