The land of trademarks is full of twists... and terms. We’ve gathered some of the most common trademark terms and their definitions to help you better navigate every step of the journey. Click to expand the categories and terms.
Choosing a Mark
Arbitrary
A common word whose meaning has no relation to the goods or services with which it is used
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Coined
Synonymous with fanciful - a completely invented term created solely to function as a trademark
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Descriptive
A term that is limited in protection because it directly describes a feature, quality, or characteristic of the goods or services with which it is used
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Fanciful
Synonymous with coined - a made-up or invented word with no prior meaning
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Generic
A term that is unregistrable because it refers to the common name of the product or service with which it is used
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Suggestive
A mark that hints at or suggests a quality or feature of the goods or services, requiring some imagination to understand
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Likelihood of Confusion
A legal standard: Are two marks so similar that consumers might mix them up?
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Trademark Search (US & International)
Trademark Search
Looking for existing trademarks to avoid conflicts with a proposed mark
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Knockout Search
Comprehensive Search
Covers federal, state, common law, and international databases
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Common Law Search
Searches for unregistered marks being used in business (websites, business listings, social media, etc.)
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Search Report
A summary of findings identifying potential conflicts or risks
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Registration Process
1(a) Application
A trademark application for which the applicant is already using the mark in connection with the goods or services
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1(b) Application
A trademark application where the applicant has a bona fide intent to use the mark in commerce in the future with the goods or services
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Allegation of Use
A document filed in a 1(b) application to show the trademark is being used in commerce
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Applicant
An entity or individual that files a trademark application with the USPTO
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Assignment
The legal transfer of ownership of a trademark from one party to another
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Common Law
Trademark rights created from using of a mark in commerce, without federal registration
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Domicile Address
The physical address of the trademark owner, required for US trademark applicants, though it may be hidden from public records
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Examiner
A USPTO attorney who reviews trademark applications to ensure they meet procedural and substantive requirements for registration
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Filing Basis
The legal foundation for filing a trademark application, such as use in commerce, intent to use, or under an international treaty such as the Madrid Protocol
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Identification
A specific description of the goods and/or services associated with a trademark in a USPTO application or registration
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International Class
One of 45 categories of goods and services used to group similar goods or services in trademark applications and registrations
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Notice of Allowance (NOA)
A USPTO document for intent-to-use applications
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Official Gazette
A weekly publication from the USPTO that lists newly approved trademark applications for potential opposition
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Publication
The stage in the trademark process when an approved application is publicly listed in the Official Gazette, giving others a chance to oppose the registration
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Registrant
An entity or person that owns a trademark registration
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Service Mark
A service mark is a type of trademark that distinguishes services as opposed to goods. While both goods and services are trademarks, only services use the SM symbol during the application process
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Specimen
Evidence showing the USPTO how a trademark is used in commerce with its goods or services
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Trademark Assistance Center
Office in the USPTO that helps the public with trademark-related questions and filings
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Trademark Center
The USPTO’s trademark application form and portal that helps users with trademark-related questions and filings
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Trademark Scam
A deceptive solicitation that targets trademark owners (by phone, mail, email, or text) often requesting unnecessary fees for fake services
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Use in Commerce
Use of a trademark on goods or services in the ordinary course of trade, across state lines or affecting interstate commerce
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Office Action Responses
Office Action
A written response from a USPTO examiner outlining substantive or procedural issues that must be resolved before a trademark application can be approved
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Cease and Desist Matters
Cease and Desist Letter
A formal demand to stop using a trademark that allegedly infringes someone else's rights
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Infringement
Unauthorized use of a trademark that is likely to cause confusion with a registered or common law mark
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Willful Infringement
Unauthorized trademark use done knowingly, which may lead to harsher penalties in court
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Declaratory Judgment
A legal action filed by the alleged infringer asking a court to declare they are not infringing
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Injunction
A court order requiring a person or business to stop using a trademark
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Response Letter
A formal reply to a cease and desist letter, which may deny infringement or seek resolution
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Trademark Dilution
When a famous mark’s uniqueness is weakened, even without confusion or competition
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Fair Use Defense
A legal defense claiming a trademark was used for descriptive, comparative, or non-commercial purposes
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Trademark Opposition
CAFC (Court of Appeals for the Federal Circuit)
A federal appeals court that hears trademark and patent cases, including appeals from the USPTO’s Trademark Trial and Appeal Board (TTAB)
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Interlocutory
An attorney who assists the judges of the TTAB
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Notice of Opposition
A proceeding filed with a trademark office to oppose the registration of a pending trademark, usually on the basis that it may cause confusion with an existing mark or harm the opposer’s rights
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Petition to Cancel
A legal proceeding attempting to remove a registered trademark from the trademark register, typically filed by someone who believes the registration is invalid or harmful to their rights
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TTAB (Trademark Trial and Appeal Board)
A USPTO administrative court that resolves trademark disputes, including oppositions, cancellations, and appeals of examiner refusals
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Registration Renewals
Declaration of Continued Use
Also known as ‘Section 8’, a sworn statement confirming that a trademark is still used in commerce; required to maintain a federal registration
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Incontestable Status
A legal status that a registered trademark can attain after 5 years of continuous use, which provides stronger protection by limiting the grounds on which the mark can be challenged
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Section 8
A required filing due to the USPTO between the 5th and 6th year after registration to prove the trademark is still in use and maintain registered status
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Section 15
An optional USPTO maintenance filing available after 5 years of registration granting incontestable status
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Rules & Statutes
Lanham Act
The main federal law governing trademarks in the United States, covering registration, enforcement, and protection of trademark rights
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TMEP (Trademark Manual of Examining Procedure)
The USPTO’s official guide outlining the rules, laws, and procedures for trademark examination
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International Trademarks
Madrid Protocol
An international treaty allowing trademark owners to apply for protection in one or more countries through streamlined process
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WIPO
A global organization that administers international intellectual property treaties, including the Madrid Protocol
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