Call Now For A Consultation (786) 882-7569
Mon - Fri 09:00 am - 6:00 pm

Trademark Glossary – Ultimate Guide

– A


A request to a higher court to review and change the decision of a lower court. In trademarks, it often refers to appealing a decision made by the Trademark Trial and Appeal Board.


The individual or legal entity that files a trademark application, seeking to obtain trademark registration.

Arbitrary Trademark

A trademark consisting of words or images that have no logical relationship to the product or service they represent, making them inherently distinctive.


The transfer of ownership of a trademark from one party to another. Assignments must be recorded with the USPTO to be effective.


– C

Cancellation Proceeding

A legal challenge before the Trademark Trial and Appeal Board (TTAB) to cancel an existing trademark registration, often due to reasons like non-use or likelihood of confusion.

Cease and Desist

A letter or communication demanding that an individual or organization stop an alleged illegal activity, often related to trademark infringement.

Certification Mark

A specific type of trademark used to indicate that certain products or services meet a set of standards and have been certified by the mark’s owner.

Clearance Search

The process of searching trademark databases and other sources to determine if a proposed trademark is available for use and registration, without infringing upon existing trademarks.

Common Law Rights

Trademark rights that are established through actual use of the mark in commerce, even if the mark is not registered.

Conflicting Trademark

A trademark that is similar to another mark in a way that could cause confusion, mistake, or deception among consumers. Conflicts can lead to refusal of registration or legal disputes.

Continued Use

The ongoing use of a trademark in commerce. For maintaining a registration, the trademark owner must show continued use of the mark in connection with the goods or services listed in the registration.

Country of Origin

Refers to the country where goods associated with a trademark are manufactured or where services are provided. It can influence the assessment of trademark rights and registration.


– D

Dead Trademark

A trademark that has been abandoned, canceled, or expired, and is no longer in use or registered.


A sworn statement, often required in trademark filings, affirming the truth of certain facts, such as the use of a trademark in commerce.

Default Judgment

A binding judgment in favor of one party based on the failure of the other party to take action (e.g., failure to respond to a legal action in trademark disputes).


The party against whom a legal action is brought. In trademark disputes, the defendant is the party accused of infringement or other violation.

Descriptive Trademark

A mark that directly describes the characteristics or qualities of a product or service. Descriptive marks are generally weak and hard to protect unless they acquire distinctiveness through extensive use.


A legal concept where the use of a mark lessens the distinctive quality of a famous trademark, even without causing confusion or competition.


A statement made by a trademark applicant or registrant to indicate that they do not claim exclusive rights to an unregistrable portion of the mark.


A key quality of a strong trademark; it means the mark is capable of identifying the source of a product or service and distinguishing it from others in the market.

Domicile Address

The legal address of the trademark applicant or registrant. It’s used for official correspondence and legal purposes.


A visual representation of a trademark, submitted as part of the application. It shows how the trademark appears when used on goods or services.


– E


The act of a trademark owner protecting their rights against unauthorized use of their trademark, which can include legal actions and cease and desist letters.


Electronic System for Trademark Trials and Appeals. It’s an online filing system used for submissions to the Trademark Trial and Appeal Board (TTAB).

Ex Parte Proceeding

A legal proceeding involving only one party. In trademark matters, it can refer to appeals or applications where the other party (e.g., an opposer) is not actively involved.

Examiner’s Amendment

A change made by a USPTO examining attorney to a trademark application. These amendments are often minor and made with the applicant’s consent to comply with legal requirements.

Examining Attorney

A lawyer employed by the USPTO who reviews trademark applications to determine if they meet federal registration requirements.

Excusable Nonuse

A situation where a trademark registrant is not using their mark due to special circumstances, which are considered legitimate reasons for nonuse under trademark law.

Expired Registration

A trademark registration that has ended because it was not renewed or because the owner failed to file required maintenance documents.

Expungement Proceeding

A legal process to remove a trademark from the register, often initiated because the mark has never been used in commerce as claimed.


– F

Fanciful Trademark

A trademark that consists of a made-up or coined term with no dictionary or conventional meaning, providing strong trademark protection due to its inherent distinctiveness.

Filing Basis

The legal basis for filing a trademark application, indicating whether the mark is already in use in commerce or intended to be used in the future.

Filing Date

The date on which the USPTO receives a trademark application. It’s important for establishing priority over other applications.

Filing Fee

The fee required to file a trademark application or maintain a registration with the USPTO. Fees vary depending on the type of application or request.

Final Office Action

A letter from the USPTO’s examining attorney indicating that certain legal issues with a trademark application remain unresolved after the applicant’s response to an initial office action.

First Action Pendency

The time period between the filing date of a trademark application and the date of the first office action issued by the USPTO.


– G

Generic Term

A common name for a product or service, not capable of functioning as a trademark because it lacks distinctiveness.

Goods and Services

The specific products and services with which a trademark is used. These are listed in the trademark application and determine the scope of protection.


– I

Incontestable Trademark

A status a registered trademark can achieve after certain requirements are met, providing stronger protection and making it harder for others to challenge the mark’s validity.


The unauthorized use of a trademark that is identical or confusingly similar to a registered trademark on related goods or services, potentially causing confusion among consumers.

Intellectual Property

A category of property that includes intangible creations of the human intellect, such as trademarks, which protect brand names and logos.

Inter Partes Proceeding

A legal proceeding before the Trademark Trial and Appeal Board (TTAB) involving opposing parties, such as oppositions to trademark registration or cancellation proceedings.

International Class

Refers to a classification system for goods and services under the Nice Agreement, used to categorize trademarks based on the type of goods or services they are associated with.

Interstate Commerce

Commercial activity that crosses state lines. In the U.S., a trademark must be used in interstate commerce to qualify for federal trademark registration.


– L

Lanham Act

The primary federal statute governing trademarks in the U.S., which provides for the registration of trademarks and protects trademark owners’ rights.

Legal Entity

An organization or business that has legal rights and responsibilities, including the ability to enter into contracts and own property, such as trademarks.


An individual or company that is granted permission to use a trademark under specific conditions by the trademark owner (licensor).


The owner of a trademark who grants permission to another (the licensee) to use the mark under specific conditions.

Likelihood of Confusion

A standard used in trademark law to assess whether the use of a mark is likely to cause confusion among consumers regarding the source of the goods or services.

Live Trademark

A trademark that is active and in use, as indicated by its status in the USPTO database. A live trademark may be pending registration or already registered.


– M

Madrid Protocol

An international treaty that allows trademark owners to seek registration in multiple countries simultaneously by filing one application with their own country’s trademark office.

Material Alteration

A change to a trademark that is significant enough to require a new application because it alters the character of the mark.

Merely Descriptive

A term used in trademark law to describe a mark that directly describes an attribute or characteristic of the product or service, making it weak and difficult to protect unless secondary meaning is established.


The process of regularly checking trademark databases, marketplaces, and other sources to ensure that a trademark is not being used without authorization or infringing on the rights of others.


– N

Non-final Office Action

An initial letter from the USPTO’s examining attorney outlining issues with a trademark application that must be addressed before the application can proceed.

Notice of Abandonment

An official notice from the USPTO stating that a trademark application has been abandoned due to the applicant’s failure to respond or take required action within a specified time frame.

Notice of Allowance

A document issued by the USPTO indicating that a trademark application has passed the opposition period and can be registered once the applicant shows evidence of use in commerce.

Notice of Opposition

A formal objection filed by a third party against the registration of a trademark, usually based on the belief that the registration would harm their own trademark rights.

Notice of Publication

A notification indicating that a trademark application will be published in the USPTO’s Official Gazette, initiating a period during which third parties can file an opposition to the application.


– O

Office Action

A communication from the USPTO’s examining attorney to the applicant about issues with a trademark application, which must be addressed for the application to proceed.

Opposition Proceeding

A challenge filed by a third party against a trademark application, arguing that the registration of the mark would harm them. This proceeding takes place before the Trademark Trial and Appeal Board (TTAB).


– P

Paris Convention

An international treaty providing certain rights to trademark owners, including the priority right, which allows an applicant from one member country to file in another member country within a certain period.

Petition to Revive an Application

A request to the USPTO to reinstate a trademark application that was declared dead or abandoned due to the applicant’s failure to take required action.


The person or entity who initiates a lawsuit or legal proceeding. In the context of trademarks, the plaintiff is the one claiming infringement or other trademark violations.

Principal Register

The primary register of trademarks maintained by the USPTO. Registration on the Principal Register provides significant legal benefits, including a presumption of the mark’s validity.

Priority Action

A type of office action from the USPTO that requires a response within a shorter timeframe, often used in cases where the application has been expedited.

Pseudo Mark

An entry created by the USPTO to reflect the phonetic equivalent of a non-standard character or spelling in a trademark, assisting in searches for similar marks.

Publication for Opposition

The process of publishing a trademark application in the USPTO’s Official Gazette, allowing third parties to see the application and potentially file an opposition to it.


– R

Reexamination Proceeding

A process in which the USPTO reevaluates the registrability of a trademark after registration, often initiated when new information or evidence challenges the mark’s validity.

Registration Basis

The legal foundation upon which a trademark application is filed, such as use in commerce (Section 1(a)) or intent to use (Section 1(b)) in the United States.

Registration Certificate

The official document issued by the USPTO upon the registration of a trademark, certifying the registration and detailing the rights conferred.

Registration Number

A unique number assigned to a trademark upon its registration, used to identify and track the trademark in the USPTO’s records.


The process of maintaining the validity of a trademark registration by filing required documents and fees with the USPTO at regular intervals, typically every ten years.


– S

Section 1(a) Filing Basis Actual Use in Commerce

A basis for filing a trademark application indicating that the applicant is already using the mark in commerce in connection with the goods or services listed.

Section 1(b) Filing Basis Intent to Use in Commerce

A filing basis indicating that the applicant intends to use the trademark in commerce in the future. This basis is used when the mark is not yet in use at the time of application.

Section 44(d) Filing Basis: Foreign Application

A basis for U.S. trademark registration based on a trademark application filed in a foreign country.

Section 44(e) Filing Basis: Foreign Registration

A basis for U.S. trademark registration based on a trademark registration already obtained in a foreign country.

Section 8: Declaration of Use or Excusable Non-Use

A statement filed with the USPTO, typically between the 5th and 6th year after registration, declaring the mark is in use or explaining why it has not been used.

Section 9: Renewal Application

An application filed to renew a trademark registration, usually required every ten years to maintain the registration’s validity.

Section 15: Declaration of Incontestability

A declaration that can be filed after a trademark has been in continuous use for five years post-registration, making the mark incontestable and providing stronger protection against challenges.

Serial Number

A unique number assigned to a trademark application when it is filed with the USPTO. This number is used to track the application throughout the examination process.

Service Mark

Similar to a trademark, but specifically used to identify and distinguish the services (rather than goods) of one provider from those of others.


The individual who signs official documents related to a trademark application or registration, often a representative or attorney for the applicant.

Special Form Drawing

A drawing that shows the trademark exactly as it is used, including any stylization, designs, or logos, required for trademarks that are not in standard character format.


A real-world example of how the trademark is used in commerce, such as on product packaging or advertising, submitted to the USPTO to show the mark as used in connection with the goods or services listed in the application.

Standard Character Drawing

A drawing that shows a trademark in standard characters without claim to any particular font style, size, or color, allowing for flexible use of the mark.

Statement of Use

A document filed by an applicant to show the actual use of a trademark in commerce, required for applications filed on an “intent-to-use” basis once the mark is being used.

Substantive Refusal

An office action in which the USPTO’s examining attorney refuses to register a trademark based on substantive legal issues, such as likelihood of confusion or descriptiveness.

Suggestive Trademark

A mark that suggests a quality or characteristic of the goods or services, requiring imagination or thought to perceive the nature of the goods or services, offering stronger protection than merely descriptive marks.

Supplemental Register

A secondary register for trademarks that do not qualify for the Principal Register, often because they are descriptive, geographic, or a surname. Registration on the Supplemental Register provides some benefits but not the full protection of the Principal Register.


A temporary halt in the processing of a trademark application, often due to an external factor such as a pending legal proceeding or the need for resolution of a related trademark application.


– T

Technical Deficiency

A minor error or omission in a trademark application that needs correction for the application to proceed, such as incorrect applicant information or improper specimen.


Trademark Electronic Search System. An online database provided by the USPTO for searching existing trademarks and trademark applications to assess potential conflicts.


Trademark Manual of Examining Procedure. A detailed guide used by USPTO examining attorneys outlining the practices and procedures for examining trademark applications.

Trade Dress

The overall look or appearance of a product or its packaging that identifies the source of the product and distinguishes it from those of others. Trade dress can include features such as size, shape, color, texture, graphics, and even certain sales techniques.

Trademark Licensing

A legal agreement where the trademark owner (licensor) grants permission to another party (licensee) to use the trademark under specified conditions.

Trademark Modernization Act of 2020

A U.S. law that updated several aspects of trademark law, including procedures for challenging fraudulent or unused trademarks and expediting the process for handling trademark applications.

Trademark Portfolio

A collection of all the trademarks owned by an individual or company, including registered trademarks, pending applications, and any international registrations.


Trademark Trial and Appeal Board. A body within the USPTO that hears and decides various kinds of trademark-related cases, including oppositions, cancellations, and appeals.


– U


Uniform Domain-Name Dispute-Resolution Policy. A process established by ICANN for resolving disputes over internet domain names that are allegedly infringing on trademark rights.


United States Patent and Trademark Office. The federal agency responsible for granting U.S. patents and registering trademarks.

Schedule a Consultation

At Portalatin Law Firm, our commitment to excellence extends beyond legal representation; it encompasses our core value of giving back to the community. We are proud to announce that 100% of our consultation fees now directly support Safe Haven for Newborns. Your decision to seek legal guidance with us not only ensures expert advice tailored to your needs but also contributes to a cause dedicated to supporting vulnerable individuals. Thank you for joining us in making a meaningful difference in the lives of those in need.