| Arbitrary Mark: Arbitrary refers to an assessment of a mark based on a continuum of distinctiveness. Arbitrary marks are strongly distinctive in that it is the use of a common word in an arbitrary context. The classic example is Apple for computers. Apple is a fruit and so it is arbitrary used to refer to a computer company. Arbitrary marks are eligible for registration and face a very low risk that the examining attorney might determine that the mark is merely descriptive of the goods or services. |
| Classification: A trademark classification is a number used to categorize a trademark by its associated goods or services. Different systems of classification exists such as the Acceptable Identification of Goods and Services Manuals and the Nice Classification of Goods and Services. |
| Coexistence Agreement: An agreement between two owners of identical or similar trademarks to coexist. |
| Coined Mark: Coined refers to an assessment of a mark based on a continuum of distinctiveness. A coined mark is the strongest or most distinctive type of mark because it is a made-up term. |
| Date of First Use: On a federal trademark application, the date of first use is the first date that the goods and services were provided under the mark, anywhere. |
| Date of First Use in Commerce: On a federal trademark application, the date of first use in commerce is the first date that the goods and services were provided under the mark across state lines, or in more than one U.S. state or territory in commerce. |
| Descriptive Mark: Descriptive refers to an assessment of a mark based on a continuum of distinctiveness. A descriptive mark is a mark that is merely descriptive of its associated goods or services, or a geographic location. For example, a hot sauce product called Spicy. Descriptive marks are not registrable unless the mark acquires distinctiveness in the form of a Secondary Meaning. A Secondary Meaning is a meaning in addition to the descriptive meaning sufficient for consumers to identify the source of a particular good or service. While descriptive marks are not registrable, they may be placed on the Supplemental Register, which has some but not all protections affords a fully registered trademark. |
| Design Search Code: A design search code is a six-digit code used to categorize design marks in the USPTO database. It is also used during the application review process to search for similar marks. |
| Distinctiveness: Trademarks are assessed on the strength of the mark. Strength is not to be confused with “quality” or “creativity,” but rather since trademarks are supposed to identify the source of goods or services, then the more “generic” a mark is the less it identifies one particular source. In fact, a mark may just merely describe the goods or services. |
| Fanciful Mark: Fanciful refers to an assessment of a mark based on a continuum of distinctiveness. Fanciful or coined marks are invented words and are the most distinctive kinds of marks because the risk that they might refer anything except for the source of the goods or services associated with them is extremely low. The classic example of a fanciful or coined mark is Kodak for photographic goods. Fanciful or coined marks face an interesting dilemma when the mark becomes genericized. This occurs when usually well-known marks become used so synonymously with the goods or services for which it is associated that the mark loses its source identifying significance. |
| Filing Basis: Filing basis is the basis of a USPTO trademark application. The USPTO accepts four filing bases for a trademark application: (1) Section 1(a) for use of a mark in commerce for the applied-for goods and/or services, (2) Section 1(b) for the bona fide intention to use a mark in commerce for the applied-for goods and/or services, (3) Section 44(e) for applicants of trademark registration for the same mark for the same goods and/or services in another country, and (4) Section 44(d) for applicants who have applied for registration for the same mark and the same goods and/or services in another country. |
| Generic Mark: Generic refers to an assessment of a mark based on a continuum of distinctiveness. Generic marks are marks that are merely the common word for such a good or service, for example, the a jar labeled jar. Genericized marks are those usually well-known marks that become used so synonymously with the goods or services for which it is associated that the mark loses its source identifying significance. There are several classic examples of genericized marks, including Kleenex, Taser, Xerox and to some extent, Google (for example, to Google something can be used to mean any kind of search). |
| Foreign-Domiciled Applicant: According to the USPTO, a foreign-domiciled applicant is an individual or entity who has a domicile outside of the United States or its territories. Domicile means: for an individual, the place the person resides and intends to be the person’s principal home; for an entity, the principal place of business (such as the place of the entity’s headquarters) or where senior management directs and controls the entity’s activities. |
| Incontestability Status: An incontestable trademark is not truly incontestable, instead the trademark receives an additional lawyer of status and protection which includes a presumption of the validity of the mark should there be a challenge |
| Likelihood of Confusion: Likelihood of Confusion refers both to the statutory standard for refusing trademark registration, in other words that the applicant’s mark is confusingly similar to a registered mark and to a standard of trademark infringement. The principal factors considered in the statutory standard are: (1) the similarity of the marks and (2) the commercial relationship between the goods and/or services listed in the application. |
| Nice Classification of Goods and Services: The Nice Classification of Goods and Services is an internationally recognized system used to classify goods and services for the purpose of registering trademarks. The Nice Classification uses number classifications to group goods and services and designate those for which the trademark is featured with in commerce. It is kept by the World Intellectual Property Organization (WIPO). |
| Office Action: An Office Action is a formal correspondence from the USPTO examining attorney noting technical or substantive issues with the application which must be overcome in order for the application to proceed. |
| Principal Register: The primary register of trademarks maintained by the USPTO. |
| Suggestive Mark: Suggestive refers to an assessment of a mark based on a continuum of distinctiveness. Suggestive marks are inherently distinctive and refer to goods and/or services in way that requires an additional cognitive step from mere descriptiveness. |
| Supplemental Register: A secondary register of trademarks maintained by the USPTO for marks that do not meet the requirements for registration to the Principal Register. |
| Trademark: According to the WIPO, A trademark is a design, phrase, logo, word(s), or a sign “capable of distinguishing the goods or services of one enterprise from those of other enterprises.” Trademarks are protected by intellectual property rights. |
| Trademark Electronic Application System (TEAS): The Trademark Electronic Application System (TEAS) is a service of the USPTO which allows applicants to submit applications for trademark registration online. |
| Trademark Electronic Search System (TESS): The Trademark Electronic Search System (TESS) is a service of the USPTO which allows users to search the USPTO database for other applied-for and registered trademarks. |
| Trademark Identification Manual (IDM or ID Manual): The Trademark Identification Manual (IDM or ID Manual) is a service offered by the USPTO allowing users to search accepted identifications of goods and services on registered trademarks. |
| Trademark Information Network (TMIN): A free service made available by the USPTO, featuring online videos and information for various trademark topics and application tips. |
| Trademark Manual of Examining Procedure (TMEP): A federal trademark application will be examined with reference to the Trademark Manual of Examining Procedure (TMEP). The USPTO makes an online version of TMEP available to the public for free. |
| Trademark Status and Document Retrieval (TSDR): A free service made available by the USPTO, used to check the status and view documents of a federally applied-for or registered trademark. |
| Trademark Trial and Appeal Board (TTAB): The administrative board that hears and decides adversary proceedings between parties over trademark registration. |
| United States Patent and Trademark Office (USPTO): A federal agency of the U.S. Department of Commerce that issues patents for inventions and registrations for trademarks. |
| Use in Commerce: The use of a trademark with goods and/or services in interstate commerce. |
| World Intellectual Property Organization (WIPO): The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations established in 1967 in order to promote and protect intellectual property globally. |
| (TM) Symbol: The (TM) symbol is optionally used in the United States to designate a mark that is being used to identify a source of goods or services, though is not registered. |
| (R) Symbol: The (R) symbol is optionally used in the United States to designate a mark that is being used to identify a source of goods or services, and it is a registered trademark. |