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.
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.
–see secondary meaning
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.
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:
- The required filing fee for each class of goods/services; and
- 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.
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.
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:
- the applicant’s name,
- a name and address for correspondence,
- a clear drawing of the mark sought to be registered,
- a list of the goods or services, and
- the application filing fee.
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:
- used their mark before the applicant’s filing date,
- filed with the USPTO before the applicant, or
- 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:
- The applicant’s name
- A name and address for correspondence
- A clear drawing of the mark to be registered
- A list of the goods or services
- 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.
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).
the entity that is the recipient of a transfer of a trademark application or trademark registration from its owner of record (assignor)
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
The owner of record of a trademark application or trademark registration who is transferring (assigning) ownership to another entity (assignee)
– 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.
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.
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.
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.
Official document from the USPTO evidencing that a mark has been registered
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.
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.
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.
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:
- Cosmetics and cleaning preparations
- Lubricants and fuels
- Metal goods
- Hand tools
- Electrical and scientific apparatus
- Medical apparatus
- Environmental control apparatus
- Musical instruments
- Paper goods and printed matter
- Rubber goods
- Leather goods
- Non-metallic building materials
- Furniture and articles not otherwise classified
- Housewares and glass
- Cordage and fibers
- Yarns and threads
- Fancy goods
- Floor coverings
- Toys and sporting goods
- Meats and processed foods
- Staple foods
- Natural agricultural products
- Light beverages
- Wines and spirits
- Smokers’ articles
- Advertising and business
- Insurance and financial
- Building construction and repair
- Transportation and storage
- Treatment of materials
- Education and entertainment
- Computer and scientific
- Hotels and restaurants
- Medical, beauty and agricultural
- Personal and legal
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.
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.
— see likelihood of confusion
A country or intergovernmental organization that is a member of the Madrid Protocol.
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.
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
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.
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.
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.
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.
A listing of the numerical codes for searching designs in the USPTO trademark database (TESS).
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.
a list of cases (applications) awaiting office actions
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
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.
a system that provides a way to access electronic copies of the correspondence, documents and other pertinent records used in considering a particular case
Electronic System for Trademark Trials and Appeals
Electronic Trademark Assignment System
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
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.
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
Trademark registration is no longer active. The registrant failed to renew the trademark registration at the end of the registration period.
— see request for Extension of Time to File a Statement of Use
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).
First Action System for Trademarks
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
an amount of money charged for a particular service or product supplied by the USPTO. — see How to Pay Fees
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:
- use of a mark in commerce;
- bona fide intention to use a mark in commerce;
- a claim of priority, based on an earlier-filed foreign application;
- registration of a mark in the applicant’s country of origin; and
- extension of protection of an international registration to the United States under the Madrid Protocol.
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.
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.
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
- resolve all outstanding issues, if possible, and/or
- 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.
Fastener Quality Act
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.
fiscal year – the federal fiscal year extends from October 1 through September 30.
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 are products. In the context of service marks, a service:
- must be a real activity;
- must be performed to the order of, or for the benefit of, someone other than the applicant; and
- 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.
–International Classification. See classification of goods and services.
short for “ibid”, meaning same as previously cited
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.
See also: Trademark Identification of Goods/Services.
— see Section 15 Declaration of Incontestability
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.
International Trademark Association
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
ITU — refers to the intent-to-use filing basis for a trademark application. Applicants who have not yet used the mark in commerce may file a trademark application under this filing basis.
allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application
Intellectual Property Owners Association
Intellectual Property Rights
Intent to Use — see MORE INFO
.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.
Journal of the Patent and Trademark Office Society
— see attorney
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:
- the similarity of the marks; and
- 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.
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
Documents that are required to be filed with the USPTO for registered marks. Failure to file required maintenance documents result in cancellation of the mark registration.
Required maintenance documents include:
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.
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:
- to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and
- 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.
Madrid International Trademark Electronic Application Submission
Insignia that various federally and state recognized Native American tribes have identified as their official tribal insignia.
National Intellectual Property Law Enforcement Coordination Council
Notice of Allowance
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.
a person who is not an attorney or lawyer. — see 37 CFR § 10.14(b)
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.
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
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.
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.
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.
Omnibus Budget and Reconciliation Act
Office of Enrollment and Discipline
Office of Electronic Information Products
in the context of actions or activities involving the USPTO this refers to the United States Patent and Trademark Office (USPTO) itself
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
Office of General Counsel
Office for Harmonization in the Internal Market
Office of Management and Budget, a branch of The Executive Office of the President
— see OMB for more
Official Personnel File
Office of Patent Legal Administration
Office of Personnel Management – an agency of the U. S. Government
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.
Formerly, Office of Public Records; now known as Public Records Division (PRD)
the basis set forth in the application as initially filed — see filing basis
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
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
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.
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.
Power of Attorney – formal assignment to another of the right to legally act on your behalf
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.
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.
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
Patent and Trademark Office, former designation for USPTO also a type of form designation for forms generated by the USPTO (as in PTO-892)
a type of form designation such as Form PTOL, meaning a Patent and Trademark Office Legal form
Patent and Trademark Resource Center
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.
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)
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.
— see drawing (trademark)
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.
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
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.
Receiving Office – the national Office or the intergovernmental organization with which an international application has been filed.
“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.
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.
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.
–see intent to use
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
(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.
(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.
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.
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.
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.
a number assigned to a trademark application when it is filed.
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.
Statement of Use
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:
- 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
- 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.
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
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:
- Show text only (no graphics/logos/designs, no color, no stylization)
- Display the mark in black on a white background
- Show all letters and words in Latin characters (A-Z)
- Show all numerals in Roman (VII, IX) and/or Arabic (0-9) numerals
- Include only common punctuation (colon, dashes) or diacritical marks (accents, tildes).
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
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:
- The required filing fee for each class of goods/services; and
- 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.
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.
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
An office action that includes one or more substantive reasons for refusal. Common reasons for refusal include:
- likelihood of confusion,
- primarily merely descriptive or deceptively misdescriptive of the goods/services,
- primarily geographically descriptive or geographically deceptive,
- primarily merely a surname, or
- mere ornamentation.
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.
There are several substantive reasons for refusing registration of a mark in an office action. These include:
- likelihood of confusion,
- primarily merely descriptive or deceptively misdescriptive of the goods/services,
- primarily geographically descriptive or geographically deceptive;
- primarily merely a surname; or
- mere ornamentation.
This is not a complete list of all possible grounds of refusal.
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
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.
an additional fee that may be required due to late or insufficient payment of fees
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.
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.
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.
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.
Trademark Electronic Application System — see TEAS USPTO’s electronic filing system. It may be used to file a variety of documents with the USPTO, including new trademark applications, amendments to allege use, statements of use, responses to Office actions, and changes of address, just to name a few.
An expression or phrase that has a defined meaning when used in a particular context or knowledge environment (such as the trademark application process, computers, etc.)
Trademark Image Capture & Retrieval System. A system used within the USPTO to scan, store, and provide access to images of papers associated with trademark registrations.
a lossless, archival image file format – a type using G4 compression is used for patent images — choose a TIFF viewer from list of all available plug-ins
Trademark Information System
Trademark Law Treaty
Trademark Manual of Examining Procedure
Trademark Public Advisory Committee
Trademark Postal System
a product’s design, product packaging, color, or other distinguishing nonfunctional element of appearance — see TMEP 1202.02 for more
information that companies keep secret to give them an advantage over their competitors
a word, name, symbol, or device that indicates the source of goods and distinguishes those goods from the goods of others. A trademark is the same as a service mark except that it identifies and distinguishes the source of a good rather than a service. The terms “trademark” and “mark” are often interchangeably used to refer to both trademarks and service marks.
Trademark Act of 1946, as Amended (PUBLIC LAW 79-489, CHAPTER 540, APPROVED JULY 5, 1946; 60 STAT. 427)- currently contained in Chapter 22 of Title 15 of the United States Code (USC); the major body of U.S. law that governs federal registration of trademarks — see Trademark Rules of Practice and Federal Statutes for links to the applicable sections of Title 15 and a more detailed citation history of the Trademark Act.
Trademark Electronic Search System. TESS is USPTO’s online database for searching pending, registered, and dead federal trademarks. TESS is free and intended for use by the general public.
— see examining attorney
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
If the trademark owner is able to prove infringement, available remedies may include the following:
- a court order (injunction) that the defendant stop using the accused mark;
- an order requiring the destruction or forfeiture of infringing articles;
- monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and
- an order that the defendant, in certain cases, pay the plaintiffs’ attorneys’ fees.
A reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. It contains guidelines for USPTO examining attorneys, trademark applicants and owners, and attorneys/representatives for trademark applicants and owners. The TMEP contains information about the trademark examination process, and outlines the procedures which examining attorneys are required or authorized to follow in the examination of trademark applications.
Link: TMEP online
An online system that retrieves documents from the USPTO’s electronic case file for any federal trademark or service mark applications and/or registrations. You can obtain information about a specific application by entering into TSDR the associated U.S. serial number, U.S. registration number, U.S. reference number, or international registration number of the record that you seek and click on “Status” or “Documents” to pull the relevant information.
Trademark applicants are expected to monitor the status of their applications to ensure that all documents sent to or received from the USPTO are timely acted upon. Check the status of your application at least every six months between the filing date of the application and issuance of a registration.
An administrative tribunal at the USPTO. It has jurisdiction over appeals from decisions of the Trademark Office, as well as opposition proceedings and cancellation proceedings.
Trademark Reporting And Monitoring – a system used by trademark examiners within USPTO.
Trade Related Aspects of Intellectual Property
Technical Support Staff — USPTO employees who support examination workflow processing
Trademark Work-at-Home – a telecommuting work alternative for Trademark employees
A term no longer in use — see standard character drawing
Uniform Domain Name Dispute Resolution Policy
United States Code — the federal law of the United States that includes the primary federal trademark statutes.
For the purpose of obtaining federal registration, “commerce” means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. “Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.
Generally, acceptable use is as follows: For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce. For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
If you have already started using the mark in commerce, you may file based on that use.
a trademark application based on actual use of the mark in commerce. Applicants who file based on use in commerce must be using the mark with the goods or services identified in the application at the time of filing the application.
See also Use-Based Trademark Application.
United States Postal Service
United States Patent and Trademark Office
United States Trade Representative — see International Intellectual Property for more
World Intellectual Property Organization — an intergovernmental organization of the United Nations system. WIPO is responsible for the promotion of the protection of intellectual property throughout the world and for the administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property.
a type of trademark comprised of text