Trademark Definitions

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abandonment loss of trademark rights resulting from non use of mark and demonstrated by sufficient evidence that the owner intends to discontinue use of the mark; may also occur when mark has lost its distinctiveness or through owner's misuse of trademark rights.

Amendment to Allege Use an amendment to an intent‑to‑use application indicating use of a mark in commerce; can only be filed before approval of the mark for publication (or if there is a rejection, within six months of the response period.)

answer a written response to the complaint in which the defendant admits or denies the allegations and provides a list of defenses.

arbitrary mark a word or group of words that has a dictionary meaning that does not pertain to the goods or services with which it is associated.

assignment a permanent transfer of trademark rights and goodwill.

blurring a form of dilution in which a famous mark loses some its distinctiveness due to the use of a similar mark.

cancellation proceeding an action brought before the Trademark Trial and Appeal Board to cancel a federal registration of a mark; must be based upon one of the statutory grounds provided in the Lanham Act and the party bringing the action must prove that it would be damaged.

certification mark   a mark that indicates that third party goods and services meet certain standards such as regional origin, material, mode of manufacture, quality, accuracy, or that the work or labor was performed by a member of a certain organization.

civil cover sheet  a form required at the time of filing of the complaint for use by the court in maintaining certain statistical records.

collateral estoppel a defense to infringement; a senior user is required to abide by factual or legal determinations made in a previous lawsuit.

collective mark  used by members of a cooperative, an association or other collective group or organization to indicate membership or to indicate the source of the organization’s products or services.

commerce for purposes of protection of U.S. trademarks, any trade or business lawfully regulated by the United States.

common law  a system of legal rules derived from the precedents and principles established by court decisions.

concurrent use a legal determination that more than one person is entitled to use a similar mark.

confidentiality agreement (also known as non-disclosure agreement or disclosure agreement) a contract that restricts or prohibits the disclosure of confidential information. 

counterfeiting the act of making or selling look-alike goods or services bearing fake trademarks

cyber-squatter a person who registers a well-known trademark as a domain name hoping to later profit by selling the domain name to the trademark owner.

declaratory relief  request that the court sort out the rights and legal obligations of the parties in the midst of an actual controversy.

defamation of business false statements that injure a business’s reputation. Defamation affects the manner in which the public perceives the company’s trademarked products.

descriptive mark A name or term that merely describes a product or service (or its nature, quality, characteristics, ingredients, or origin) and is considered as “weak”.

design patent legal protection granted for a new, original and ornamental design for an article of manufacture; protects only the aesthetic appearance of an article, not its structure or utilitarian features.

dilution a form of trademark injury that occurs when a famous mark’s reputation is blurred or tarnished by the commercial use of a similar mark. Unlike traditional trademark infringement, there is no requirement of consumer confusion, and the parties do not have to be competitors selling similar goods or services.

disclaimer a statement that a trademark owner asserts no exclusive right in a specific portion of a mark, apart from its use within the mark.

disparagement  false statements that interfere with a company’s business relations and negatively affect a company’s ability to do business.

distinctive mark a mark that is immediately distinguishable such as an arbitrary, fanciful, suggestive mark 

diversity  the right to file a lawsuit based upon non-federal claims in federal court; parties must be from different states and the matter in controversy over $50,000.

domain name an identifier of a website location consisting of two parts; a generic top level domain (such as .com, and a second level that is the name of the business or organization, (such as amazon or e-Bay).

drawing a substantially exact representation of the mark as in used or (in the case of intent‑to‑use applications) as intended to be used. A drawing is required for all federal trademark applications and for many state trademark applications.

estoppel a defense to infringement in which the junior user prevents the senior user from contradicting behavior upon which the junior user has justifiably relied. In order to assert an estoppel defense successfully the senior user must know the facts of the junior user's conduct and the junior user must have a justifiable belief that the infringing conduct is permitted.

fair use a defense to trademark infringement in which a trademark is used in a descriptive manner, rather than as a source of goods

fanciful marks a word or a combination of letters that has no dictionary meaning and for that reason is immediately distinctive.

franchise agreement a contract in which a trademark owner (the “franchiser”) permits another business (the “franchisee”) to operate under the trademark and offer trademarked (or “branded”) products and services, for example a Ford dealership, a Baskin & Robbins ice cream store or an H&R Block tax preparation business.

functionality the usability of a product feature or design; functional features or design will not be protected under trademark law.

generic term a term that describes an entire group or class of goods.

genericide the process by which trademark rights are abandoned because consumers have begun to think of the trademark as the descriptive name for the goods; results from a judicial determination or inter partes proceeding at the Patent and Trademark Office.

geographic composite mark a mark composed of a geographic term with additional wording or a design, for example, Bell Atlantic. 

geographically descriptive (weak) - a geographic term describes the origin, location or source of the product or service, for example, First National Bank of Bloomington for a bank located in Bloomington, Indiana)

geographically misdescriptive (unprotectible)  - a geographic term misleads consumers into believing that the product originates from a region when it does not. For example, Danish Maid Cultured Products is geographically misdescriptive of products that were not from Denmark.

good will the tendency or likelihood of a consumer to repurchase goods or services based upon the name or source of the goods or services.

gray market goods when goods are manufactured abroad with the authorization of the trademark owner but are imported into the U.S. without authorization of the trademark owner.

hallmark a graphic icon (rather than a word or group of words) that function as the source for various products or services from one company.

house mark a word or group of words that functions as the source for various products or services from one company and it is often used in conjunction with other trademarks.

incontestable a trademark that is immune from challenge except for certain grounds specified in Section 33(b) of the Lanham Act; conclusive evidence of the registrant's exclusive right to use the registered mark in commerce in connection with the specified goods or services.

infringement occurs when the junior user’s goods or services create a likelihood of confusion with the senior user’s goods or services.

inherently distinctive see distinctive

injunction  a court order directing the defendant to stop certain activities.

intellectual property   any product of the human mind that is protectible under law.

intent‑to‑use   an application for federal trademark registration based upon the trademark owner's bona fide intention to use the mark in commerce.

inter partes  a formal administrative hearing governed by federal rules of civil procedure and evidence

interference proceeding a mini-trial before the Trademark Trial and Appeal Board brought when two trademark applications are pending that conflict, or when a pending application conflicts with a registered mark that is not incontestable; only permitted under extraordinary circumstances.

interference with business relations a defendant intentionally interferes with the plaintiff’s business relationship with a third party;  

interference with prospective economic advantage a defendant intentionally interferes with a probable business relationship between the plaintiff and a third party

international schedule of classes of goods and services a system for classification of goods and services applicable to federal trademark applications filed on or after September 1, 1973.

junior user a party who adopts and uses a trademark similar to a mark previously adopted and used by a senior user.

jurisdiction the right of a court to hear a type of case or to bind the participants.

laches a defense to infringement in which the junior user argues that the senior user's delay in bringing the lawsuit is so unreasonable that the senior user should be barred from proceeding.

likelihood of confusion the probability of whether consumers will be confused as to the sponsorship, affiliation or connection between the products or services of companies with similar marks; a standard for infringement, registration and inter partes proceedings.

merchandise license a contract between the trademark owner and licensee permitting the licensee to apply the trademark to certain consumer goods, for example coffee mugs featuring images of Bugs Bunny or the logo of a university.

merely descriptive see descriptive.

motion for preliminary Injunction a request that the court order the defendant to halt the infringing activity until the outcome of the trial.

motion for summary judgment a request that the court grant a judgment without having a trial because there is dispute as to the facts.

opposition proceeding  an action brought before the Trademark Trial and Appeal Board to prevent the federal registration of a mark; must be based upon one of the statutory grounds provided in the Lanham Act and the party bringing the action must prove that it would be damaged.

parody  a defense used by a junior user who seeks to justify its imitation on the premise of humor or satirical social commentary. As a general rule, the same likelihood of confusion standards are applied in a case involving parody as in any other type of infringement. The difference is that the junior user attempts to argue that consumers could not be confused because the use is obviously a joke.

permanent injunction a court order issued after a final judgment on the merits of the case; permanently restrains the defendant from engaging in the infringing activity.

preliminary injunction  a court order injunction granted after a noticed hearing where the parties have an opportunity to present evidence as to the likelihood of plaintiff's success on the merits and irreparability of the harm to be suffered if the injunction is not granted; lasts until a final judgment has been rendered.

priority a senior user’s right to prevent a junior user from using a mark.

related goods or services goods or services that the consuming public is likely to believe come from a certain company.

remedies forms of judicial relief available in a lawsuit, for example, damages, injunctions or attorney fees..

request to divide out a statement included in an Amendment to Allege Use or a Statement of Use asking to separate from the application certain goods for which the trademark has not been used.

reverse confusion a junior user, usually a larger, more powerful company attempts to usurp the power of the senior user’s mark and create the impression that the senior user is the infringer.

reverse engineering  the process of disassembling or examining a product that is available to the public in order to determine how the product functions.

right of publicity the legal right to control the commercial exploitation of a person's name, image or persona.

secondary meaning   demonstration that the consuming public associates a mark with a single source; usually proved by advertising, promotion and sales.

Section 8 declaration (also known as a Declaration of Continued Use) a declaration by a trademark owner that the mark is still in use. Filed between the fifth and sixth year following registration and at the time of each trademark renewal. Failure to file in this time period or within the six month grace period, may result in loss of trademark rights.

Section 9 application for renewal  an application seeking renewal of a federal trademark registration; must be filed within six months of the expiration of the initial term of trademark registration.

Section 15 declaration  (also known as a Declaration of Incontestability) a declaration of that trademarks has been in continuous use for five years since registration. Filed between the fifth and sixth year following registraiton.  If filed and accepted by the Patent and Trademark Office the mark becomes incontestable.

Section 44 application an application for federal trademark registration by the owner of a mark registered in a foreign country, provided that country is a party to an international convention or treaty of which the United States is a member.

senior user the first party to adopt and use a particular mark in connection with its goods or services.

service mark  a mark used in the sale or advertising of services to identify and distinguish services.

Statement of Use A declaration indicating use of a mark in commerce; can only be filed after a Notice of Allowance has been issued.

strong mark  achieved by an inherently distinctive mark or by a nondistinctive mark that has achieved secondary meaning.

suggestive mark  a mark that alludes to or hints at (without describing) the nature or quality of the goods.

summons a document served with the complaint that explains that the defendant has been sued and has a certain time limit in which to respond.

sweetheart sales shipments or transactions within a company and performed solely to qualify for registration or for a claim of priority

tarnishment a form of dilution that occurs when a famous mark is damaged by an unpleasant or unwholesome use of a similar mark.

temporary restraining order (TRO)  an injunction, often granted ex parte, that is short in duration and only remains in effect until the court has an opportunity to schedule a hearing for the preliminary injunction.

trade dress a distinctive combination of elements, many of which may not be protectible by themselves under trademark law.

trade secret   any business information that is kept in confidence and that gives the business an advantage over competitors who do not know it.

trademark  any word, symbol, design, device, logo or slogan that identifies and distinguishes one product or service from another.

trademark license an agreement granting limited trademark rights.

unclean hands  a defense asserted when the senior user has committed a serious act of wrongdoing in regard to the lawsuit or the activity precipitating the lawsuit.

unfair competition  a collection of common law principles and precedents, many of which are adopted as state laws, that protect against unethical business practices.

URL (Uniform Resource Locator) a system for locating a website; generally begins with http://www. followed by a domain name.

use in commerce actual use of a mark in the ordinary course of trade  (or if otherwise impracticable on documents associated with the goods). For federal registration, commerce is any commerce lawfully regulated by the federal government. For state registration, it is generally any commerce occurring within the state of registration. A service mark is deemed to be in use in commerce when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.

utility patent legal protection granted for inventions or discoveries that are machines, processes, compositions, articles of manufacture or new uses of any of these.

weak nondistinctive names or terms that cannot be registered or protected as a trademark unless the owner proves a consumer awareness or “secondary meaning”

works of authorship  creation of intellectual or artistic effort that is fixed or embodied in a perceptible form and meets the standards of copyright protection.