Glossary
Trademark: 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.
Service Mark: 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.
USPTO: The United States Patent and Trademark Office, the federal agency responsible for granting U.S. patents and registering trademarks.
TEAS: The Trademark Electronic Application System, the online portal through which trademark applications are filed with the USPTO.
Principal Register: The primary register of trademarks maintained by the USPTO, which provides the highest level of protection for trademarks.
Supplemental Register: A secondary register for trademarks that are not yet eligible for the Principal Register, such as descriptive marks.
Standard Character Mark: 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.
Stylized/Design Mark: 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.
Specimen: A real-world example showing how the trademark is actually used in commerce on or in connection with the goods/services.
Drawing: A clear depiction of the mark you want to register, required as part of the trademark application.
Goods and Services: The products and/or services for which the trademark is used, identified in the application by their international class number(s).
International Class: One of the 45 categories of goods and services used to classify trademarks, established under the Nice Agreement.
Basis for Filing: 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)).
Priority Date: The effective filing date of the trademark application, used to establish priority over later-filed applications.
Examining Attorney: The USPTO attorney who reviews the trademark application to determine if it meets the legal requirements for registration.
Office Action: A letter from the USPTO examining attorney outlining any legal issues with the application that must be addressed for the mark to register.
Disclaimer: A statement that the applicant does not claim exclusive rights to an unregistrable portion of the mark, such as a generic term.
Likelihood of Confusion: The key test for determining if a trademark is registrable, based on whether it is likely to cause confusion with a pre-existing mark.
Publication for Opposition: The 30-day period after a mark is approved when third parties can oppose its registration.
Notice of Allowance: Issued for an intent-to-use application that has been approved, giving the applicant 6 months to file a Statement of Use.
Statement of Use: 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.
Registration Certificate: The official document issued by the USPTO to show that a mark has been registered.
Duration of Registration: Trademark registrations last for 10 years, but can be renewed indefinitely as long as the mark remains in use.
Section 8 Declaration: Filed between the 5th and 6th years after registration and with each renewal to show the mark is still in use.
Section 15 Declaration: Filed after 5 years of registration to make the mark “incontestable”, providing greater legal protection.
Trademark Monitoring: The process of watching for potentially infringing uses of a mark by others in the marketplace.
Trademark Trial and Appeal Board (TTAB): The administrative tribunal within the USPTO that handles trademark disputes, such as oppositions and cancellations.
Madrid Protocol: An international treaty that allows a trademark owner to seek registration in any of the member countries by filing a single application.
Trademark Assignment: The transfer of ownership of a trademark from one party to another, which must be recorded with the USPTO.
Trademark Licensing: Allowing another party to use your trademark, typically in exchange for royalties, while you retain ownership of the mark.
Abandonment: When a trademark application is no longer pending or a registration is no longer enforceable due to the applicant or registrant’s failure to take required action.
Acquired Distinctiveness: When a descriptive mark becomes distinctive of the applicant’s goods or services over time through extensive use and promotion.
Allegation of Use: 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.
Amendment: A change made to a trademark application, such as changing the mark, the goods/services, or the owner’s name.
Concurrent Use Registration: 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.
Dead Mark: A trademark that was abandoned during the application process or has been cancelled or expired and is no longer protected.
Descriptiveness: A term that immediately conveys information about an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.
Dilution: 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.
Genericism: When a trademark becomes the generic name for the goods or services it represents, and thus loses its distinctiveness and legal protection.
Identification of Goods and Services: The specific listing of the goods and services for which the trademark is used, which determines the scope of protection.
Intent-to-Use (ITU) Application: A trademark application filed based on the applicant’s intent to use the mark in commerce in the future, rather than current actual use.
Merely Descriptive: A mark that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.
Priority: The seniority of rights in a mark based on the date of first use in commerce or the filing date of the application.
Specimen: An example showing how the mark is actually used in commerce, such as a label, tag, or advertisement.
Suggestive Mark: A mark that suggests a quality or characteristic of the goods or services, but requires some imagination or thought to reach a conclusion about the nature of the goods or services.
Trademark Clearance: The process of searching for potential conflicts with existing trademarks before using or applying to register a new mark.
Trademark Monitoring Service: A service that watches for potentially infringing trademark filings or uses in the marketplace and notifies the trademark owner.
Trademark Symbol (TM, SM, ®): Symbols used to indicate that a word, phrase, or logo is being used as a trademark (TM), service mark (SM), or is a registered trademark (®).