Glossary

Every trademark term, in plain words.

Want to learn every term you'll run into on the way to a registered trademark? Here are all 112, in the order you'll meet them, from picking a name to renewing it.

The basics12 terms

  • A word, phrase, logo, or other sign that tells customers who a product or service comes from. It protects your brand name, not your idea or the product itself. A federal registration gives you the strongest rights across the U.S.

  • A trademark for services instead of physical goods, like the name of a consulting firm or a software platform. The law treats it the same as a trademark, and most people just say trademark.

  • The short word lawyers use for any trademark or service mark. A mark can be a name, a logo, a slogan, or even a sound or a color.

  • The name of the business itself, like "Bright Path Labs, LLC." A trade name identifies the company. It only works as a trademark when you use it to sell products or services.

  • The name you register with your state when you form an LLC or corporation. It lets you do business in that state under that name. It doesn't give you ownership of the name as a brand.

  • A "doing business as" name you register so you can operate under a name other than your legal one. In Florida you file it on Sunbiz. Like an LLC name, it's a registration to do business, not a trademark.

  • Your web address. Buying a domain doesn't give you trademark rights in the name, and using someone else's trademark in a domain can get you into trouble.

  • Rights you get just by using a name in business, without registering it. They only reach the area where you actually do business, and they're harder to prove. A federal registration goes much further.

  • A trademark registered with one state instead of the USPTO. It only covers that state. In Florida it's filed with the Division of Corporations.

  • A registration with the USPTO. It gives you nationwide rights that date back to your filing date, a public record of your ownership, the right to use the ® symbol, and stronger tools if someone copies you.

  • The United States Patent and Trademark Office, the federal agency that examines and registers trademarks. Every federal trademark application goes through it.

  • The reputation and customer recognition attached to your brand. A trademark is tied to that goodwill, which is why a mark is sold or transferred together with it.

Picking a strong name10 terms

  • How well a name points to one company instead of describing the product. The more distinctive the name, the easier it is to register and protect. Trademark law ranks names on a scale from generic to fanciful.

  • A made-up word with no meaning of its own, like Kodak or Xerox. It's the strongest kind of trademark.

  • A real word used for something unrelated to its meaning, like Apple for computers. Arbitrary marks are very strong.

  • A name that hints at what the product does without saying it outright, like Coppertone for sunscreen. It takes a moment of thought to connect the name to the product. Suggestive marks can be registered right away.

  • A name that simply describes the product or one of its features, like "Fast Invoice" for invoicing software. The USPTO usually won't register it on the Principal Register until it has acquired distinctiveness.

  • The common name for the product itself, like "Software" for software. A generic term can never be a trademark, and a famous brand can lose its rights if its name turns into the generic word for the product.

  • When customers come to see a descriptive name as one specific brand after years of use. The USPTO can accept five years of continuous, substantially exclusive use as evidence, often along with sales and advertising figures.

  • A last name used as a brand, like "Miller Coffee." A mark that's mainly a surname is treated like a descriptive mark and usually needs acquired distinctiveness first.

  • A place name used as a brand, like "Tampa Bay Tees." If the goods or services come from that place, the USPTO treats the name as descriptive.

Filing the application20 terms

  • The person or company that files the application and will own the registration. It has to be the actual owner of the brand. An application filed in the wrong owner's name can be void.

  • Filing the name itself, in plain text, without any particular font, color, or logo. It protects the words however you style them, which is why it's usually the first thing to file. Also called a word mark.

  • A filing that covers a logo or a stylized version of a name. It protects that specific look, so a major logo change later can mean filing again.

  • The image of your mark in the application: typed words for a standard character mark, or an image file for a logo. You can't make a material change to it after you file.

  • A statement that specific colors are part of your logo mark. A logo filed in black and white with no color claim generally covers the logo in any color.

  • A short written description of what a logo or design mark shows, required for any mark that isn't plain words.

  • The written list of what you sell under the brand. Your protection is tied to this list, so it has to be accurate and specific. You can narrow it later, but you can't broaden it.

  • The legal reason you're allowed to file. Most U.S. applicants file based on current use in commerce or on a good-faith intent to use the name soon.

  • Filing for a name you're already using to sell goods or services in a way that reaches across state lines, like selling online. You'll need a specimen showing the name in use.

  • Filing before you launch, based on a good-faith plan to use the name. It holds your place in line, and you prove use later, before the registration issues.

  • Filing in the U.S. based on an application or registration the owner already has in another country.

  • Proof of how you actually use the mark, like a screenshot of your website or app store page showing the name next to a way to buy or sign up. A mockup or digitally altered image will be refused, and the USPTO can sanction filings that use fake specimens.

  • An application based on use lists two dates: the first time you used the name anywhere, and the first time you used it in commerce. They're often the same day, and they have to be accurate.

  • The day the USPTO receives a complete application. Once the mark registers, your nationwide rights date back to this day.

  • The number the USPTO assigns your application when you file. It's how the application is tracked until it registers.

  • A statement that you don't claim exclusive rights in one word of your mark on its own, usually a descriptive or generic word. For "Sunny Day Bakery" for baked goods, you'd disclaim "Bakery." You still own the mark as a whole.

  • The sworn statement you sign with the application saying the facts in it are true and that you believe you have the right to use the mark. A false statement can put the registration at risk.

  • The applicant's permanent legal home or principal place of business. The USPTO requires it on every application, and a P.O. box won't do. It can be kept off the public record if you give a separate mailing address.

  • Applicants based outside the U.S. must be represented by an attorney licensed in the U.S. to file a trademark application.

  • The lawyer listed on the application. The USPTO sends notices about the application to them.

Classes7 terms

  • One of 45 categories used to group goods and services: classes 1 through 34 are goods, and 35 through 45 are services. The government fee is charged per class, so each class you add costs more.

  • The international system that sets the 45 classes. The U.S. and most other countries use it, and it's updated regularly.

  • Downloadable software and mobile apps, plus electronics and other tech hardware. If customers download your app, it usually belongs here.

  • Clothing, footwear, and headwear. A common class for brands that sell merch.

  • Business services like advertising, marketing, retail and online store services, and business consulting. Marketplaces and e-commerce brands often file here.

  • Education and entertainment: courses, coaching, workshops, events, and podcasts.

  • Software as a service (SaaS), online software customers don't download, and tech services like software development and hosting. Most SaaS products file here, often along with Class 9.

USPTO review17 terms

  • The USPTO lawyer assigned to review your application. They check that it meets the rules and search for conflicting marks. It's usually several months after filing before one picks up a new application.

  • A letter from the examining attorney listing problems with your application. You have to respond by the deadline, or the application is abandoned.

  • Three months from the date the Office Action issued, with one three-month extension available for a fee. Applications that come in through the Madrid Protocol get six months, with no extension.

  • A refusal based on the mark itself, like a conflict with another mark or a name that's too descriptive. It takes legal argument and evidence to overcome.

  • A paperwork issue, like an unclear goods description, a missing disclaimer, or a specimen that doesn't fit. These are usually fixed with an amendment.

  • A refusal because your mark is too close to a registered mark or an earlier application for related goods or services. It's one of the most common substantive refusals.

  • A refusal because the mark merely describes the goods or services. You can argue the mark is suggestive, or in some cases move it to the Supplemental Register.

  • The examining attorney's last word on an issue after your first response. You can answer with a request for reconsideration, an appeal to the TTAB, or both, by the same deadline.

  • A quick fix the examining attorney makes by phone or email, with your OK, instead of issuing a full Office Action.

  • When the USPTO pauses your application, often because it's waiting on an earlier conflicting application to be decided. It can last months or longer.

  • A way for someone else to send the USPTO evidence that an application shouldn't be approved, like a conflicting registration. It isn't a full legal proceeding, and the examining attorney decides whether to use it.

  • When an application dies, usually because a deadline was missed. You lose your filing date unless you revive it in time.

  • A request to bring back an application that was abandoned by mistake. It generally has to be filed within two months of the abandonment notice, with a fee and a statement that the delay was unintentional.

  • The main federal register, where most marks are registered. It gives the full set of federal rights.

  • A second register for marks that could become distinctive but aren't there yet, usually descriptive names. It lets you use the ® and blocks later look-alike filings, but it doesn't give the full rights of the Principal Register.

  • The Trademark Trial and Appeal Board, the USPTO's own court. It hears appeals of refusals and disputes like oppositions and cancellations.

Publication and approval7 terms

  • Once the examining attorney approves your mark, it's published in the Official Gazette so the public can object before it registers.

  • The USPTO's weekly publication listing the marks approved for publication.

  • A proceeding at the TTAB where someone tries to stop your mark from registering. They have 30 days after publication to file, and can ask for more time.

  • For an intent-to-use application, the notice that your mark made it through publication. You then have six months to show you're using it, or to ask for more time.

  • The filing that proves you've started using an intent-to-use mark, with a specimen and your dates of use. The registration issues after it's accepted.

  • A request for more time to file your Statement of Use. Each one gives six months, and you can get up to five, so up to three years from the Notice of Allowance.

  • The same proof of use as a Statement of Use, filed earlier, before the mark is approved for publication.

After it registers15 terms

  • The official record that your mark is registered, with its registration number and registration date.

  • Shows that a mark is federally registered. You can only use it once the mark registers. Using it before then can cause problems for your application and for enforcing your rights.

  • Symbols that claim a name as your brand, registered or not. You can use them anytime with no filing. ™ is for goods and ℠ is for services.

  • A filing that proves you're still using the mark, due between the fifth and sixth year after registration. If you miss it, the registration is cancelled.

  • Renewal of the registration, due every 10 years and filed together with a Section 8 declaration. The first one is due between the ninth and tenth year after registration.

  • A six-month window after a maintenance deadline when you can still file, for an extra fee.

  • An optional filing you can make after five years of continuous use following registration. It makes the registration incontestable.

  • A registration that can no longer be challenged on certain grounds, like being merely descriptive. It's one of the strongest positions a mark can be in.

  • A random USPTO check of some maintenance filings that asks for more proof of use. Goods or services you can't prove get deleted, and deleting them after an audit comes with a fee.

  • A TTAB proceeding to remove a registration from the register. In the first five years almost any ground works; after that, the grounds are limited.

  • A proceeding to remove goods or services from a registration because the mark was never used for them. Anyone can request it between three and ten years after registration.

  • A proceeding to remove goods or services because the mark wasn't in use for them on a key date, such as the filing date for a use-based application. It has to be requested within five years of registration.

  • Stopping use of a mark with no plan to start again. Three straight years without use is presumed to be abandonment, which can cost you the registration.

  • A transfer of ownership of a trademark, together with the goodwill of the business. Record it with the USPTO so the public record shows the new owner.

  • Permission for someone else to use your mark while you keep ownership. You need to control the quality of what they sell under it, or you risk losing your rights.

Protecting your brand8 terms

  • Using a mark that's likely to confuse customers with someone else's. The owner can sue for a court order to stop it and, in some cases, money damages.

  • A letter demanding that someone stop using a mark. It's often the first step in a dispute, and many disputes end there.

  • Ongoing tracking of new filings and uses that could conflict with your mark, so you can act early, often before the other mark registers. Also called a watch service.

  • Harm to a famous mark from a use that blurs or tarnishes it, even when no customer is confused. Only very well-known marks, like Nike, get this protection.

  • A fake copy of a registered mark on knockoff goods. It's the most serious kind of infringement and carries heavier penalties.

  • The look and feel of a product or its packaging, like a distinctive bottle shape. It can be protected like a trademark when customers recognize it as your brand.

  • Amazon's program that lets brand owners protect their listings and report copycats. It generally requires a registered trademark or a pending application.

  • Official-looking letters and emails from private companies, sent after you file, asking for fees to "register," "monitor," or "renew" your mark. Real USPTO emails come from the uspto.gov domain.

Going international6 terms

  • Trademark rights stop at the border. A U.S. registration protects you in the U.S. only, so other countries need their own filings.

  • A treaty system that lets you file one international application through the USPTO, based on your U.S. application or registration, to seek protection in many member countries at once. Each country still examines the mark under its own rules.

  • The single registration issued under the Madrid system, which you extend to the countries you choose. For its first five years it depends on your U.S. filing, so if that falls, the international registration falls with it.

  • The World Intellectual Property Organization, the United Nations agency that runs the Madrid system.

  • If you file in another member country within six months of your first filing, you can claim your first filing date there too.

  • Countries like China, where trademark rights generally go to whoever files first, not whoever used the name first. It's why founders who sell or manufacture abroad should file there early.

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