This glossary provides a basic overview of key trademark law terms, offering non-attorneys a helpful guide to understanding the fundamentals of trademark protection and management.
1. Trademark
A trademark is a word, phrase, symbol, design, or combination that identifies and distinguishes the source of goods or services from those of others. It serves as a brand identifier in commerce.
2. Service Mark
Similar to a trademark, a service mark identifies and distinguishes the source of services rather than goods. For example, a logo representing a delivery service would be a service mark.
3. Trade Dress
Trade dress refers to the overall visual appearance of a product or its packaging, which signifies the source of the product to consumers. It can include the design, shape, color, or layout of a product or its packaging.
4. USPTO (United States Patent and Trademark Office)
The USPTO is the federal agency responsible for registering trademarks in the U.S. It reviews trademark applications, grants registrations, and handles disputes related to trademarks.
5. Likelihood of Confusion
This refers to the possibility that consumers may mistakenly believe that goods or services offered by two different companies are related because their trademarks are too similar. Trademark applications can be rejected if there’s a likelihood of confusion with an existing mark.
6. Infringement
Trademark infringement occurs when someone uses a trademark that is identical or confusingly similar to an existing registered trademark, without permission, in a way that causes confusion or dilutes the brand’s value.
7. Dilution
Trademark dilution refers to the weakening of a famous trademark’s distinctiveness due to unauthorized use, even if there is no likelihood of confusion. This often occurs when a well-known brand is used in unrelated industries, potentially harming its reputation.
8. Descriptive Mark
A descriptive mark describes a characteristic or quality of the goods or services. These marks are generally not eligible for trademark protection unless they acquire distinctiveness through extensive use in the market.
9. Generic Mark
A generic mark refers to common, everyday terms that describe a product or service category (e.g., “Computer” for computers). Generic marks are not eligible for trademark protection because they do not distinguish one brand from another.
10. Fanciful Mark
A fanciful mark is a completely made-up or invented word with no meaning outside of its use as a trademark (e.g., “Kodak”). These marks are the strongest and easiest to protect under trademark law.
11. Arbitrary Mark
An arbitrary mark uses a real word, but in a way that has no direct relation to the product or service. For example, “Apple” as a trademark for computers is an arbitrary mark. Like fanciful marks, arbitrary marks are strong and highly protectable.
12. Suggestive Mark
A suggestive mark suggests something about the goods or services but does not directly describe them. For example, “Netflix” suggests streaming movies, but it doesn’t directly describe it. Suggestive marks are protectable without needing to show secondary meaning.
13. Secondary Meaning (Acquired Distinctiveness)
A term that is initially descriptive can become eligible for trademark protection if it acquires distinctiveness through long-term, exclusive use. This is known as “secondary meaning” because the public begins to associate the term with a specific brand over time.
14. Common Law Trademark
A common law trademark arises through the use of a mark in commerce, even if it is not federally registered. Common law rights are limited to the geographic area where the mark is used and may offer less protection than a registered trademark.
15. Intent-to-Use Application
An intent-to-use (ITU) trademark application is filed when a business has not yet begun using a mark in commerce but plans to do so in the near future. The applicant must eventually submit proof of use before the mark can be registered.
16. Madrid Protocol
The Madrid Protocol is an international treaty that simplifies the process of obtaining trademark protection in multiple countries. Businesses can file a single application through the World Intellectual Property Organization (WIPO) to seek trademark protection in member countries.
17. Office Action
An Office Action is a formal response from the USPTO after reviewing a trademark application. It may request additional information, reject the application due to conflicts with existing marks, or raise other issues that must be addressed before the mark can be registered.
18. Opposition
A trademark opposition is a process in which a third party challenges a trademark application after it has been published in the USPTO’s Official Gazette but before it is officially registered. The opposing party argues that the trademark should not be registered due to potential conflicts.
19. Cancellation
A cancellation is a legal proceeding where a third party seeks to cancel an existing registered trademark. This can happen if the mark is no longer used, if it has become generic, or if it was improperly registered.
20. Trademark Search
A trademark search involves looking for existing trademarks that could conflict with a new mark you intend to register. This process helps identify any potential issues before filing an application and reduces the risk of rejection or legal disputes.
21. Specimen
A specimen is a real-world example showing how the trademark is used in commerce. When filing a trademark application, the USPTO requires applicants to submit a specimen to prove that the mark is being used in connection with the goods or services specified.
22. Use in Commerce
A trademark must be “used in commerce” to qualify for registration. This means that the mark must be actively used on products or services that are sold or offered in the marketplace. The applicant must provide evidence of this use during the application process.
23. Cease-and-Desist Letter
A cease-and-desist letter is a formal notice sent to an individual or business demanding that they stop using a trademark without authorization. It’s often the first step in addressing trademark infringement before pursuing legal action.
24. Trademark License
A trademark license is an agreement that allows a third party to use a trademark in connection with specific goods or services. The trademark owner grants permission, usually in exchange for payment or royalties, while maintaining ownership of the mark.
25. Trademark Dilution Revision Act (TDRA)
The TDRA is a federal law passed in 2006 that strengthened protections for famous trademarks. It allows owners of famous marks to take action against unauthorized uses that are likely to dilute the mark’s distinctiveness, even if there is no direct competition or consumer confusion.
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