Trademark Glossary

A claim made about a product or service in print, on the internet, broadcast, or in a similar public medium. These claims are sometimes challenged under trademark law as false advertising.

A type of liability coverage in business insurance that protects against certain intellectual property offenses, including trademark infringement, copyright infringement, and disparagement.

Also known as a “Section 8” filing, this is a declaration submitted to a trademark office (like the USPTO) by a trademark owner to confirm that the trademark is still in active use in commerce for the goods/services listed in the registration. This is typically required between the 5th and 6th year after registration and again between the 9th and 10th year, and every 10 years thereafter. Failure to file can result in cancellation of the registration.

A federal statute (28 U.S.C. § 1651) that gives federal courts the authority to issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law. It’s sometimes used in trademark cases to issue unusual or expansive injunctions.

A sworn statement filed with the USPTO that the mark is being used in commerce, either with the initial application or after a Notice of Allowance. 

An application for trademark registration that has been modified or corrected after its initial submission.

A change made to a trademark application, such as changing the mark, the goods/services, or the owner’s name.

A filing submitted by an applicant who initially filed a trademark application based on an “intent-to-use” (ITU) basis. The AAU is filed once the mark is actually in use in commerce, providing evidence of such use (e.g., specimens).

A U.S. federal law enacted to combat cybersquatting, which is the bad-faith registration of domain names that are identical or confusingly similar to trademarks.

Laws designed to promote competition and prevent monopolies or combinations that restrain trade. In trademark law, antitrust issues can arise, for example, if a trademark owner uses their market power derived from a famous mark to stifle competition.

The individual, company, or entity applying for trademark registration.

The date a trademark application is officially received by the relevant trademark office (e.g., USPTO). This date is important for determining priority of rights in some cases.

A mark that consists of a real word used on a product or service that is completely unrelated to the common meaning of that word. These marks are highly distinctive and legally strong. Example: APPLE for computers

The legal transfer of ownership of a trademark from one party to another. This is often done through a written contract.

Trademarks that are owned by the same entity and are closely related in terms of goods/services or overall impression, sometimes used to reinforce each other’s distinctiveness.

The attorney officially representing a trademark applicant or registrant before a trademark office.

In trademark law, refers to the genuine nature of a product bearing a particular mark, often contrasted with counterfeit goods.

The legal basis for filing the application, such as actual use in commerce (Section 1(a)) or intent to use the mark (Section 1(b)).

A name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers. While often used interchangeably with “trademark,” a brand is a broader concept that encompasses the overall perception and reputation of a product or company

Any element of a brand that adds value to a company, including its trademarks, goodwill, reputation, and customer loyalty.

The commercial value and strategic advantage derived from consumer perception of a brand name of a particular product or service rather than from the product or service itself.

The visible elements of a brand (e.g., logo, color, design, name) that together identify and distinguish the brand in consumers’ minds.

The verbal component of a brand, often a word or phrase, that serves as a trademark.

The extent to which consumers are familiar with a particular brand.

The scope or extent of trademark protection, determining how widely the mark is protected across different goods, services, and geographical areas.

A genuine and good-faith intention to use a trademark in commerce in the near future. This is a requirement for filing an “intent-to-use” application.

The obligation on a party in a legal dispute to prove its assertions to a certain standard (e.g., by a preponderance of the evidence). In trademark cases, the plaintiff usually bears the burden of proving infringement.

A formal letter, typically sent by an attorney, demanding that the recipient stop engaging in an activity that infringes upon the sender’s trademark rights.

A type of trademark used by someone other than the owner to certify the goods or services of others meet certain standards (e.g., “Good Housekeeping Seal”).

The official document issued by a trademark office confirming that a trademark has been registered.

The documented history of ownership of a trademark, tracing its transfer from one owner to another.

In trademark examination, an examiner may cite a prior registration or application as a potential bar to registration of a new application due to likelihood of confusion.

A system used by trademark offices (e.g., the Nice Classification) to categorize goods and services for which trademarks are registered. There are 45 international classes.

A type of trademark used by members of a cooperative, association, or other collective group or organization to indicate membership in the organization (e.g., “CPA” for Certified Public Accountants).

A trademark that protects a specific color or combination of colors as applied to goods or their packaging, if the color has acquired distinctiveness.

Limited trademark rights that are automatically acquired by being the first to use a mark in commerce within a specific geographic area, even without a federal registration. These rights are less powerful than those from a federal registration.

Trademark rights that arise from the actual use of a mark in commerce, even without formal registration. These rights are generally limited to the geographical area where the mark has been used and is known.

The former name for a European Union Trademark (EUTM), a unitary trademark right valid across all EU member states.

A trademark that consists of both words and a design element. The USPTO will evaluate the mark as a whole, but may require a disclaimer of any generic or descriptive words within it.

A situation where two or more parties have the right to use the same or similar marks for related goods or services, but in geographically distinct areas

The central test for trademark infringement, where a court or trademark office determines if consumers are likely to be confused about the source or origin of goods or services due to the similarity of marks and goods/services. Factors considered include similarity of marks, similarity of goods/services, marketing channels, strength of the senior mark, and evidence of actual confusion.

An agreement between two parties with similar trademarks where one party consents to the other’s use and/or registration of their mark, often with certain conditions or limitations to avoid likelihood of confusion.

The legal principle that once a trademark is registered with a national office (like the USPTO), everyone is deemed to have knowledge of that registration, even if they don’t actually know about it. This helps establish nationwide priority.

A market research tool often used in trademark litigation to gather evidence regarding consumer perception of trademarks, particularly on issues of likelihood of confusion or secondary meaning.

When a party does not directly infringe a trademark but induces or materially contributes to the direct infringement of another.

A legal right that grants the creator of an original work exclusive rights to its use and distribution, usually for a limited time, with the intention of enabling the creator to receive compensation for their intellectual effort. While distinct from trademarks, copyright can protect certain elements of a trademark, such as a logo’s design.

A claim filed by a defendant against a plaintiff in a lawsuit. In trademark cases, a defendant might counterclaim for cancellation of the plaintiff’s registration or for a declaration of non-infringement.

An unauthorized reproduction of a registered trademark, usually on goods, with the intent to deceive consumers into believing they are purchasing genuine products. Counterfeiting is a serious offense.

A U.S. federal agency responsible for enforcing intellectual property rights at the border, including seizing counterfeit and infringing goods.

The bad-faith registration, trafficking in, or use of a domain name that is identical or confusingly similar to a trademark belonging to another.

A term that immediately conveys information about an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.

The weakening of a famous mark’s ability to identify and distinguish goods or services, even in the absence of competition or likelihood of confusion.

A statement that the applicant does not claim exclusive rights to an unregistrable portion of the mark, such as a generic term.

A clear depiction of the mark you want to register, required as part of the trademark application.

Trademark registrations last for 10 years, but can be renewed indefinitely as long as the mark remains in use.

Monetary compensation awarded to a plaintiff in a trademark infringement case to compensate for losses suffered due to the infringement. This can include actual damages, infringer’s profits, and statutory damages.

A mark that misdescribes the goods or services to which it applies and is likely to deceive consumers about a material aspect of those goods or services. Such marks are generally unregistrable.

A legal ruling by a court that defines and clarifies the rights and obligations of parties without ordering any specific action. In trademark law, a party might seek a declaratory judgment of non-infringement to resolve a dispute without waiting to be sued.

A mark that immediately describes a quality, feature, or ingredient of the goods or services. Descriptive marks are not inherently distinctive and can only be registered if they have acquired “secondary meaning.” Example: “CREAMY” for yogurt.

A trademark that consists of a stylized design, image, or logo without any words. It protects the visual appearance of the mark.

Occurs when a famous mark’s distinctiveness is impaired because another mark, while not necessarily confusingly similar, is used in a way that reduces the capacity of the famous mark to identify and distinguish its goods or services.

Occurs when a famous mark’s reputation is harmed by its association with an inferior or unsavory product or service.

The pre-trial phase in a lawsuit where parties exchange information and evidence relevant to the case, often through interrogatories, requests for production of documents, and depositions.

The core quality a trademark must have to be registrable. It is the mark’s ability to identify the source of a particular good or service. The “spectrum of distinctiveness” ranges from Fanciful (strongest) to Generic (unprotectable).

A unique address used to identify a particular website on the internet (e.g., trademarkvault.com). Disputes over domain names often involve trademark law.

The most prominent or memorable part of a trademark, which often plays a significant role in assessing likelihood of confusion.

The length of time a trademark registration is valid. In many jurisdictions, initial registration is for 10 years and can be renewed indefinitely as long as the mark remains in use.

The process of protecting and asserting trademark rights against infringement, including sending cease and desist letters, filing lawsuits, and working with customs agencies.

The agency responsible for managing European Union Trademarks (EUTMs) and Registered Community Designs.

A unitary trademark registration valid across all 27 member states of the European Union.

Materials submitted to a trademark office (e.g., specimens) or a court to demonstrate that a trademark is being used in commerce.

The process by which a trademark office reviews a trademark application to determine if it meets the legal requirements for registration, including conducting a search for conflicting marks.

An attorney or legal professional at a trademark office who reviews trademark applications.

A procedure where a trademark registration can be challenged and potentially cancelled based on prior art, without the involvement of a third party. (Note: This is more common in patent law; in trademark, it’s usually part of an office action or cancellation proceeding).

The sole right of a trademark owner to use their mark in commerce for the goods and services for which it is registered or has common law protection.

A trademark registration that is no longer in force, typically due to failure to renew or file required maintenance documents.

When a trademark owner explicitly states their intention to abandon their trademark rights, often by filing a written declaration with the trademark office.

Using another’s trademark in good faith, in its descriptive sense, to describe one’s own goods or services, rather than as a source identifier.

Using another’s trademark to refer to the actual goods or services of the trademark owner, particularly when those goods or services cannot be readily identified without using the mark. For example, using “Coca-Cola” to refer to the beverage made by The Coca-Cola Company.

Making misleading or untrue statements about a product or service in commercial advertising, which can be a basis for legal action, sometimes under the Lanham Act.

A mark that consists of a completely invented word with no other meaning. These are the strongest and most distinctive types of trademarks. Example: KODAK for cameras or PEPSI for soda.

Trademark registration with a national intellectual property office, such as the United States Patent and Trademark Office (USPTO). This provides nationwide protection and other significant legal benefits.

A U.S. federal law enacted to provide a cause of action for the dilution of famous trademarks, even in the absence of likelihood of confusion.

The date on which a trademark was first used publicly in connection with the sale or transport of goods or services. This date is crucial for establishing common law rights and can be important for federal registration.

After a U.S. federal trademark registration has been in continuous use for five consecutive years from the date of registration, and an affidavit is filed, the registration can become “incontestable,” making it very difficult for others to challenge its validity on certain grounds.

A basis for filing a U.S. trademark application, relying on an existing application in a foreign country under international treaties.

A basis for filing a U.S. trademark application, relying on an existing registration in a foreign country.

Intentionally making a false, material representation to the USPTO with the intent to deceive the office. If proven, this can lead to the cancellation of a trademark registration.

The products and/or services for which the trademark is used, identified in the application by their international class number(s).

A common word that is the name of the product or service itself. Generic terms can never be registered as trademarks because competitors need to be able to use the word to describe their own products. Example: “TRADEMARK LAW FIRM” for a trademark law firm.

A mark that primarily describes the geographic origin of the goods or services (e.g., “Napa Valley” for wine). Generally unregistrable unless it acquires secondary meaning and/or is a certification mark.

A mark that deceptively suggests a geographic origin for goods or services when they do not originate there. Generally unregistrable.

The reputation and positive perception of a business or its products/services, built over time and associated with its brand and trademarks. Trademark law protects the goodwill associated with a mark.

A federal, state, or local government agency. Trademarks can be owned and used by governmental entities.

Genuine trademarked goods that are imported into a country and sold without the authorization of the trademark owner in that country. These are not counterfeit, but their unauthorized import can still infringe on trademark rights if, for example, there are material differences between the authorized goods and the gray market goods.

A trademark application filed based on the applicant’s intent to use the mark in commerce in the future, rather than current actual use.

One of the 45 categories of goods and services used to classify trademarks, established under the Nice Agreement.

Trademarks that are exactly the same in appearance, sound, and meaning.

Consent to the use of a trademark that is not explicitly stated but is inferred from actions or circumstances.

See “Five-Year Incontestability.”

When one party encourages or causes another party to infringe a trademark.

The unauthorized use of a trademark (or a confusingly similar mark) in a way that is likely to cause confusion, deception, or mistake about the source of the goods or services.

A person or entity that commits trademark infringement.

The immediate ability of a mark to identify the source of goods or services without needing to acquire meaning through use (e.g., fanciful, arbitrary, suggestive marks).

The first official rejection of a trademark application by a trademark examiner, outlining the reasons why the mark cannot be registered.

A court order requiring a party to perform a specific act or, more commonly in trademark cases, to refrain from a specific act (e.g., stopping the use of an infringing mark).

A trademark application filed based on the applicant’s intent to use the mark in commerce in the future, rather than current actual use.

A legal proceeding before the Trademark Trial and Appeal Board (TTAB) involving two or more opposing parties (e.g., oppositions and cancellations).

The administrative body for various international treaties, including the Madrid Protocol, which facilitates international trademark registration.

An international system for classifying goods and services for the purpose of registering trademarks, used by most trademark offices worldwide.

The organization responsible for coordinating the global Internet’s naming system, including domain names.

A legal process to declare a trademark registration invalid, often due to an inherent defect in the mark or prior rights. Similar to cancellation.

A category of legal rights that protects creations of the mind, including trademarks, copyrights, patents, and trade secrets.

The primary federal statute governing trademark law in the United States (15 U.S.C. § 1051 et seq.). It provides for federal registration of trademarks and protects against trademark infringement and false advertising.

An agreement where a trademark owner (licensor) grants another party (licensee) permission to use their trademark under specified terms and conditions, typically in exchange for royalties.

The key test for determining if a trademark is registrable, based on whether it is likely to cause confusion with a pre-existing mark.

The process of taking legal action in court to resolve a dispute.

A graphic mark, emblem, or symbol used to aid and promote public identification and recognition. A logo can be a trademark.

A mark that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.

Filings required by the USPTO to keep a trademark registration alive. These include the Declaration of Use (Section 8) and the Application for Renewal (Section 9)

Required filings with a trademark office to maintain a trademark registration, such as Affidavits of Use (Section 8) and Applications for Renewal (Section 9).

A word, name, symbol, device, or any combination thereof, used to identify and distinguish the goods/services of one seller from those of others. See Trademark.

Keywords embedded in the code of a webpage that search engines use to index the page. Misuse of trademarks in metatags can sometimes lead to trademark infringement claims.

The ongoing process of searching for and identifying potential unauthorized uses or registrations of a trademark to protect against infringement and dilution.

A completely new trademark application, as opposed to an amendment or renewal.

See “International Classification of Goods and Services.”

Trademarks that go beyond conventional word marks and logos, such as sound marks, scent marks, color marks, motion marks, and shape marks.

Issued for an intent-to-use application that has been approved, giving the applicant 6 months to file a Statement of Use.

Trademark infringement that occurs on the internet, including misuse of marks on websites, social media, online marketplaces, and domain names.

A legal proceeding before the Trademark Trial and Appeal Board (TTAB) where a third party can formally object to the registration of a mark after it has been published for opposition.

The individual or entity holding the legal rights to a trademark.

The seniority of rights in a mark based on the date of first use in commerce or the filing date of the application.

The effective filing date of the trademark application, used to establish priority over later-filed applications.

The 30-day period after a mark is approved when third parties can oppose its registration.

A common law tort (also known as “unfair competition”) where a party misrepresents its goods or services as those of another, thereby misleading consumers. Trademark law is designed to prevent passing off.

A legal right granted to an inventor for an invention, allowing the inventor to exclude others from making, using, selling, or importing the invention for a limited period. Distinct from trademarks.

A unique or unusual mark that may have acquired distinctiveness through use.

The formal document initiating a cancellation proceeding before a trademark office board.

A request to a trademark office to reinstate a trademark application that has been deemed abandoned, usually due to a missed deadline.

In legal interpretation, refers to the ordinary and obvious meaning of words in a statute or document.

(Primarily used in Commonwealth countries) The statement of a plaintiff’s cause of action in a legal suit.

In trademark law, refers to existing trademarks, applications, or other evidence that pre-dates a new application and might be cited as a basis for refusal to register due to likelihood of confusion or descriptiveness.

Use of a trademark in commerce that predates another party’s use or application date. Prior use can establish common law rights and potentially block a later registration.

The process of preparing and submitting a trademark application and communicating with the trademark office examiner during the examination process.

A temporary court order issued at the beginning of a lawsuit, before a full trial, to prevent immediate and irreparable harm. Often sought in trademark infringement cases to stop infringing activity quickly

The decision by a trademark examiner to deny registration of a trademark application, usually due to a conflict with an existing mark, descriptiveness, or other legal grounds.

The owner of a registered trademark.

The final approval of a trademark application by the USPTO, resulting in a registration certificate. It grants the owner exclusive, nationwide rights to use the mark in connection with the specified goods/services.

Goods or services that, although not identical, are similar enough that consumers might believe they come from the same source if they bear similar trademarks. This is a key factor in assessing likelihood of confusion.

The process of extending the term of a trademark registration, typically required every 10 years, as long as the mark remains in use.

The general estimation in which a trademark or business is held by the public. A strong reputation enhances the value and protectability of a trademark.

The legal criteria that a trademark must meet to be registered, including distinctiveness, use in commerce (for use-based applications), and not being confusingly similar to existing marks.

The party against whom a petition for cancellation or notice of opposition is filed before the TTAB.

The process of reinstating a trademark registration that has lapsed, often by paying missed fees or filing overdue documents within a grace period.

The federal registration symbol. It may only be used after the USPTO has officially registered a trademark. Using it before registration is illegal.

Filed between the 5th and 6th years after registration and with each renewal to show the mark is still in use.

A type of trademark used to identify and distinguish the source of a service rather than a product.  Example: The McDonald’s “Golden Arches” logo is a service mark for restaurant services.

A real-world example showing how the trademark is actually used in commerce on or in connection with the goods/services.

A trademark registration that protects the word(s) in the mark, regardless of font, style, size, or color.  Example: “NIKE” registered as a standard character mark. 

Filed to show that an allowed intent-to-use mark is now being used in commerce, as is required for the mark to officially register.

A trademark registration that protects a specific stylized representation or design element of the mark.  Example: The Coca-Cola script logo registered as a stylized mark. 

A secondary register for trademarks that are not yet eligible for the Principal Register, such as descriptive marks.

A mark that hints at or suggests a quality or characteristic of the goods or services without directly describing it. Suggestive marks are inherently distinctive and legally strong. Example: NETFLIX for streaming movies or AIRBUS for airplanes.

The process of investigating existing trademarks and business names to identify potential conflicts before adopting and using a new mark. A thorough search is crucial to minimize the risk of infringement.

A legal concept where a descriptive mark becomes distinctive in the minds of consumers over time through extensive use and marketing, so they associate the term with a single source. Also known as “acquired distinctiveness.”

A refusal by the USPTO to register a trademark because it is likely to cause confusion with a previously registered or applied-for mark (under Section 2(d) of the Lanham Act).

A basis for filing a U.S. trademark application based on a foreign application (Section 44(d)) or foreign registration (Section 44(e)), typically relying on a treaty like the Paris Convention.

The party who was the first to use a trademark in commerce or the first to file for registration, establishing priority rights.

An agreement between parties with potentially confusingly similar marks, allowing both to use their marks, often with limitations on goods/services or geographic scope, to avoid likelihood of confusion.

A short, memorable phrase used in advertising or marketing to represent a product, company, or cause. A slogan can sometimes function as a trademark if it identifies the source of goods or services.

An example of how a trademark is actually used in commerce, submitted to a trademark office as evidence of use (e.g., product packaging, labels, website screenshots showing the mark in connection with goods/services).

A law that sets the maximum time after an event within which legal proceedings may be initiated. While there isn’t a specific statute of limitations for trademark infringement, doctrines like laches can effectively limit claims.

Monetary damages set by law (statute) rather than determined by actual economic loss. Often available in cases of willful trademark counterfeiting.

Refers to the distinctiveness of a trademark and its ability to identify the source of goods or services. Marks range from strong (fanciful, arbitrary, suggestive) to weak (descriptive, generic). Stronger marks receive broader protection.

The detailed review of a trademark application by a trademark examiner to determine if it meets all legal requirements for registration, including distinctiveness and lack of likelihood of confusion.

A mark that is primarily merely a surname (e.g., “Smith’s”) is generally not registrable on the Principal Register without proof of secondary meaning.

A word, phrase, symbol, design, or combination thereof that identifies and distinguishes the source of goods or services of one party from those of others.  Example: The Nike “swoosh” logo is a well-known trademark .

The transfer of ownership of a trademark from one party to another, which must be recorded with the USPTO.

The process of searching for potential conflicts with existing trademarks before using or applying to register a new mark.

Allowing another party to use your trademark, typically in exchange for royalties, while you retain ownership of the mark.

The process of watching for potentially infringing uses of a mark by others in the marketplace.

A service that watches for potentially infringing trademark filings or uses in the marketplace and notifies the trademark owner.

A symbol used to provide notice that a party claims common law rights to a mark. It can be used for any unregistered trademark that identifies a product.  TM is generally used for products and SM is generally used for services.

The administrative tribunal within the USPTO that handles trademark disputes, such as oppositions and cancellations.

See “Dilution by Tarnishment.”

The duration for which a trademark registration is valid.

While not directly a trademark term, trademark law can intersect with anti-terrorism efforts, particularly in cases involving counterfeiting that funds illicit activities.

The rights of a party other than the applicant or registrant, which may conflict with the applied-for or registered mark.

The overall visual appearance and commercial image of a product or its packaging, which may include its shape, color combination, or design. If it is distinctive and non-functional, trade dress can be protected as a trademark.

The official name under which a company does business (its business name). A trade name is not the same as a trademark, though a company’s trade name (or a portion of it) can also function as a trademark.

Confidential business information that provides a competitive edge because it is not generally known or readily ascertainable (e.g., Coca-Cola formula). Protected as long as secrecy is maintained, distinct from trademarks.

A professional who assists with trademark filings and prosecution, particularly in jurisdictions outside of an applicant’s home country.

The formal request submitted to the U.S. Patent and Trademark Office (USPTO) to register a trademark. The application includes the owner’s information, the mark itself, the goods/services it will be used with, and the basis for filing.

A lawyer specializing in trademark law, providing advice on selection, clearance, prosecution, enforcement, and licensing of trademarks.

A U.S. federal law (part of the Lanham Act) that makes it a crime to traffic in counterfeit goods and services.

Principles and rules of law that govern trademarks, developed through statutes and court decisions.

See “Examiner (Trademark Examiner).”

See “Infringement.”

A government agency responsible for examining and registering trademarks (e.g., USPTO, EUIPO).

See “Prosecution (Trademark Prosecution).”

See “Registration (Trademark Registration).”

See “Renewal.”

See “Search (Trademark Search).”

In trademark law, refers to the sale, distribution, or transport of counterfeit or infringing goods.

The process by which a registered Community Trademark (CTM/EUTM) can be converted into national trademark applications in individual EU member states if the EUTM application or registration is refused or canceled for reasons applying only in some member states.

A broad area of law that prohibits deceptive or dishonest business practices that cause harm to competitors or consumers. Trademark infringement is a form of unfair competition.

The federal agency responsible for granting U.S. patents and registering U.S. trademarks.

A trademark that has not been formally registered with a government office but for which rights may exist based on common law use.

The bona fide use of a trademark in the ordinary course of trade, not merely to reserve a right in the mark. This is a fundamental requirement for obtaining and maintaining trademark rights in many jurisdictions.

A trademark that consists only of standard text (words, letters, numbers) without any claim to a specific font, style, size, or color. It provides the broadest protection for the words themselves.

A specialized agency of the United Nations dedicated to promoting the protection of intellectual property rights throughout the world. Administers international treaties like the Madrid Protocol.