TRADEMARK GLOSSARY

Abandonment – The application has been taken out of the pending process and is no longer being examined or considered by the USPTO. Under certain circumstances, an applicant may revive their application.

Acceptable Identification of Goods and Services Manual – Maintained by the USPTO, this manual lists the different types of goods and services for which the applicant can submit trademark applications and registrations. This manual should serve as a guide for when the applicant is filing for trademark registration.

Allegation of Use – A sworn statement signed by the applicant, or someone on the applicant’s behalf, confirming the use of the mark in trade. Along with the required fee, for each category of goods and/or services that were included in the application, the applicant must provide one specimen showing the use of the mark in trade. Also called an Amendment to Allege Use (if the statement was filed before the examining attorney sanctioned the mark for publication), or Statement of Use (if the statement was filed after the Notice of Allowance was issued). All these statements contain the same information and only differ as to the time of filing. Between the time when the examining attorney authorizes the mark for publication and when the Notice of Allowance is issued, the applicant cannot file either an Amendment to Allege Use or a Statement of Use.

Amendment to Allege Use (AAU) – A sworn statement signed by the applicant, or someone on the applicant’s behalf, confirming the use of the mark in trade; must be filed before authorization of publication in the Official Gazette. Along with the required fee, for each category of goods and/or services that were included in the application, the applicant must provide one specimen showing the use of the mark in trade.

Appeal – To challenge the examining attorney’s final refusal with regards to the proposed mark, the applicant may appear before the Trademark Trial and Appeal Board. An appeal is done by filing a Notice of Appeal and paying the fee within six months.

Application – A request to the USPTO for federal trademark recognition. The application must include applicant’s name, mailing address, drawing(s) of proposed mark, list of goods and/or services, and filing fee.

Arbitrary marks – Common word(s) that don’t suggest the nature of the goods and/or services for which it represents.

Assignment – Handing over trademark application or registration ownership from one body to another. To keep the ownership records neat, the applicant should record assignments with the USPTO Assignment Services Division.

Assignee – Recipient of an assignment (trademark application or registration).

Assignor – The body that is transferring the assignment (trademark application or registration).

Blackout period – The time between when the examining attorney authorizes the mark for publication and when the Notice of Allowance is to be issued. An Allegation of Use can’t be filed during this time.

Cancellation proceeding – To cancel a currently registered mark, the applicant must appear before the Trademark Trial and Appeal Board. Anyone who believes that they will be harmed by the registration of a mark can petition for a cancellation.

Certificate of Registration – Issued by the USPTO, this document states that the trademark has been officially registered.

Certification mark – Any design (textual, graphical, or a combination of both) that is used, or intended for use, in trade by someone besides the owner to represent characteristics of the goods and/or services or that the labor was done by union members or some other organization.

Collective mark – A mark that is used, or intended for use, in trade by associates to represent their organized group.

Commerce – Businesses that are legally regulated by the U.S. Congress.

Contracting party – A country, state or (two or more levels of) government that’s part of the Madrid Protocol.

Current filing basis – The current basis of an application. After filing an application, the applicant may add to or substitute a basis, in which case the modified version is considered the current filing basis. If the applicant makes no changes to the original application, the current and original filing bases are the same.

Dead – The application has been taken out of the pending process and is no longer being examined or considered by the USPTO. Under certain circumstances, an applicant may revive their application.

Descriptive mark – A design (textual, graphical, or a combination of both) that describes a certain characteristic associated with the goods and/or services being represented.

Disclaimer – A statement declaring that the applicant doesn’t have exclusive rights to specific element(s) of the mark. Though the mark can be registered as a whole, parts of its design cannot be exclusively registered to the applicant.

Examiner’s Amendment – If the applicant wants to make changes to the application, an Examiner’s Amendment will be issued. This is to certify that the examining attorney and the applicant both agree on the changes.

Examining attorney – A USPTO staff responsible for reviewing applications to make sure they comply with the legal requirements.

Fanciful marks – A design (textual, graphic, or a combination of both) that is uncommon or invented for trademark identification purposes.

Filing refusal – Settles any unresolved refusals or conditions of an application. It’s also known as a final office action. The proper response is to either abide by the conditions or appeal to the Trademark Trial and Appeal Board.

Generic term – Since these terms are common to public knowledge and understanding, they can’t be registered as trademarks.

IC – International Class. Used in the United States, these are class(es) given to a mark under the International Classification of Goods and Services.

Informal application – An incomplete application that the USPTO won’t file. It will be returned to the applicant for completion.

INTA – International Trademark Association. A nonprofit association consisting of global membership of trademark owners, INTA’s purpose is to promote and encourage the use of trademarks (and other intellectual property) as being a fair element of commerce.

Intent to use – This is a filing basis for applicants who have intentions of using their proposed mark in trade. The application must include a signed sworn statement declaring the applicant’s intention to use the mark in trade. Before the USPTO registers the mark, the applicant must also file an Allegation of Use and actually start using the mark in trade.

International application – Applicants who want to sell their goods and/or services in international markets must register an application with the intended countries that are part of the Madrid Protocol.

Likelihood of confusion – An application will be refused if the proposed mark conflicts with a registered mark or one that is pending for registration. If the goods and/or services are related and there is a strong basis for confusion between the marks, then there are sufficient grounds for refusal of an application.

Madrid Protocol – An international treaty that makes it easier for the applicant to file for trademark registration in countries (that have joined the Madrid Protocol) using just one application.

Mere descriptiveness – There is legal basis for refusing marks that simply describe a characteristic of the goods and/or services. The marks are not significantly unique and won’t be registered in order to maintain the integrity of public uses.

Non-Final Office Action – Issued by the examining attorney after preliminary review of the application to address concerns. If the applicant responds, the examining attorney will respond with another non-final office action letter. The applicant should respond within a six-month time period to avoid having the application abandoned.

Notice of Abandonment – A notice from the USPTO informing the applicant that the application has been abandoned and is no longer in the pending process. The applicant can possibly revive the application by filing a petition or requesting a reinstatement.

Notice of Allowance – A notice (only issued to applications that have filed under the “intent to use” basis) from the USPTO informing the applicant that the mark can be registered. This is sent once the proposed mark has been published in the Official Gazette and has not been challenged or has overcome all challenges. Once the Notice of Allowance is issued, the applicant must immediately file a Statement of Use or request an extension for filing. If not done so in a timely manner, the application will be abandoned.

Notice of Publication – A notice from the USPTO informing the applicant that the proposed mark will be published in the Official Gazette. If there are no objections from the examining attorney or if the objections were all resolved, the mark will be approved for publication. Challengers to the proposed mark have 30 days from the time of publication to either file an opposition to registration or request an extension for filing. If there are no challengers or if their attempted challenges failed, a Certificate of Registration will be issued to applications that were filed based on use or foreign registration. Applications filed under the “intent to use” basis will get a Notice of Allowance.

Office action – A letter from the examining attorney informing the applicant of the legal standing of an application.

Official Gazette – USPTO’s weekly publication that includes marks printed for opposition.

Opposition proceeding – Appearing before the Trademark Trial and Appeal Board to challenge the registration of a proposed mark in response to its publication in the Official Gazette.

Petition to revive an application – Officially requesting the USPTO to revive a dead or abandoned application. Managed by the Office of the Commissioner for Trademarks, the petition must be filed with the USPTO within two months from when the Notice of Abandonment was issued.

Principal Register – USPTO’s main register for trademarks. Under the Principal Register, a mark will be fully protected by the Trademark Act.

Priority action – A letter from the examining attorney informing the applicant of necessary requirements that must be dealt with before the mark can be approved for print. The applicant must respond within six months of receiving the letter; otherwise, the application will be abandoned. If the applicant responds within two months, the application will get priority treatment in the processing procedure.

Publication for opposition – Once the proposed mark has been approved by the examining attorney for publication in the Official Gazette, challengers (who believe that they will be harmed by the registration of the mark) may either file an opposition to registration or request an extension for filing. If there are no challengers or if their attempted challenges fail, a Certificate of Registration will be issued to applications that were filed based on use or foreign registration. Applications filed under the “intent to use” basis will get a Notice of Allowance.

Registration – To federally register your mark declaring your legal rights to use it in trade.

Request for Extension of Time to File a Statement of Use – A sworn statement signed by the applicant, or someone on the applicant’s behalf, stating that the applicant plans to use the mark in trade and just needs more time. For every class of goods and/or services, there must be an accompanying filing fee. If granted, the applicant will get an extra six months to either use the mark in trade and file a Statement of Use or file another request for extension. Though the applicant may continually file for extensions every six months, the mark must be used in trade and a State of Use must be filed within three years after the Notice of Allowance has been issued. The mark will not be registered if the USPTO doesn’t receive a Statement of Use within three years after the Notice of Allowance has been issued.

Request to Reinstate an Application – If the USPTO mistakenly abandoned an application, the applicant may request a reinstatement. There is no fee, but you must file the reinstatement request within two months from when the Notice of Abandonment was issued and include both a true copy of the document having been timely processed and a USPTO receipt.

Search – After the applicant files for registration with the USPTO, the office will do a search of its records to see if the proposed mark is similar to those that are pending or already registered.

Service mark – A design (textual, graphical, or a combination of both) that is used to distinguish one service from another.

Specimen – An actual prototype of how a proposed mark will be used on goods or represent services. For each class of goods and/or services listed in the application, there must be one specimen.

Statement of Use – A sworn statement signed by the applicant, or someone on the applicant’s behalf, confirming that the mark is being used in trade. For each class of goods and/or services, the applicant must pay a fee of $100 and a specimen demonstrating the mark being used in trade. Failure to file a Statement of Use within six months of the USPTO having issued the Notice of Allowance will lead to the application being abandoned. The Amendment to Allege Use and Statement of Use are both the same; the only difference is the time of filing.

Stylized mark – A style of illustration that distinguishes a mark, such as a distinct lettering format or design.

Subsequent designation – Already holding an international trademark registration, the applicant is requesting to have their registration be protected by extra Contracting Parties.

Suggestive mark – Marks that don’t directly suggest at the goods and/or services that are being marketed.

Supplemental Register – USPTO’s secondary register for trademarks. Marks that are not qualified for the Principal Register can try to enlist in the Supplement Register. The protection is not as comprehensive as that afforded by the Principal Register, and the marks are not privy to some of the advantages of the Trademark Act.

Suspension Letter – This is a letter stating the active status of an application has been postponed. The applicant doesn’t need to reply to a suspension letter.

Suspension Inquiry Letter – After an application has been suspended for six months or more, the examining attorney will send a letter to the applicant to ask about the status of the issue that caused the suspension. The applicant needs to respond to the letter; otherwise, the application will be abandoned.

Trademark – Protects a design (textual, graphical, or a combination of both) that distinguishes one business from another. As long as the trademark is continually used in trade, it can be renewed.

Use-based application – These applications must include a signed statement that the mark is being used in trade and was used during the filing date; date of the first time that the applicant used the mark; date of the first time that the application used the mark in trade as a trademark or service mark; and, for each class of goods and/or services listed on the application, there must be a specimen demonstrating how the mark is being used in trade.

Use in commerce – The mark must be used in trade. For goods, the mark should appear on products and/or packaging of sellable merchandise. For marketable services, the mark should be used or exhibited in the sale or promotional processes.

USPTO – United States Patent and Trademark Office

For a more comprehensive understanding of how to properly navigate trademark laws, contact TM4 at 877-5-TRADEMARK (877-587-2336).