Common Trademark Terms & Definitions
Trademark: A word, phrase, symbol, design, or a combination of these elements that identifies and distinguishes the source of the goods of one party from those of others. A trademark serves as a form of brand identity, helping consumers recognize products or services associated with a particular business or individual.
Knockout Search: A preliminary trademark search of the USPTO trademark database to determine whether there are existing trademark registrations or applications that may be the same or confusingly similar to the trademark you wish to register.
Office Action: A formal correspondence from the USPTO about issues with your trademark application, which may require clarification or amendment. An Office Action may also consist of a refusal to register your trademark. A response to an Office Action may be filed within 3 months of the issue date.
Section 8 Declaration: A declaration of use that is a required to maintain a trademark registration. This declaration confirms that the trademark is still in use in commerce in connection with the goods or services listed in the registration. The Section 8 Declaration is filed between the 5th and 6th years after a trademark is registered and between the 9th and 10th year after registration, and then every 10 years after that. The Section 8 Declaration is often filed at the same time as the Section 9 renewal.
Section 9 Declaration: A renewal filing required between the 9th and 10th years after registration, and every 10 years thereafter.
Opposition: A legal proceeding where a third party objects to the registration of a trademark, usually during the 30-day opposition period after the mark is published.
Proof of Use: Documentation showing that a trademark is actively being used in commerce required during the registration and renewal process.
In Use: A trademark status indicating that the mark is actively in use in commerce.
Intent to Use (ITU): A status for a trademark application where the applicant has a bona fide to use the mark in commerce but has not yet done so.
USPTO (United States Patent and Trademark Office): The government agency responsible for reviewing and approving trademark and patent applications.
Filing Fee: The fee required by the USPTO to submit a trademark application, varying depending on the type and complexity of the filing.
Clearance Search: A comprehensive search not limited to just the USPTO trademark database but other national and state sources for the purpose of determining if any existing registered and unregistered trademarks might cause conflicts or legal issues with the proposed mark.
Incontestable Status: A status granted to a trademark that has been in continuous use for five years and has met other criteria, making it difficult to challenge.
Descriptive Trademark: A weak trademark that describes a characteristic or quality of the product or service being offered. Descriptive trademarks may be challenging to register.
Specimen: An image or writing that demonstrates that a trademark is actually in use in commerce. Specimens are submitted as part of the registration and renewal processes.
Trademark Class System: A standardized classification system used to categorize goods and services for the purposes of trademark registration. It organizes various products and services into 45 different classes:
Classes 1-34: Cover goods, such as chemicals, textiles, and food items.
Classes 35-45: Cover services, such as advertising, legal services, and entertainment.
Each class represents a distinct type of goods or services, allowing businesses to register their trademarks under the specific categories relevant to their business activities. This helps to avoid conflicts with trademarks in different industries and ensures that similar trademarks can coexist, as long as they are in different classes.
