Abandonment

A trademark application that has been declared abandoned is “dead” and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office Action letter from an applicant within 6 months from the date the Office action letter was mailed.

Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance).

Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.

Acceptable Identification of Goods and Services Manual

This manual lists numerous examples of identifications of goods and services that are acceptable to the USPTO for inclusion in trademark applications and registrations. The Acceptable ID Manual is not exhaustive and is meant to be a guide to aid applicants and their attorneys in formulating acceptable identifications of goods and/or services.

Yaymark provides a free Goods/Services Search tool that includes all entries from the Acceptable ID Manual. Users may formulate a list of potential identifications of goods/services grouped by class. This tool will help you figure out how many classes and which goods/services you may want to include in a trademark application.

Advertising and business

Class 35 for services under the International Classification of Goods and Services.

This class includes advertising; business management; business administration; office functions.

Explanatory Note

Class 35 includes mainly services rendered by persons or organizations principally with the object of: (1) help in the working or management of a commercial undertaking, or (2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.

This Class includes, in particular:

  • the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes;
  • services consisting of the registration, transcription, composition, compilation or systematization of written communications and registrations, and also the compilation of mathematical or statistical data;
  • services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This Class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio.

This Class does not include, in particular:

  • services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise.

allegation of use

A sworn statement attesting to use of the mark in commerce. For each class of goods/services included in the application the allegation of use must include a specimen showing use of the mark in commerce and the required fee. The allegation of use is signed by the applicant or a person authorized to sign on behalf of the applicant.

If filed before the examining attorney approves the mark for publication, the allegation of use is called an Amendment to Allege Use. If filed after issuance of the Notice of Allowance, the allegation of use is called a Statement of Use. The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when filed. The applicant may not file either an Amendment to Allege Use or a Statement of Use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance.

amendment to allege use

AAU — a sworn statement attesting to use of the mark in commerce. The Amendment to Allege Use is signed by the applicant or a person authorized to sign on behalf of the applicant.

An AAU must be submitted with:

  1. The required filing fee for each class of goods/services; and
  2. A specimen showing use of the mark in commerce for each class of goods/services.

An AAU must be filed before the date the examining attorney approves the mark for publication in the Official Gazette. An AAU filed after the mark is approved for publication but before a notice of allowance has been issued (during the “blackout period”) is untimely and cannot be accepted. The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed.

appeal

An applicant who wants to contest a final refusal from an examining attorney may file an appeal to the Trademark Trial and Appeal Board. An appeal is taken by filing a Notice of Appeal and paying the appeal fee within six months of the mailing date of the action from which the appeal is taken.

application

The document a person or business uses to request a federal registration from the USPTO for their mark.

To receive a filing date, an application must include:

  1. the applicant’s name,
  2. a name and address for correspondence,
  3. a clear drawing of the mark sought to be registered,
  4. a list of the goods or services, and
  5. the application filing fee.

application filing date

The date the USPTO receives an application in English that includes all the required components.

The application filing date also serves as the date of constructive use of the mark, provided the mark registers.  This constructive use date gives a registration owner nationwide priority over others who may use the same or a confusingly similar mark for similar or related goods/services, except parties who:

  1. used their mark before the applicant’s filing date,
  2. filed with the USPTO before the applicant, or
  3. are entitled to an earlier application filing date based on the filing of a foreign application.

The required components that an application must have to receive a filing date are:

  1. The applicant’s name
  2. A name and address for correspondence
  3. A clear drawing of the mark to be registered
  4. A list of the goods or services
  5. An application filing fee for at least one class of goods or services.

Other requirements for filing an application are addressed in examination if missing or incomplete.

For information on a complete application for a trademark/service mark, see complete trademark/service mark application.

arbitrary marks

comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).

assignee

the entity that is the recipient of a transfer of a trademark application or trademark registration from its owner of record (assignor)

assignment

a transfer of ownership of a trademark application or trademark registration from one entity to another. The USPTO recommends recording assignments with the USPTO Assignment Services Division to maintain clear title to pending trademark applications and registrations. For information on how to record an assignment, see Recordation Form Cover Sheet. — see Assign a Trademark Application or Registration — see Search Trademark Assignments online

assignor

The owner of record of a trademark application or trademark registration who is transferring (assigning) ownership to another entity (assignee)

authorized attorney/practitioner

– An individual who is in good standing of the bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories; or
– Canadian agents/attorneys who represent applicants located in Canada and are registered with the USPTO and in good standing as patent agents or have been granted reciprocal recognition by the USPTO.

blackout period

The period between the date the examining attorney approves the mark for publication and the date of issuance of the Notice of Allowance. The applicant may not file an Allegation of Use during this period.

Building construction and repair

Class 37 for services under the International Classification of Goods and Services.

This class includes building construction; repair; installation services.

Explanatory Note

Class 37 includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties.

This Class includes, in particular:

  • services relating to the construction of buildings, roads, bridges, dams or transmission lines and services of undertakings specializing in the field of construction such as those of painters, plumbers, heating installers or roofers;
  • services auxiliary to construction services like inspections of construction plans;
  • services of shipbuilding;
  • services consisting of hiring of tools or building materials;
  • repair services, i.e., services which undertake to put any object into good condition after wear, damage, deterioration or partial destruction (restoration of an existing building or another object that has become imperfect and is to be restored to its original condition);
  • various repair services such as those in the fields of electricity, furniture, instruments, tools, etc.;
  • services of maintenance for preserving an object in its original condition without changing any of its properties (for the difference between this Class and Class 40 see the Explanatory Note of Class 40).

This Class does not include, in particular:

  • services consisting of storage of goods such as clothes or vehicles (Cl. 39);
  • services connected with dyeing of cloth or clothes (Cl. 40).

canceled

trademark registration is no longer active. It may be due to the registrant’s failure to file the required continued use affidavit under Section 8 of theTrademark Act, to a cancellation proceeding at the Trademark Trial and Appeal Board or to the outcome of a civil court action.

cancellation proceeding

a proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an existing registration of a mark. The proceeding may only be filed after issuance of a registration. A petition for cancellation may be filed by any person who believes that he or she is or will be damaged by the registration of the mark.

certification mark

Any word, name, symbol, device, or any combination that is used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

CFR

Code of Federal Regulations — the codification of the permanent rules and regulations of the USPTO. Title 37 of the CFR includes the rules and regulations related to trademarks.

change of name

Sometimes, owners of trademark applications and registrations change their names, even though the actual ownership of the application or registration has not been transferred. When this occurs, trademark owners should record the name change with the USPTO Assignment Branch to maintain a clear record of ownership. Name changes are recorded in the same manner as assignments. For information on how to record an assignment, — see Recordation Form Cover Sheet.

Chemicals

Class 1 for goods under the International Classification of Goods and Services.

This class includes chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.

Explanatory Note

Class 1 includes mainly chemical products for use in industry, science and agriculture, including those which go to the making of products belonging to other classes.

This Class includes, in particular:

  • sensitized paper;
  • tyre repairing compositions;
  • salt for preserving, other than for foodstuffs;
  • certain additives for use in the food industry, for example, pectin, lecithin, enzymes and chemical preservatives;
  • certain ingredients for use in the manufacture of cosmetics and pharmaceuticals, for example, vitamins, preservatives and antioxidants;
  • certain filtering materials, for example, mineral substances, vegetable substances and ceramic materials in particulate form.

This Class does not include, in particular:

  • raw natural resins (Cl. 2), semi-processed resins (Cl. 17);
  • chemical preparations for medical or veterinary purposes (Cl. 5);
  • fungicides, herbicides and preparations for destroying vermin (Cl. 5);
  • adhesives for stationery or household purposes (Cl. 16);
  • salt for preserving foodstuffs (Cl. 30);
  • straw mulch (Cl. 31).

classification of goods and services

Goods and services are classified by an international system according to an international treaty (known as the Nice Agreement) to which the United States is a signatory. All goods and services included in trademark applications are classified by the USPTO according to this system.

There are 45 classes comprising 34 classes of goods and 11 classes of services. The classes are:

  1. Chemicals
  2. Paints
  3. Cosmetics and cleaning preparations
  4. Lubricants and fuels
  5. Pharmaceuticals
  6. Metal goods
  7. Machinery
  8. Hand tools
  9. Electrical and scientific apparatus
  10. Medical apparatus
  11. Environmental control apparatus
  12. Vehicles
  13. Firearms
  14. Jewelry
  15. Musical instruments
  16. Paper goods and printed matter
  17. Rubber goods
  18. Leather goods
  19. Non-metallic building materials
  20. Furniture and articles not otherwise classified
  21. Housewares and glass
  22. Cordage and fibers
  23. Yarns and threads
  24. Fabrics
  25. Clothing
  26. Fancy goods
  27. Floor coverings
  28. Toys and sporting goods
  29. Meats and processed foods
  30. Staple foods
  31. Natural agricultural products
  32. Light beverages
  33. Wines and spirits
  34. Smokers’ articles
  35. Advertising and business
  36. Insurance and financial
  37. Building construction and repair
  38. Telecommunications
  39. Transportation and storage
  40. Treatment of materials
  41. Education and entertainment
  42. Computer and scientific
  43. Hotels and restaurants
  44. Medical, beauty and agricultural
  45. Personal and legal

collective mark

A trademark or service mark used, or intended to be used, in commerce by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.

common law rights

Property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily-demonstrated evidence of ownership of a mark.

Computer and scientific

Class 42 for services under the International Classification of Goods and Services.

This class includes scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Explanatory Note

Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.

This Class includes, in particular:

  • the services of engineers and scientists who undertake evaluations, estimates, research and reports in the scientific and technological fields (including technological consultancy);
  • computer and technology services for securing computer data and personal and financial information and for the detection of unauthorized access to data and information;
  • scientific research services for medical purposes.

This Class does not include, in particular:

  • business research and evaluations (Cl. 35);
  • word processing and computer file management services (Cl. 35);
  • financial and fiscal evaluations (Cl. 36);
  • mining and oil extraction (Cl. 37);
  • computer (hardware) installation and repair services (Cl. 37);
  • services provided by the members of professions such as medical doctors, veterinary surgeons, psychoanalysts (Cl. 44);
  • medical treatment services (Cl. 44);
  • garden design (Cl. 44);
  • legal services (Cl. 45).

contracting party

A country or intergovernmental organization that is a member of the Madrid Protocol.

copyrights

protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last for the life of the author plus 70 years.

Cordage and fibers

Class 22 for goods under the International Classification of Goods and Services.

This class includes ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.

Explanatory Note

Class 22 includes mainly canvas and other materials for making sails, rope, padding, cushioning and stuffing materials and raw fibrous textile materials.

Cosmetics and cleaning preparations

Class 3 for goods under the International Classification of Goods and Services.

This class includes Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.

Explanatory Note

Class 3 includes mainly non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments.

This Class includes, in particular:

  • sanitary preparations being toiletries;
  • tissues impregnated with cosmetic lotions;
  • deodorants for human beings or for animals;
  • room fragrancing preparations;
  • nail art stickers;
  • polishing wax;
  • sandpaper.

This Class does not include, in particular:

  • ingredients for use in the manufacture of cosmetics, for example, vitamins, preservatives and antioxidants (Cl. 1);
  • degreasing preparations for use in manufacturing processes (Cl. 1);
  • chemical chimney cleaners (Cl. 1);
  • deodorants, other than for human beings or for animals (Cl. 5);
  • medicated shampoos, soaps, lotions and dentifrices (Cl. 5);
  • emery boards, emery files, sharpening stones and grindstones (hand tools) (Cl. 8);
  • cosmetic and cleaning instruments, for example, make-up brushes (Cl. 21), cloths, pads and rags for cleaning (Cl. 21).

current filing basis

In applications under §§1 and 44 of the Trademark Act, the applicant may claim more than one basis, and may add or substitute a basis after filing the application. The “current filing basis” means the basis, as amended (changed after the initial or original filing). If the basis has not been amended, the current filing basis is the same as the original filing basis. — see filing basis

dead

A dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against other, later trademark applications. It does not necessarily mean that there are not other marks that the trademark examining attorney would cite.

It is possible to revive an abandoned application (for example, if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant later proved that a response was sent and the USPTO simply failed to match it with the file in a timely manner, then the case could be revived).

Also, regardless of the status of an application within the USPTO, the owner may still claim common law rights, i.e, the mark may still be in use in commerce.

deceptively misdescriptive

A mark is considered deceptively misdescriptive if it falsely leads consumers to believe that the goods or services have a particular characteristic or quality, or if the mark is geographically deceptive. For example, if a trademark featured the recycling symbol in a way that would falsely lead consumers to perceive that the goods to which the mark is applied are recyclable or are made of recycled materials, that trademark would be deceptively misdescriptive.

Deceptively misdescriptive marks are barred from registration on both the Principal Register and the Supplemental Register.

Declaration Signature in TEAS

a section in the Trademark Electronic Application System (TEAS) “Response to Office Action” form and “Request for Reconsideration after Final Action” form that requires the signature of a proper party. This section must be signed if you want to submit a declaration to verify a statement or assurance in your response.  For example, when you file a substitute specimen, the USPTO requires a declaration to verify or attest to the statement that the specimen was in use in commerce at least as early as the application filing date, prior to the amendment to allege use filing date, or prior to the expiration of the deadline for filing a statement of use.  If you want to submit a declaration, these TEAS online forms require two signatures ““ one in the “Declaration Signature” section and one in the “Response Signature” section.  For the definition of a “Response Signature,” please see elsewhere in this glossary.

Only certain persons can sign the “Declaration Signature” section in these TEAS forms.  If you are an individual applicant (that is, you are not a legally-organized business such as a partnership or corporation), the following are people who may sign your verified statement or assurances:  (1) you; (2) someone with firsthand knowledge of the facts and actual or implied authority to act on your behalf; or (3) your attorney, if you are represented by one, who must be authorized to practice before the USPTO.  If you are not an individual applicant, the following are people who are properly authorized to sign on your behalf:  (1) someone with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporate applicant, or a general partner of a partnership applicant); (2) someone with firsthand knowledge of the facts and actual or implied authority to act on your behalf; or (3) your attorney, if you are represented by one, who must be authorized to practice before the USPTO.

descriptive mark

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. If a mark is merely descriptive of the goods or services to which it relates, the mark will be refused registration on the Principal Register (unless the mark has acquired secondary meaning) but may be entitled to registration on the Supplemental Register. Examples of descriptive marks include: MEDICAL GUIDE for website services featuring medical guides, DENIM for jeans, and SPICY SAUCE for salsa.

See also mere descriptiveness.

disclaimer

a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark. The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant’s right with respect to certain elements in the mark.

docket

a list of cases (applications) awaiting office actions

domestic representative

a person residing within the United States who is appointed by a patentee or assignee of a trademark application or registration that does not reside in or is not domiciled within the United States. A domestic representative may be served process or notice of proceedings affecting the application, patent or trademark registration, or related rights. –see 35 USC 293, 37 CFR 3.61 and MPEP 302.02 for more

drawing

a clear depiction of the mark an applicant seeks to register. Also called “mark drawing” and “representation of a mark.” Every application must include a drawing of the mark, either in standard characters (all-text mark with no particular font style, size, or color) or in special form (mark includes stylization, design, graphics, logos, and/or color). The USPTO uses the drawing to file the applicant’s mark in the USPTO search records, to print marks in the Trademark Official Gazette (TMOG), and to print on registration certificates. For more information about special form drawings, see TMEP §807.04.

Education and entertainment

Class 41 for services under the International Classification of Goods and Services.

This class includes education; providing of training; entertainment; sporting and cultural activities.

Explanatory Note

Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.

This Class includes, in particular:

  • services consisting of all forms of education of persons or training of animals;
  • services having the basic aim of the entertainment, amusement or recreation of people;
  • presentation of works of visual art or literature to the public for cultural or educational purposes.

Electrical and scientific apparatus

Class 9 for goods under the International Classification of Goods and Services.

This class includes scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

electronic file wrapper

a system that provides a way to access electronic copies of the correspondence, documents and other pertinent records used in considering a particular case

ESTTA

Electronic System for Trademark Trials and Appeals

eTAS

Electronic Trademark Assignment System

eTEAS

electronic Trademark Examination Application System – electronic trademark filing system. It allows the public to complete various trademark filings and transactions on-line. For example, eTEAS allows you to complete trademark applications, preliminary amendments, amendments to allege use/statements of use, responses to Office actions, and post registration filings online, and then submit them directly over the Internet, paying by credit card, electronic funds transfer or an existing USPTO deposit account. — see eTEAS

EU

European Union

examiner’s amendment

a written confirmation of an amendment made to a trademark application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.

examining attorney

A USPTO employee who examines (reviews and determines compliance with the legal and regulatory requirements of) an application for registration of a federally registered trademark

expired

Trademark registration is no longer active. The registrant failed to renew the trademark registration at the end of the registration period.

Fabrics

Class 24 for goods under the International Classification of Goods and Services.

This class includes textiles and substitutes for textiles; household linen; curtains of textile or plastic.

Explanatory Note

Class 24 includes mainly fabrics and fabric covers for household use.

fanciful marks

comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).

Fancy goods

Class 26 for goods under the International Classification of Goods and Services.

This class includes lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.

Explanatory Note

Class 26 includes mainly dressmakers’ articles, natural or synthetic hair for wear, and hair adornments, as well as small decorative items intended to adorn a variety of objects, not included in other classes.

FAST

First Action System for Trademarks

Fastener Quality Act

Fastener Quality Act (15 U.S.C. 5401 et seq., as amended by Public Law 104-113, Public Law 105-234, and Public Law 106-34); implementing regulations: 15 C.F.R. Part 280 Purpose: Protects against the sale of mismarked, misrepresented, and counterfeit fasteners. — see Fastener Quality Act for more

fee

an amount of money charged for a particular service or product supplied by the USPTO. — see How to Pay Fees

filing basis

the legal basis for filing an application for registration of a mark. The Trademark Act sets out five filing bases, and an applicant must specify and meet the requirements of one or more bases before the mark will be approved. The five bases are:

  1. use of a mark in commerce;
  2. bona fide intention to use a mark in commerce;
  3. a claim of priority, based on an earlier-filed foreign application;
  4. registration of a mark in the applicant’s country of origin; and
  5. extension of protection of an international registration to the United States under the Madrid Protocol.

filing receipt

When an application is submitted via e-TEAS, the Office immediately issues a confirmation of filing via e-mail that includes the serial number and filing date, and a summary of all the data provided by applicant in the application. This serves as evidence of filing. Applicants who file paper applications receive printed filing receipts that list the application serial number and filing date, the mark, the applicant’s name, the goods and/or services, the filing bases, if available; the international class(es), and the address to be used for correspondence.

filing refusal

Also known as a final Office action, which makes “final” any outstanding refusals or requirements. A proper response to a final Office action is:

  • compliance with the requirements or
  • appeal to the Trademark Trial and Appeal Board.

Final Office action

An Office action that restates all outstanding issues from previous non-final office action(s) and holds these issues final. A final Office action is intended to end examination of a trademark or service mark application.

The applicant’s only response options for a final Office action are to

  1. resolve all outstanding issues, if possible, and/or
  2. file an appeal with the Trademark Trial and Appeal Board.

If an applicant does not resolve all issues or timely file an appeal within six months from the issue date of the final Office action, the application will be abandoned.

Floor coverings

Class 27 for goods under the International Classification of Goods and Services.

This class includes carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Explanatory Note

Class 27 includes mainly products intended to be added as furnishings to previously constructed floors and walls.

FQA

Fastener Quality Act

FR

Federal Register — the official journal of the federal government of the United States that contains USPTO rules, proposed rules, and public notices. The final rules created by the USPTO and published in the Federal Register are ultimately codified in the Code of Federal Regulations (CFR), which is updated annually.

Furniture and articles not otherwise classified

Class 20 for goods under the International Classification of Goods and Services.

This class includes furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.

Explanatory Note

Class 20 includes mainly furniture and parts therefor, as well as certain goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic.

This Class includes, in particular:

  • metal furniture, furniture for camping, gun racks, newspaper display stands;
  • indoor window blinds and shades;
  • bedding, for example, mattresses, bed bases, pillows;
  • looking glasses, furniture and toilet mirrors;
  • registration plates, not of metal;
  • small items of non-metallic hardware, for example, bolts, screws, dowels, furniture casters, collars for fastening pipes;
  • letter boxes, not of metal or masonry.

This Class does not include, in particular:

  • special furniture for laboratories (Cl. 9) or for medical use (Cl. 10);
  • outdoor blinds of metal (Cl. 6), not of metal and not of textile (Cl. 19), of textile (Cl. 22);
  • bed linen, eiderdowns and sleeping bags (Cl. 24);
  • certain mirrors for specific uses, for example, mirrors used in optical goods (Cl. 9), mirrors used in surgery or dentistry (Cl. 10), rearview mirrors (Cl. 12), sighting mirrors for guns (Cl. 13);
  • certain goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic, that are classified according to their function or purpose, for example, beads for making jewellery (Cl. 14), wooden floor boards (Cl. 19), baskets for domestic use (Cl. 21), plastic cups (Cl. 21), reed mats (Cl. 27).

FY

fiscal year – the federal fiscal year extends from October 1 through September 30.

generic term

terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. Examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries. — see TMEP for more info

goods and services

Goods are products. In the context of service marks, a service:

  1. must be a real activity;
  2. must be performed to the order of, or for the benefit of, someone other than the applicant; and
  3. the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

Hand tools

Class 8 for goods under the International Classification of Goods and Services.

This class includes hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.

Explanatory Note

Class 8 includes mainly hand-operated tools and implements for performing tasks, such as drilling, shaping, cutting and piercing.

Hotels and restaurants

Class 43 for services under the International Classification of Goods and Services.

This class includes services for providing food and drink; temporary accommodation.

Explanatory Note

Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation.

This Class includes, in particular:

  • reservation services for travellers’ accommodation, particularly through travel agencies or brokers;
  • boarding for animals.

This Class does not include, in particular:

  • rental services for real estate such as houses, flats, etc., for permanent use (Cl. 36);
  • arranging travel by tourist agencies (Cl. 39);
  • preservation services for food and drink (Cl. 40);
  • discotheque services (Cl. 41);
  • boarding schools (Cl. 41);
  • rest and convalescent homes (Cl. 44)

Housewares and glass

Class 21 for goods under the International Classification of Goods and Services.

This class includes household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.

Explanatory Note

Class 21 includes mainly small, hand-operated utensils and apparatus for household and kitchen use, as well as cosmetic and toilet utensils, glassware and certain goods made of porcelain, ceramic, earthenware, terra-cotta or glass.

This Class includes, in particular:

  • household and kitchen utensils, for example, fly swatters, clothes-pegs, mixing spoons, basting spoons and corkscrews, as well as serving utensils, for example, sugar tongs, ice tongs, pie servers and serving ladles;
  • household, kitchen and cooking containers, for example, vases, bottles, piggy banks, pails, cocktail shakers, cooking pots and pans, and non-electric kettles and pressure cookers;
  • small hand-operated kitchen apparatus for mincing, grinding, pressing or crushing, for example, garlic presses, nutcrackers, pestles and mortars;
  • dish stands and decanter stands;
  • cosmetic and toilet utensils, for example, electric and non-electric combs and toothbrushes, dental floss, foam toe separators for use in pedicures, powder puffs, fitted vanity cases;
  • gardening articles, for example, gardening gloves, window-boxes, watering cans and nozzles for watering hose;
  • indoor aquaria, terrariums and vivariums.

This Class does not include, in particular:

  • cleaning preparations (Cl. 3);
  • containers for storage and transport of goods, of metal (Cl. 6), not of metal (Cl. 20);
  • small apparatus for mincing, grinding, pressing or crushing, which are driven by electricity (Cl. 7);
  • razors and shaving apparatus, hair and nail clippers, electric and non-electric implements for manicure and pedicure, for example, manicure sets, emery boards, cuticle nippers (Cl. 8);
  • table cutlery (Cl. 8) and hand-operated cutting tools for kitchen use, for example, vegetable shredders, pizza cutters, cheese slicers (Cl. 8);
  • lice combs, tongue scrapers (Cl. 10);
  • cooking utensils, electric (Cl. 11);
  • toilet mirrors (Cl. 20);
  • certain goods made of glass, porcelain and earthenware that are classified according to their function or purpose, for example, porcelain for dental prostheses (Cl. 5), spectacle lenses (Cl. 9), glass wool for insulation (Cl. 17), earthenware tiles (Cl. 19), building glass (Cl. 19), glass fibres for textile use (Cl. 22).

id.

short for “ibid”, meaning same as previously cited

identification of goods and/or services

a written statement of the goods and/or services in a trademark application. Every application must include an identification of goods and/or services. This listing of goods and/or services must have clear, concise, and definite terms (in other words, common commercial names and language that the general public easily understands).

The Acceptable Identification of Goods and Services Manual can be used to find IDs of goods/services that are acceptable in scope.

Use our Goods and Services Search Tool to identify acceptable descriptions of goods/services and determine the corresponding class numbers.

See also: Trademark Identification of Goods/Services.

informal application

an application that has been filed without one or more of the elements required to receive a filing date. The USPTO will return informal applications to applicants. Please see the entry for “application” above for a list of the required elements.

INTA

International Trademark Association

intellectual property

Creations of the mind – creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four ways to protect intellectual property – patents, trademarks, copyrights or trade secrets

international application

allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application

IP

intellectual property

IPO

Intellectual Property Owners Association

IPR

Intellectual Property Rights

IT

information technology

ITU

Intent to Use — see MORE INFO

Jewelry

Class 14 for goods under the International Classification of Goods and Services.

This class includes precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.

Explanatory Note

Class 14 includes mainly precious metals and certain goods made of precious metals or coated therewith, as well as jewellery, clocks and watches, and component parts therefor.

jpg

.jpg file type extension or JPEG – “Joint Photographic Experts Group” – is one of several digital image formats that are viewable in web browsers. JPEG image files are encoded using a standard for file compression (making the files smaller) that preserves essential color and display information in a fairly photorealistic way, with smooth edges, shapes and color blends. JPEG files are generally preferred for displaying still image photographs in digital form. The JPEG format is “lossy”, meaning some information is lost when an image is compressed. This accounts for the “fuzziness” and patchy color areas what you may see when lower resolution JPEG images are enlarged to fill a space on the screen.

JPTOS

Journal of the Patent and Trademark Office Society

Leather goods

Class 18 for goods under the International Classification of Goods and Services.

This class includes leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.

Explanatory Note

Class 18 includes mainly leather, imitations of leather and certain goods made of those materials.

Light beverages

Class 32 for goods under the International Classification of Goods and Services.

This class includes beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Explanatory Note

Class 32 includes mainly non-alcoholic beverages, as well as beer.

This Class includes, in particular:

  • de-alcoholised beverages.

This Class does not include, in particular:

  • beverages for medical purposes (Cl. 5);
  • milk beverages (milk predominating) (Cl. 29);
  • beverages with coffee, cocoa, chocolate or tea base (Cl. 30).

likelihood of confusion

A statutory basis for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO.

The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are:

  1. the similarity of the marks; and
  2. the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion.

If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

The most effective method of preventing a refusal for a confusingly similar mark is to do a comprehensive search prior to filing and have an experienced attorney review the search results to make a determination as to whether the desired mark should be pursued or not.

Lubricants and fuels

Class 4 for goods under the International Classification of Goods and Services.

This class includes industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.

Explanatory Note

Class 4 includes mainly industrial oils and greases, fuels and illuminants.

This Class includes, in particular:

  • oils for the preservation of masonry or of leather;
  • raw wax, industrial wax;
  • electrical energy;
  • motor fuels, biofuels;
  • non-chemical additives for fuels;
  • wood for use as fuel.

This Class does not include, in particular:

  • certain special industrial oils and greases, for example, oils for tanning leather (Cl. 1), oils for the preservation of wood, anti-rust oils and greases (Cl. 2), essential oils (Cl. 3);
  • massage candles for cosmetic purposes (Cl. 3) and medicated massage candles (Cl. 5);
  • certain special waxes, for example, grafting wax for trees (Cl. 1), tailors’ wax, polishing wax, depilatory wax (Cl. 3), dental wax (Cl. 5), sealing wax (Cl. 16).

Machinery

Class 7 for goods under the International Classification of Goods and Services.

This class includes machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.

Explanatory Note

Class 7 includes mainly machines and machine tools, motors and engines.

Madrid Protocol

The “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks” (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.” — see TMEP Chapter 1900 for more

mark

a word, name, symbol, or device that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods or services. The terms “trademark” and “mark” are often interchangeably used to refer to both trademarks and service marks.

Trademark registrations, unlike patents, can be renewed forever as long as they are being used in commerce.

Meats and processed foods

Class 29 for goods under the International Classification of Goods and Services.

This class includes meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; oils and fats for food.

Explanatory Note

Class 29 includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.

This Class includes, in particular:

  • milk beverages (milk predominating);
  • seeds prepared for human consumption, not being seasonings or flavourings.

This Class does not include, in particular:

  • certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
  • baby food (Cl. 5);
  • dietetic food and substances adapted for medical use (Cl. 5);
  • dietary supplements (Cl. 5);
  • processed seeds for use as a seasoning (Cl. 30);
  • salad dressings (Cl. 30);
  • fertilised eggs for hatching (Cl. 31);
  • foodstuffs for animals (Cl. 31);
  • live animals (Cl. 31);
  • seeds for planting (Cl. 31).

Medical apparatus

Class 10 for goods under the International Classification of Goods and Services.

This class includes surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.

Explanatory Note

Class 10 includes mainly surgical, medical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals.

Medical, beauty and agricultural

Class 44 for services under the International Classification of Goods and Services.

This class includes medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Explanatory Note

Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry.

This Class includes, in particular:

  • medical analysis services relating to the treatment of persons (such as x-ray examinations and taking of blood samples);
  • artificial insemination services;
  • pharmacy advice;
  • animal breeding;
  • services relating to the growing of plants such as gardening;
  • services relating to floral art such as floral compositions as well as garden design.

This Class does not include, in particular:

  • vermin exterminating, other than for agriculture, aquaculture, horticulture and forestry (Cl. 37);
  • installation and repair services for irrigation systems (Cl. 37);
  • ambulance transport (Cl. 39);
  • animal slaughtering services and taxidermy (Cl. 40);
  • timber felling and processing (Cl. 40);
  • animal training services (Cl. 41);
  • health clubs for physical exercise (Cl. 41);
  • scientific research services for medical purposes (Cl. 42);
  • boarding for animals (Cl. 43);
  • retirement homes (Cl. 43).

mere descriptiveness

a statutory basis for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.

The major reasons for not protecting descriptive marks are:

  1. to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and
  2. to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

See also descriptive mark.

Metal goods

Class 6 for goods under the International Classification of Goods and Services.

This class includes common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.

Explanatory Note

Class 6 includes mainly unwrought and partly wrought common metals, including ores, as well as certain goods made of common metals.

This Class includes, in particular:

  • metals in foil or powder form for further processing, for example, for 3D printers;
  • metal building materials, for example, materials of metal for railway tracks, pipes and tubes of metal;
  • small items of metal hardware, for example, bolts, screws, nails, furniture casters, window fasteners;
  • transportable buildings or structures of metal, for example, prefabricated houses, swimming pools, cages for wild animals, skating rinks;
  • certain goods made of common metals not otherwise classified by function or purpose, for example, all-purpose boxes of common metal, statues, busts and works of art of common metal.

This Class does not include, in particular:

  • metals and ores used as chemicals in industry or scientific research for their chemical properties, for example, bauxite, mercury, antimony, alkaline and alkaline-earth metals (Cl. 1);
  • metals in foil and powder form for use in painting, decorating, printing and art (Cl. 2);
  • electric cables (Cl. 9) and non-electric cables and ropes, not of metal (Cl. 22);
  • pipes being parts of sanitary installations (Cl. 11), flexible pipes, tubes and hoses, not of metal (Cl. 17) and rigid pipes, not of metal (Cl. 19);
  • cages for household pets (Cl. 21);
  • certain goods made of common metals that are classified according to their function or purpose, for example, hand tools, hand operated (Cl. 8), paper clips (Cl. 16), furniture (Cl. 20), kitchen utensils (Cl. 21), household containers (Cl. 21)

MiTEAS

Madrid International Trademark Electronic Application Submission

Native American Tribal Insignia

Insignia that various federally and state recognized Native American tribes have identified as their official tribal insignia.

Natural agricultural products

Class 31 for goods under the International Classification of Goods and Services.

This class includes raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs;natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.

Explanatory Note

Class 31 includes mainly land and sea products not having been subjected to any form of preparation for consumption, live animals and plants, as well as food­stuffs for animals.

This Class includes, in particular:

  • unprocessed cereals;
  • fresh fruits and vegetables, even after washing or waxing;
  • plant residue;
  • unprocessed algae;
  • unsawn timber;
  • fertilized eggs for hatching;
  • fresh mushrooms and truffles;
  • litter for animals, for example, aromatic sand, sanded paper for pets.

This Class does not include, in particular:

  • cultures of micro-organisms and leeches for medical purposes (Cl. 5);
  • dietary supplements for animals and medicated animal feed (Cl. 5);
  • semi-worked woods (Cl. 19);
  • artificial fishing bait (Cl. 28);
  • rice (Cl. 30);
  • tobacco (Cl. 34).

NIPLECC

National Intellectual Property Law Enforcement Coordination Council

NOA

Notice of Allowance

Non-final office action

An Office action that raises issues with your application, usually in the first phase of the examination process, or new issues that occur during the examination process. An examining attorney will send a non-final Office action after he or she reviews the application for the first time.

If applicant’s response to this first non-final Office action raises a new issue, the examining attorney will send another non-final Office action that states the new issue(s) and continues any that remain outstanding. Applicants must respond to all issues in a non-final Office action within six months from the date it is sent to avoid abandonment of the application.

non-lawyer

a person who is not an attorney or lawyer. — see 37 CFR § 10.14(b)

non-substantive office action

An office action that does not include any substantive reasons for refusal. A non-substantive office action may include any of the following:

  • requests for information or clarification,
  • requirements for amendments or disclaimers, or
  • requirements for correction of informalities

With all Yaymark trademark registration packages, responses to non-substantive office actions are included.

notice of abandonment

a written notification from the USPTO that an application has been declared abandoned or, in other words, is no longer pending. If the application was abandoned unintentionally or due to Office error, the applicant has a deadline of two months from the issue date of the notice of abandonment to file either (1) a petition to revive the application or (2) a request to reinstate the application. — see see 37 CFR 1.181(f) for more

notice of allowance

NOA – a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

Notices of allowance are only issued for applications that have been filed based on intent to use. The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned.

notice of publication

A written statement from the USPTO notifying an applicant that its mark will be published in the Official Gazette. If the examining attorney assigned to an application raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication.

The notice of publication provides the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.

OBI

Originating Beneficiary Information – the informational portion of a wire (electronic) transfer of funds. It is a necessary and important element, providing the USPTO information as to why the “wire” was sent, by whom, and how to apply the payment.

OBRA

Omnibus Budget and Reconciliation Act

OED

Office of Enrollment and Discipline

OEIP

Office of Electronic Information Products

Office

in the context of actions or activities involving the USPTO this refers to the United States Patent and Trademark Office (USPTO) itself

OG

Official Gazette (OG) or Trademark Official Gazette (TMOG) – weekly publication of the USPTO that includes marks that have been published for opposition.

Link: Official Gazette

OGC

Office of General Counsel

OHIM

Office for Harmonization in the Internal Market

OMB

Office of Management and Budget, a branch of The Executive Office of the President

— see OMB for more

OPF

Official Personnel File

OPLA

Office of Patent Legal Administration

OPM

Office of Personnel Management – an agency of the U. S. Government

opposition proceeding

A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to prevent the issuance of a registration of a mark. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal.

Any person who believes that he or she will be damaged by the registration of a mark may file an opposition, but the opposition may only be filed during the 30-day window following publication of the mark in the Official Gazette.

OPR

Formerly, Office of Public Records; now known as Public Records Division (PRD)

Paints

Class 2 for goods under the International Classification of Goods and Services.

This class includes paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.

Explanatory Note

Class 2 includes mainly paints, colorants and preparations used for protection against corrosion.

This Class includes, in particular:

  • paints, varnishes and lacquers for industry, handicrafts and arts;
  • thinners, thickeners, fixatives and siccatives for paints, varnishes and lacquers;
  • mordants for wood and leather;
  • anti-rust oils and oils for the preservation of wood;
  • dyestuffs for clothing;
  • colorants for foodstuffs and beverages.

This Class does not include, in particular:

  • unprocessed artificial resins (Cl. 1), semi-processed resins (Cl. 17);
  • mordants for metals (Cl. 1);
  • laundry blueing (Cl. 3);
  • cosmetic dyes (Cl. 3);
  • paint boxes (articles for use in school) (Cl. 16);
  • inks for stationery purposes (Cl. 16);
  • insulating paints and varnishes (Cl. 17).

Paper goods and printed matter

Class 16 for goods under the International Classification of Goods and Services.

This class includes paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.

Explanatory Note

Class 16 includes mainly paper, cardboard and certain goods made of those materials, as well as office requisites.

This Class includes, in particular:

  • paper knives and paper cutters;
  • cases, covers and devices for holding or securing paper, for example, document files, money clips, holders for cheque books, paper-clips, passport holders, scrapbooks;
  • certain office machines, for example, typewriters, duplicators, franking machines for office use, pencil sharpeners;
  • painting articles for use by artists and interior and exterior painters, for example, artists’ watercolour saucers, painters’ easels and palettes, paint rollers and trays;
  • certain disposable paper products, for example, bibs, handkerchiefs and table linen of paper;
  • certain goods made of paper or cardboard not otherwise classified by function or purpose, for example, paper bags, envelopes and containers for packaging, statues, figurines and works of art of paper or cardboard, such as figurines of papier mâché, framed or unframed lithographs, paintings and watercolours.

This Class does not include, in particular:

  • paints (Cl. 2);
  • hand tools for artists, for example, spatulas, sculptors’ chisels (Cl. 8);
  • teaching apparatus, for example, audiovisual teaching apparatus, resuscitation mannequins (Cl. 9), and toy models (Cl. 28);
  • certain goods made of paper or cardboard that are classified according to their function or purpose, for example, photographic paper (Cl. 1), abrasive paper (Cl. 3), paper blinds (Cl. 20), table cups and plates of paper (Cl. 21), bed linen of paper (Cl. 24), paper clothing (Cl. 25), cigarette paper (Cl. 34).

patent

a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. — see also design patent, nonprovisional patent application, plant patent, provisional patent application, reexamination proceedings, reissue application, utility patent

Patent and Trademark Depository Library (PTDL)

a library designated by the USPTO to receive copies of patents, CD-ROMs containing registered and pending marks, and patent and trademark materials that are made available to the public for free. As of October 1st, 2011 these libraries have been renamed and are referred to as Patent and Trademark Resource Centers (PTRCs). The term “PDTL” is no longer used.

— see PTRC for a list of locations and more info

PDF

Portable Document Format – a common proprietary document format from Adobe used for documents having mixtures of text and images that preserves the look and feel of a printed page and permits the user to zoom and magnify the pages when viewing; not “archival” because of its proprietary nature.

Personal and legal

Class 45 for services under the International Classification of Goods and Services.

This class includes legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.

Explanatory Note

This Class includes, in particular:

  • services rendered by lawyers, legal assistants, and personal advocates, to individuals, groups of individuals, organizations and enterprises;
  • investigation and surveillance services relating to the physical safety of persons and security of tangible property;
  • services provided to individuals in relation with social events, such as social escort services, matrimonial agencies, funeral services.

This Class does not include, in particular:

  • professional services giving direct aid in the operations or functions of a commercial undertaking (Cl. 35);
  • services relating to financial or monetary affairs and services dealing with insurance (Cl. 36);
  • escorting of travellers (Cl. 39);
  • security transport (Cl. 39);
  • services consisting of all forms of education of persons (Cl. 41);
  • performances of singers or dancers (Cl. 41);
  • computer programming services for the protection of software (Cl. 42);
  • computer and internet security consultancy and data encryption services (Cl. 42);
  • services provided by others to give medical, hygienic or beauty care for human beings or animals (Cl. 44);
  • certain rental services.

petition to revive an application

A formal request for the USPTO to return an abandoned application to active status. These petitions are handled by the Office of the Commissioner for Trademarks, and must be received in the USPTO within two (2) months from the issue date of the notice of abandonment.

The standard used for deciding a petition to revive is unintentional delay, that is, whether the applicant’s delay in responding to an Office action or Notice of Allowance was unintentional.

Pharmaceuticals

Class 5 for goods under the International Classification of Goods and Services.

This class includes pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Explanatory Note

Class 5 includes mainly pharmaceuticals and other preparations for medical or veterinary purposes.

This Class includes, in particular:

  • sanitary preparations for personal hygiene, other than toiletries;
  • diapers for babies and for incontinence;
  • deodorants other than for human beings or for animals;
  • medicated shampoos, soaps, lotions and dentifrices;
  • dietary supplements intended to supplement a normal diet or to have health benefits;
  • meal replacements and dietetic food and beverages adapted for medical or veterinary use.

This Class does not include, in particular:

  • ingredients for use in the manufacture of pharmaceuticals, for example, vitamins, preservatives and antioxidants (Cl. 1);
  • sanitary preparations being non-medicated toiletries (Cl. 3);
  • deodorants for human beings or for animals (Cl. 3);
  • supportive bandages (Cl. 10);
  • meal replacements and dietetic food and beverages not specified as being for medical or veterinary use, which should be classified in the appropriate food or beverage classes, for example, low-fat potato crisps (Cl. 29), high-protein cereal bars (Cl. 30), isotonic beverages (Cl. 32).

POA

Power of Attorney – formal assignment to another of the right to legally act on your behalf

Principal Register

primary trademark register of the USPTO. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Trademark Act. The advantages of owning a registration on the Principal Register include the following:

  • Constructive notice to the public of the registrant’s claim of ownership of the mark;
  • A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • A date of constructive use of the mark as of the filing date of the application;
  • The ability to bring an action concerning the mark in federal court;
  • The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods;
  • The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” subject to certain statutory defenses; and
  • The use of the U.S. registration as a basis to obtain registration in foreign countries.

priority action

a letter in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. An examining attorney will issue a priority action after consulting with an applicant or the applicant’s attorney. Unlike an examiner’s amendment, the priority action does not confirm resolution of the issues; instead, it explains the requirements still outstanding. The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an Office action. The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing the response.

pseudo mark

A way of locating a word mark that is comprised of an alternative or intentionally corrupted spelling of an English word. The pseudo mark search locates spellings that are very similar or phonetically equivalent to the word mark. — see Trademark Tips on Field Searching for more

PTO

Patent and Trademark Office, former designation for USPTO also a type of form designation for forms generated by the USPTO (as in PTO-892)

PTOL

a type of form designation such as Form PTOL, meaning a Patent and Trademark Office Legal form

PTRC

Patent and Trademark Resource Center

publication for opposition

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette.  The USPTO will send a Notice of Publication to the applicant stating the date of publication.

Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or on a foreign registration under §44, or a Notice of Allowance will issue for intent-to-use applications.

recordation form cover sheet

USPTO form that trademark owners use to record trademark assignments (changes in ownership of marks for applications and registrations) and a trademark owner’s change of entity name. The form is PTO-TM-1594. It may be submitted in hard copy to the following address: Mail Stop Assignment Recordation Services Director of the US Patent and Trademark OfficePO Box 1450Alexandria, VA 22313-1450 Locate the current fee schedule at How to Pay Fees to determine the current fee for assignment recordation (Trademark Services Fee Code 8521)

registration

Federal registration of trademarks involves the establishment of rights in a mark based on legitimate use of the mark. Although federal registration of trademarks is not required to use a trademark, owning a federal trademark registration has several advantages, including:

  • notice to the public of the registrant’s claim of ownership of the mark,
  • a legal presumption of ownership nationwide,
  • the exclusive right to use the mark on or in connection with the goods or services set forth in the registration,
  • the ability to bring an action concerning the mark in federal court,
  • the use of the U.S. registration as a basis to obtain registration in foreign countries, and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

request for extension of time to file a statement of use

Extension Request – a sworn statement stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee per class of goods/services must accompany the Extension Request. The Extension Request must be signed by the application owner or a person authorized to sign on behalf of the owner.

The Extension Request, if granted, gives the owner an additional six (6) months to either: (1) use the mark in commerce and file a Statement of Use; or (2) file another Extension Request. You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the issue date of the Notice of Allowance. The USPTO will not register a mark if, after thirty-six (36) months of the issue date of the Notice of Allowance, a Statement of Use has not been filed.

request to reinstate an application

If an application is abandoned due to a USPTO Office error, an applicant may file a request to reinstate the application, instead of a petition to revive. There is no fee for a request for reinstatement. You must file a request for reinstatement within two months of the issue date of the notice of abandonment. You must include a true copy of the document that was timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO. — see TMEP §1712.01 for a list of evidence that may be considered in support of a request for reinstatement

Response Signature in TEAS

a section in the Trademark Electronic Application System (TEAS) “Response to Office Action” form and “Request for Reconsideration after Final Action” form that requires the signature of a proper party. This section must be signed in order to submit a response in TEAS.  Only certain persons can sign the “Response Signature” section. If you have an attorney, the attorney must sign the response.  If you do not have an attorney, and you are an individual applicant, then you must sign (and date) the response yourself.  If you are a juristic applicant (e.g., corporation, partnership), then someone with legal authority to bind the juristic applicant must sign (e.g., a corporate officer or general partner) and date the form.  In the case of joint applicants, all joint applicants must sign.

RO

Receiving Office – the national Office or the intergovernmental organization with which an international application has been filed.

Rubber goods

Class 17 for goods under the International Classification of Goods and Services.

This class includes unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.

Explanatory Note

Class 17 includes mainly electrical, thermal and acoustic insulating materials and plastics for use in manufacture in the form of sheets, blocks and rods, as well as certain goods made of rubber, gutta-percha, gum, asbestos, mica or substitutes therefor.

SB

“SB” is used today as part of the label in USPTO form designations (e.g., PTO/SB/05). The origin of this notation is a Specimen Book (no longer in use) that included all of the forms.

search

A trademark search may be done prior to filing a trademark application to determine if any similar prior trademarks are in force. The USPTO advises applicants to search before filing the application.

A comprehensive search includes searching not only the USPTO records but also looking for common law uses of the mark. It is important to carry out a comprehensive search to identify any conflicting common law rights.

After a trademark application is filed, the USPTO will conduct a search of USPTO records for conflicting marks as part of the official examination process. The official search is not done for the applicant’s benefit, but rather to determine whether the mark applied for can be registered.

 

 

secondary meaning

an exclusive association in the minds of consumers between a mark and a provider of goods/services that has arisen by virtue of commercial use of that mark. Also known as “acquired distinctiveness.”

A mark that is otherwise ineligible for registration on the Principal Register (for example, for being merely descriptive) may nevertheless be allowed to register if the applicant proves that the mark has acquired a special significance to the consuming public, such that the mark has come to signify to the public that the product or service offered under that mark is produced by that particular source.

Section 15 Declaration of Incontestability

a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified. An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15 U.S.C. §1065. Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed. A §15 Affidavit may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15. — see File a §15 Declaration

Section 44 applications

(foreign application or foreign registration basis)

an application filed under the basis provided for in Trademark Act Section 44(d), 15 U.S.C. §1126(d) (based on a pending foreign application), or in Section 44(e), 15 U.S.C. §1126(e) (based on a foreign registration), for the same mark and the same goods/services in your U.S. application. Typically, this filing basis is used when an applicant is not located in the United States.

Section 66(a) applications

(request for extension of protection of an international registration to the United States basis)

an application filed under the basis provided for in Trademark Act Section 66(a), 15 U.S.C. §1141f(a) based on a prior-filed international registration under the Madrid Protocol for the same mark and the same goods/services in your U.S. application.

Section 8 Declaration of Continued Use

A sworn statement filed by the owner of a registration that the mark is in use in commerce. The declaration must be filed by the current owner of the registration. The USPTO must receive the declaration during each of the following time periods:

  • At the end of the 6th year after the date of registration, and
  • At the end of each successive 10-year period after the date of registration.

There is a six-month grace period for each of the above deadlines. If the Section 8 Declaration is not filed by the end of the grace period, the USPTO will cancel the registration.

Section 8 Declaration of Excusable Nonuse

A sworn statement filed by the owner of a registration that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark.

This declaration must be filed by the current owner of the registration and the USPTO must receive the declaration during the following time periods:

  • By the end of the 6th year after the date of registration, and
  • By the end of each successive 10-year period after the date of registration.

There is a six-month grace period for each of the above deadlines. If the Section 8 Declaration is not filed by the end of the grace period, the USPTO will cancel the registration. Once the USPTO accepts the Section 8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another Section 8 Declaration until the next statutory filing period.

Section 9 Renewal Application

A sworn document, filed by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations remain in force for 10 years, and may be renewed for 10-year periods.

Trademark owners have a window of 18 months to file a §9 Renewal Application. The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire. Because the due date of the 10-year §8 Declaration coincides with the due date of the §9 Renewal Application, these filings are commonly made together.

serial number

a number assigned to a trademark application when it is filed.

service mark

a word, name, symbol, or device that indicates the source of the services and distinguishes those services from the services of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are often used to refer to both trademarks and service marks.

SM

service mark

Smokers’ articles

Class 34 for goods under the International Classification of Goods and Services.

This class includes tobacco; smokers’ articles; matches.

Explanatory Note

This Class includes, in particular:

  • tobacco substitutes (not for medical purposes).

This Class does not include, in particular:

  • cigarettes without tobacco, for medical purposes

SOU

Statement of Use

special form drawing (stylized/design mark)

One of two types of visual depictions of a mark sought to be registered (the other being a standard character drawing). This drawing type is for marks with stylized lettering, a design or logo, and/or color. An applicant must submit a depiction of the mark as well as a description of the mark.

The depiction must:

  1. Display the mark, if the mark is not in color, in black on a white background, or, if the mark is in color, in color on a white background
  2. Display a high-quality image of the mark drawing that reproduces well with all lines appearing clean, sharp and solid, and not fine or crowded.

The description of the mark must consist of an accurate and concise description of everything appearing in the mark: all text and design elements, and the location of any color, if relevant.

The mark in special form must be a “substantially exact” (essentially the same) representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.

specimen

A picture or document attached to a filing that shows the applicant’s mark as actually used in the marketplace on the applicant’s goods, packaging for the goods, and displays associated with the goods, or in the sale, advertising, or rendering of the applicant’s services identified in the application or allegation of use.

See also: article about specimen requirements

 

standard character drawing

Also known as a wordmark. One of two types of visual depictions of a mark sought to be registered (the other being a special form drawing). This drawing type shows a mark in text only (without a design) in no particular font style, size, or color. Registered marks with standard character drawings receive the broadest protection for a mark. An applicant must submit a depiction of the mark as well as a standard character claim.

The depiction must:

  1. Show text only (no graphics/logos/designs, no color, no stylization)
  2. Display the mark in black on a white background
  3. Show all letters and words in Latin characters (A-Z)
  4. Show all numerals in Roman (VII, IX) and/or Arabic (0-9) numerals
  5. Include only common punctuation (colon, dashes) or diacritical marks (accents, tildes).

standard character format

An applicant may submit a standard character format representation of a mark if (1) All letters and words in the mark are depicted in Latin characters; (2) all numerals in the mark are depicted in Roman or Arabic numerals; (3) the mark includes only common punctuation or diacritical marks; and (4) the mark does notinclude a design element. — see TMEP §§807.03 for more

Staple foods

Class 30 for goods under the International Classification of Goods and Services.

This class includes coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water).

Explanatory Note

Class 30 includes mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food.

This Class includes, in particular:

  • beverages with coffee, cocoa, chocolate or tea base;
  • cereals prepared for human consumption (for example, oat flakes and those made of other cereals).

This Class does not include, in particular:

  • certain foodstuffs of plant origin;
  • salt for preserving other than for foodstuffs (Cl. 1);
  • medicinal teas and dietetic food and substances adapted for medical use (Cl. 5);
  • baby food (Cl. 5);
  • dietary supplements (Cl. 5);
  • yeast for pharmaceutical purposes (Cl. 5), yeast for animal consumption (Cl. 31);
  • raw cereals (Cl. 31);
  • foodstuffs for animals (Cl. 31).

statement of use

SOU — a sworn statement attesting to use of the mark in commerce. The Statement of Use is signed by the applicant or a person authorized to sign on behalf of the applicant.

An SOU must be submitted with:

  1. The required filing fee for each class of goods/services; and
  2. A specimen showing use of the mark in commerce for each class of goods/services.

A Statement of Use must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application. The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed.

stylized mark

one type of depiction of the mark sought to be registered. Another name for this type of mark is “special form.” If the mark includes a particular style of lettering, or a design or logo, the mark is considered to be stylized or in special form. Therefore, applicants must select the “stylized or special form” mark format when applying for these types of marks. The representation of the mark’s page should show a black and white image of the mark, no larger than 3.5 inches by 3.5 inches (8 cm by 8 cm). The mark in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.

subsequent designation

A request by the holder of an international trademark registration for an extension of protection of the registration to additional Contracting Parties. — see TMEP §1902.08 for more

substantive office action

An office action that includes one or more substantive reasons for refusal. Common reasons for refusal include:

With the Yaymark trademark registration complete package, responses to substantive office actions are included. For other trademark applications, the cost to respond to an office action depends on the type, complexity, and quantity of refusals.

suggestive mark

a mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services — see TMEP 1209.01(a) for more

supplemental register

secondary trademark register of the USPTO. It allows for registration of marks that are not eligible for registration on the Principal Register (most commonly because they are merely descriptive), but are capable of distinguishing an applicant’s goods or services. Generic marks cannot be registered on the Supplemental Register.

Marks registered on the Supplemental Register receive protection from conflicting marks and other protections, but do not receive all of the benefits of registration. Applications filed with an intent-to-use basis are not eligible for registration on the Supplemental Register. Marks on the Supplemental Register that subsequently gain secondary meaning may be amended to the Principle Register.

surcharge due

an additional fee that may be required due to late or insufficient payment of fees

suspension inquiry letter

An Office action inquiring as to the status of the matter that is the basis for suspension of an application. The examining attorney will issue a suspension inquiry letter after an application has been suspended for six months or more, unless the information is available to the examining attorney in the Office’s databases.

If the applicant does not respond to the suspension inquiry letter, the application will be abandoned.

suspension letter

suspends the action on an application. An application may be suspended for a variety of reasons. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not need to respond to suspension letters.

TARR

Trademark Application and Registration Retrieval system — see TARR USPTO’s online database for monitoring federal trademark applications and registrations. Using TARR, applicants, trademark owners and the public may check the status of pending trademark applications and registrations. To access information about a specific mark, users must provide the associated serial number or registration number of the record they seek.

TDR

Trademark Document Retrieval system — see TDR Online retrieval of documents from the electronic case file for federal trademark applications and registrations. To access information about a specific mark, users must provide the associated serial number,registration number, reference number, or international registration number of the record they seek.