Trademark Glossary of Terms 2021
- Trademark Clearance
Absolute grounds for refusal of registration are factors within the individual trademark in isolation which hinder registration. (This term is only used in Europe. See also relative grounds.)
Even if a mark is originally descriptive and thus unregisterable, it is possible to change this through use of the mark in the marketplace, initially as a common-law trademark.
The FDA POCA algorithm compares a number of product characteristics in addition to the names of the new drug and existing products. These include route of administration (orifice or other channel through which the drug enters the body), pharmaceutical form (the form in which the drug is), active ingredient, and strength.
Anyone who applies for a registered trademark. The applicant can be an individual (physical person) or a corporation (legal person). Generally, there are no nationality requirements for applicants, but applicants domiciled in a foreign jurisdiction (for the EU and its member states: outside the European Economic Area and the U.S.) must use a local representative. Otherwise, the use of a professional representative is normally not mandatory but nonetheless generally recommended.
The date when the trademark application is filed. The exclusive right conveyed by the trademark registration does not begin until the registration date, but priority attaches to the application date, meaning that others cannot be granted a similar trademark if they file their application between the application date and the registration date. If two competing applications are filed on the same date, in some jurisdictions, they receive equal priority, in others the exact time of filing becomes decisive.
See registration fee.
application language (EUIPO)
When filing for a European Union Trade Mark at the EUIPO, the applicant must specify two languages in the application. The first language, which can be any official EU language, is the language in which the application is filed. The second language, which must be one of the five official languages of the EUIPO (English, French, German, Italian, or Spanish), is the language for the opposition and cancellation proceedings. The two languages must be different, so for an English-speaking applicant it may be a good idea to use some other language as the first language.
A serial number assigned by the registering office as a unique identifier for each incoming application. In some registries this is also used as the registration number, in others they are different.
This is often understood simply as a synonym to trademark, but nowadays a brand is seen as the sum of all of customers’ experiences of the company or product in question. Trademarks are those elements of a brand which can be legally protected.
A proceeding in which a party seeks to cancel the registration of a trademark which has already been registered. See also opposition.
A trademark registered for an organization for the purpose of licensing it to third parties as a sign of certification that their product meets certain criteria, such as the Woolmark. The regulations for the use of the mark must be submitted officially as a part of the registration process. See also collective mark.
See Nice Classification and the old US classification for goods and services, Vienna Classification for the classification of the figurative elements in trademarks.
A trademark registered (or used) by an organization for purpose of licensing it to its members as a sign of membership in that particular organization. The regulations for the use of the mark must be submitted officially as a part of the registration process. See also certification mark.
A trademark which is a combination of a word mark and a figurative mark, for example a text with a particular design (logotype), or the combination of a logotype and and a logo. In a combination mark the text is usually also protected as a word mark, unless a disclaimer applies.
The exclusive right to a trademark can be established not only through registration but also through use. Registration is advisable whenever possible as it eliminates much of the uncertainty inherent in a common-law trademark, but sometimes use without registration is the only option, for example in order to acquire distinctiveness for a mark that is initially descriptive (though in the US, registration on the supplemental register can also be an option). The common-law tort against trademarks (registered or not) is called passing off.
Someone designated as the recipient of official correspondence from the trademark agency, usually (and in many jurisdictions by definition) the same as the representative.
Community Trade Mark, CTM
The former name for European Union Trade Mark (EUTM), a trademark registration system for the European Union, administered by the EUIPO. Introduced in 1996, the European Union Trade Mark is a convenient and much less costly way to obtain trademark registration for all (including future) EU countries with a single application.
If a mark is generic, that is, it describes a particular type of product without regard to its origin, but it is used for a different but nearby product so that there is a likelihood of confusion, the mark is said to be deceptively misdescriptive.
When a trademark becomes generic, it ceases to be able to distinguish one source (trademark owner) from another for the product in question. To prevent this, the owner must be on guard as to the unauthorized use of the trademark. A mark’s degeneration status can also vary from one jurisdiction to another, as is the case for example for Aspirin (generic in the US, registered e.g. in many EU countries). Because degeneration “kills” trademarks, it is often called “genericide” in the US.
A mark is descriptive when it is only a generic description of the products for which it used without identifying a specific origin for them. Descriptiveness can be reduced through active use as an identifying mark for products of a specific origin (acquired distinctiveness), but it can also increase to the point of degeneration and the loss of the exclusive right to the mark.
design search codes
A classification system used by the USPTO for the categorization of figurative and combination marks. See also Vienna classification.
When a trademark loses its distinctiveness, it becomes diluted. Dilution can take place through blurring (degeneration, “genericide”) or tarnishment.
Attached to a trademark registration, a disclaimer limits the protection afforded by the trademark so that no exclusive right is claimed to certain, usually descriptive words in the mark, so only the mark as a whole as well as individual words not included in the disclaimer (if any) are protected.
A trademark’s ability to distinguish the products of one particular origin (the owner of the trademark) from those by others. A trademark must be distinctive enough to avoid likelihood of confusion to make it registerable, but distinctiveness is not necessarily constant. It can be acquired through use or lost through degeneration or “genericide”.
European Union Intellectual Property Office. The EU trademark agency, formerly known as the Office for Harmonization on the Internal Market (Trade Marks and Designs) or OHIM.
European Union Trade Mark, EUTM
A trademark registration system for the European Union, administered by the EUIPO. Introduced in 1996, the European Union Trade Mark (formerly Community Trade Mark, CTM) is a convenient and much less costly way to obtain trademark registration for all (including future) EU countries with a single application.
A trademark confers its owner an intellectual property right, which is an exclusive right. That is, the owner of a trademark has, with certain limitations, the right to exclude others from commercially using a similar mark for similar products.
When an individual trademarked product is sold for the first time with the consent of the owner of the trademark, the exclusive rights to that individual item (or instance of a provided service) are said to be exhausted. This means that the trademark no longer affects the onward sale of the goods in question. Also known as the first sale doctrine. The territorial scope of exhaustion depends on the jurisdiction. In the EU, exhaustion is regional, meaning that only products initially sold within the European Economic Area with the trademark owner’s consent are included, whereas the import of trademarked products legitimately sold in foreign markets requires authorization from the rights holder.
A form of priority granted by virtue of displaying the trademarked products at an international exhibition. It is worth noting that this basically only covers International Expos (world fairs) arranged under the Paris Convention, and nowadays most claims for exhibition priority are just based on a misunderstanding. See the Bureau International des Expositions website for more information.
See well-known mark
A trademark in the form of a graphic image without words. In some jurisdictions, this category comprises all trademarks other than word marks. Figurative marks are categorized with design search codes (USPTO) or the Vienna classification.
A word or an expression which just describes the kind of product, or which is widely used in commerce even without regard to any specific product. A generic term cannot be used to distinguish a specific source for the products in question, and therefore it cannot be registered. For example, APPLE is a generic term for apples, but not for electronics or software. On the other hand, APPLE is deceptively misdescriptive for pears or oranges. On the other hand, something like 7 DAYS A WEEK is generic for any product. A mark can however become less generic thanks to acquired distinctiveness but also more generic through degeneration.
See degeneration. Named so because degeneration “kills” trademarks.
In the Nice classification, classes 1 to 34 are for goods, which means products in the form of (more or less, such as software) tangible objects. See also services.
Goods and services. See also products.
A trademark registered for an individual owner (natural person or a corporation) or several individuals jointly, for its/their own use. Most trademarks are individual marks. See also certification mark, collective mark.
intent to use
A declaration which must be included an application filed at the USPTO, when the trademark is not yet in actual use in commerce at the time of filing. In this situation, only a notice of allowance can be issued instead of an actual trademark registration, in which case a statement of use must subsequently be filed within 6 months.
A unit at WIPO which administers the Madrid system for international registration of trademarks.
Legal Instruments Examiner – a position classification for USPTO employees charged with docketing cases and other administrative processing that support the workflow and examination of applications.
likelihood of confusion
Likelihood of confusion is the key relationship between two trademarks which determines whether they both can be used in commerce at the same time without infringing upon each other. The likelihood of confusion is also what determines whether a new trademark can be registered or not (that is, whether an opposition will be successful or not). The main factors in determining the likelihood of confusion are the similarity of the marks themselves and the similarity of the products for which the mark(s) will be used (or registered), but a number of other factors can also be a part of theequation, such as price, channels of sale, target customer groups, and actual confusion. The concept of likelihood of confusion is central in trademark law, which is why the entire TrademarkNow system is built around a computational model representing this key factor. See also relative grounds.
The Madrid system for the international registration of marks is a way to register a trademark in multiple jurisdictions. The trademark rights acquired through the Madrid system are still national rights and as such subject to national examination and national fees for each individual country, which must be specified in the application. The main advantage of the Madrid system is that the applicant only has to deal with a single registering office (the International Bureau of the WIPO) for all the foreign countries and no local representative is required for each country. See also the USPTO Madrid FAQs.
The visible graphic representation of a trademark. In the interest of clarity, the Corsearch website always uses mark in this sense and trademark only to denote the scope of the trademark right as a whole, namely consisting of the mark and a list of goods and services.
An international classification system for the goods and services of a registered trademark, which is currently in use in nearly all jurisdictions throughout the world (Canada is one notable exception). The classification consists of 45 main classes, classes 1 to 34 for goods and classes 35 to 45 for services. In the TrademarkNow system, the classes are represented by class icons in addition to the class numbers to make the classification scheme more user-friendly.
Notice of Allowance
When a trademark application at the USPTO is based on an intent to use, provisionally a Notice of Allowance (NoA) is issued instead of a registration proper. The applicant must file a statement of use documenting actual use of the mark in commerce to get it registered.
Office for Harmonization on the Internal Market (Trade Marks and Designs). The former name of EUIPO, the EU trademark agency.
Depending on the jurisdiction, the uniqueness of a trademark (see likelihood of confusion, relative grounds) is examined by the registering office to a limited degree or even not at all. Instead, the owner of the trademark which the application potentially infringes upon must be active and file an opposition (a form of administrative proceeding, usually with the possibility of administrative and/or judicial appeal) with the registering office. The opposition must be filed within a certain time window, typically 30 days, between the publication and registration dates.
See common-law trademark.
Phonetic Orthographic Computer Analysis, a similarity metric used by the FDA for evaluating proposed proprietary names for new pharmaceutical products. In addition to comparing the name candidate for the new drug against names of existing products, the algorithm also compares additional factors, that is, a number of other product attributes, between the new product and existing ones.
The main trademark register at the USPTO. Only trademarks included in the primary register are reliably protected against unauthorized use by others, whereas registration in the supplemental register only protects against registration by others. Most other jurisdictions only have the equivalent of the primary register as their only trademark register.
In trademark law the exclusive right (the trademark) is awarded to whoever is first. This is called priority. You can get priority by being the first one to to file an application for registration of a mark or by being the first one to use the mark in the marketplace, but “being first” can take many other forms as well: see exhibition priority.
proceeding language (EUIPO)
The language for legal proceedings against the trademark, see application language.
products (goods and services)
A trademark is always registered for some particular product(s) (goods and/or services. The trademark is only protected for these specific products, with the exception of famous or well-known marks. As a part of the registration, the products are categorized according to the Nice Classification. The permissible range of products for an individual trademark varies depending on the jurisdiction. In the US, trademarks are only registered for the products for which the mark is actually being used, whereas in the EU, marks can even be registered for all products in all 45 classes, though the unused parts of the product list can be subject to cancellation due to non-use.
The USPTO assigns a pseudo mark representing the standard spelling for marks which contain an alternative or intentionally corrupted spelling of an English word, for example FOREVER for 4EVER.
Once the trademark application has been officially examined and found suitable for registration as far as the registering office is concerned, the application is published in the office’s official journal/gazette. Publication also starts the time window for opposition, after which (if unopposed) the registration itself is published as well.
A trademark which has been registered at one or more trademark offices. Basically anything that can be represented graphically and is capable of distinguishing the commercial source of a product can be registered. Although most trademarks are either word marks, figurative marks and combination marks, also for example sounds, colors and smells have been registered.
The date from which the trademark right begins. The trademark is published in an official journal on or near the registration date.
A fee must be paid when applying for a registered trademark. The fee is non-refundable even if the application is rejected. A similar (or higher) fee must also be paid upon renewal. The fees depend on the number of product classes included in the application. At the USPTO the additional fee is the same for each individual class, whereas at the EUIPO the higher base fee now only covers the first class and the fee for each additional class is lower. More information on fees at USPTO and EUIPO.
Some trademark agencies, such as the USPTO, assign a new running number as a unique identifier for registered trademarks, whereas others, such as EUIPO, only use the application number for identifying registered trademarks as well.
The European term for likelihood of confusion. Relative grounds for refusal of registration entail all the factors relative to other trademarks which may hinder registration. See also absolute grounds.
A trademark registration is not automatically perpetual but rather granted for a limited term, nowadays almost universally 10 years at a time. Unlike other intellectual property rights, the duration of a trademark registration has no absolute upper limit, but rather it can be renewed any number of times as long as the trademark continues to be in use and the registration (renewal) fees are paid.
Someone appointed by the owner of the trademark to represent the owner before the trademark agency in all matters related to the trademark, typically a trademark lawyer (or law firm) or an employee. Normally a representative must be domiciled in the same jurisdiction as the registering office (for the EU: any EEA country is enough). This requirement can be circumvented by filing an international application using the Madrid system, in which case a single representative is sufficient for all jurisdictions.
See supplemental register.
A uniquely identifying number assigned to a trademark application when it is filed. Also termed application number, see also registration number.
In the Nice classification, classes 35 to 45 are for services, which means products in the form of someone doing something for some commercial purpose. Actions which are only done by a company as an essential part of the process of selling its own products do not qualify as services for the purpose of trademark registration. That is, if you just make and sell widgets, you cannot get a valid registration for your mark for the services design (class 42), manufacturing (40), marketing (35), and transportation (39), if you do not offer these services by themselves as well. See also goods.
A trademark which designates services rather than tangible goods.
statement of use
A statement documenting the actual use of a trademark in the marketplace.
A secondary trademark register at the USPTO, for marks which have some distinctiveness but not enough to be eligible for registration on the principal register. Registration on the supplemental register by itself grants no exclusive right to stop others from using the mark in question, but it does stop others from registering it.
The physical appearance of a product or its packaging.
Basically anything that can be represented graphically and is capable of distinguishing the commercial origins of a product can be used as a trademark. A trademark gives its owner an exclusive right to use the mark for some specific products. The right to a trademark can be acquired through registration or use. Also spelled trade mark and trade-mark.
Alternative spelling for trademark officially prefer(r)ed in the EU, UK, Ireland, Australia, and New Zealand.
Alternative spelling for trademark officially prefer(r)ed in Canada. Also used officially in the US until the 1970s.
A government agency responsible for maintaining the trademark registry for the jurisdiction in question. It is worth noting that the same territory may be under the jurisdiction of several trademark offices. This is the case for example with federal and state trademarks in the US, and European Union Trade Marks and Member States’ national marks in the EU. See USPTO, EUIPO, and a complete list at WIPO.
® registered trademark, ™ (unregistered) trademark, ℠ (unregistered) service mark.
The name(s) a business uses to identify itself. A corporation must be named when it is registered. A registered trade name can be used to claim priority in an opposition proceeding.
The classification system for goods and services used by the USPTO as a primary classification until September 1, 1973. Now superseded by the Nice Classification, but the original classification codes are still present in the USPTO data, and they are automatically generated for all new applications as well.
A trademark must be in active use to remain in force. In the US, use is examined already at the application stage and the applicant must file either an intent to use or a statement of use document during the application process depending on whether the mark is already in use or not. In other jurisdictions, such as the EU, use can be examined first much later on, typically starting 5 years after the registration date, at which point the trademark registration can be canceled either fully or only for the products for which it is not in use, through a legal process.
The United States Patent and Trademark Office. The federal-level trademark office in the US, for registering trademarks which are used in interstate commerce.
An international classification scheme for the graphic elements in figurative and combination marks. Maintained by the World Intellectual Property Organization. The USPTO does not use the Vienna Classification, but instead its own system of design search codes.
A trademark which has a high reputation and is recognized by a significant part of the public. A well-known mark enjoys greater protection against dilution through a lower threshold for likelihood of confusion. This means that the trademark is protected also beyond the products for which it is registered and actually used, and for identical products the similarity required for infringement can be lower.
A trademark in the form of a words regardless of their graphic design.
Further information: USPTO glossary and FAQ, EUIPO FAQ.