The Trademark Law Dictionary: United States Domestic Trademark Law Terms & International Trademark Law Terms

By Rachel Gader-Shafran MA JD LLM

The Trademark Law Dictionary will be helpful for anyone who researches trademark law. With it, one can easily locate terms and quickly understand conceptsall in one volume. I am impressed with the enormous scope of this reference. The inclusion of international treaty terms is in itself a substantial contribution to the field.

Christine Haight Farley
Professor of Law
American University Washington College of Law

THE TRADEMARK LAW DICTIONARY
Part of The Law Dictionary Series
The One-Stop Source for Legal Terminology

JDs, LLMs & SJDs
Attorneys & Paralegals

FIND IT
Easy to Locate Terms & Cross-Referenced
KNOW IT
Clear & Easy to Understand
USE IT
Communicate Effectively & Efficiently
Apply Intricate Terminology & Underlying Legal Concepts

JDs, LLMs & SJDs need to be able to communicate effectively and efficiently. This Dictionary will afford Law Students and Law Professors with the resource they need to bring clarity to the burgeoning field of IP Law.

Practitioners & Paralegals of Intellectual Property law must understand, cross-reference and apply intricate terminology. The IP Dictionary gives the Practitioner & Paralegal the ability to easily locate terms and underlying concepts and apply them to their work product.

www.thelawdictionaryseries.com

• Language: English
• Publisher: iUniverse
• Release date: Sep 6, 2013
• ISBN: 9781491704684

Rachel Gader-Shafran MA JD LLM

Rachel Gader-Shafran has a JD from American University, Washington College of Law, cum laude, an MA in Applied Linguistics from UCLA and a BA in Political Science from UCSB. Ms. Gader-Shafran has taught as an Adjunct Professor at American University, Washington College of Law and has published The Patent Law Dictionary, The International Students’ Survival Guide to Law School in the United States, as well as, several articles on Intellectual Property Law. In the field of Applied Linguistics, she has taught and run programs at UCLA, Georgetown University, The George Washington University in Japan for Nippon Steel Corporation. She has several publications in the field of Applied Linguistics.

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CONTENTS

Introduction

Users Guide

Section One

United States Domestic Law Trademark Terms

Section Two

International Trademark Law Terms

Appendix I

Charts: United States Domestic Trademark Law Terms With Contents Of Acts & Websites

I      The Lanham Act: Trademark (15 U.s.c.) List Of All Titles

II      The Lanham Act: Trademark (15 U.s.c.) List Of All Titles With Sections

         Title I—The Principal Register

         Title II—The Supplemental Register

         Title III—Notice Of Registration

         Title IV—Classification

         Title V—Fees And Charges

         Title VI—Remedies

         Title VII—Importation Forbidden Of Goods Bearing Infringing Marks Or Names

         Title VIII—False Designations Of Origin And False Descriptions Forbidden

         Title IX—International Conventions

         Title X—Construction And Definitions

III.      Fast Chart: Title 15: The Lanham Act: Trademark Laws Of The United States Headings & Sections

IV.      Title 15: Subchapters I-Iii: By Section: §§1051-1129

V.      Anticybersquatting Consumer Protection Act: List: All Sections

VI.      Trademark Law Treaty Implementation Act (Tltia) List Of All Titles

Appendix II

Charts: Sources Of International Trademark Law Terms With Pertinent Materials &Websites

I.     Organizing Treaty

II.     Treaties Providing For The Protection Of Industrial Property

III      Treaties Facilitating The International Registration Of Industrial Property

IV.     Treaties Establishing International Classifications

Parts

VI.      The European Union Community Trade Mark: Legislation Establishing The Community Trade Mark System

Articles & Titles

VII.      The Inter-American Convention On International Commercial Arbitration

VIII.      International Trademark Treaties By Country Singapore

IX. Trademark & Cyberspace

DEDICATION

For Dave and Wendy who believed.

INTRODUCTION

"You take the uncompleted books of living authors, fresh from their hands, wet from the press, cut, hack, and carve them to the powers and capacities of your actors, and the capability of your theatres, finish unfinished works, hastily and crudely vamp up ideas not yet worked out by their original projector, but which have doubtless cost him many thoughtful days and sleepless nights; by a comparison of incidents and dialogue, down to the very last word he may have written a fortnight before, do your utmost to anticipate his plot—all this without his permission, and against his will; and then, to crown the whole proceeding, publish in some mean pamphlet, an unmeaning farrago of garbled extracts from his work, to which your name as author, with the honourable distinction annexed, of having perpetrated a hundred other outrages of the same description.

Now, show me the distinction between such pilfering as this, and picking a man’s pocket in the street: unless, indeed, it be, that the legislature has a regard for pocket-handkerchiefs, and leaves men’s brains, except when they are knocked out by violence, to take care of themselves."

—Nicholas Nickleby, Charles Dickens 1838

Dickens first realized that he was losing income because of the lack of international copyright laws in 1837 when The Pickwick Papers was published in book form.

In January 1842 Charles and Catherine Dickens traveled to the United States. Dickens wanted to see the sights, learn about the country and do research for a future series of articles. While on tour Dickens often spoke of the need for an international copyright agreement. The lack of such an agreement enabled his books to be published in the United States without his permission and without any royalties being paid.

Edgar Allan Poe was equally afflicted when his works were published in England without his consent. So too was Samuel Hopkins of Pittsford, Vermont when, in 1870, he became the first person to receive a patent in the United States.

In the international realm, all these people and more had their Copyrights, Patents and Trademarks protected in their own countries, but anyone with the wherewithal to buy a book, an invention or a product and a passage on a transatlantic ship could pilfer any ideas.

Not until 1883, when the Paris Convention for the Protection of Industrial Property signed, was an invention date of a patent filed in a member country recognized by all member countries. The United States became a Paris signatory four years later in 1887.

Although the Paris Convention for the Protection of Industrial Property covered Trademarks, the next agreement involving the United States was not entered into until 1910 with the signing of the Inter-American Convention for the Protection of Industrial Property

Only in 1886 when The Berne Convention was signed did the basis for mutual recognition of copyright between sovereign nations and the promotion of the development of international norms in copyright protection come into existence. The United States, however, took 102 years to become a Berne signatory in 1988.

On the domestic front, the US Constitution, Article I Clause 8 Section 8 states that The Congress shall have power… To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries… thus laying the foundation for all US Copyright, Patent, Trademark and Trade Dress Laws.

The first United States Patent Act in 1790 was a short act of seven sections entitled An act to promote the Progress of Useful Arts. Grants for patents for terms of up to fourteen years for inventions that were sufficiently useful and important were codified. This Act set the ground work for present-day Patent Acts.

The Copyright Act of 1909 first codified what was later revised several times and has become the Copyright Act Revision of 1976.

Obviously much has changed since the mid19th and early 20th Centuries. In the 21st Century, Attorneys are facing a constantly increasing body of U.S. Domestic statutes and case law, as well as, International Treaties and International case law with which they must contend in order to effectively serve their clients.

Numerous treatises have been published in the areas of Copyright, Patent, Trademark and Trade Dress Law. Yet, as the business of Intellectual Property Management is reaching its zenith no practical, one-stop lexicon to the legal terminology of these complex areas of Intellectual Property Law had been published.

This Dictionary was designed to remedy this situation.

Practitioners of Intellectual Property law must understand, cross-reference and apply intricate terminology. With Attorneys in mind, the IP Dictionary was created to give the Practitioner the ability to easily locate Intellectual Property law terms and underlying Intellectual Property law concepts. This is vital.

So too, Law Students and Law Professors need to be able to communicate effectively and efficiently. This Dictionary will afford Law Students and Law Professors with the resource they need to tackle the burgeoning field of IP Law.

I wrote this dictionary to remedy a gap in IP resources for Practitioners, Law Students and Law Professors. I encountered this gap while studying Intellectual Property Law in Law School.

I found that every time a new term arose in class I had to go to the original documents, all of which were tens if not hundreds of pages long. Then I had to find the right section and then find the right article. Having found the term and its definition I would blithely go on my way. Later I found I could not remember the definition or the article number. I began to keep my own Dictionary of terms.

Why was there no IP Dictionary? There was a Business Association Dictionary and Black’s Law Dictionary just to name two. Did every IP Law Student who was to become and IP Attorney have to invent her own wheel? It turned out that the answer was a resounding yes.

The idea for the cure was simple, the execution labor intensive, but the outcome very rewarding.

I hope all of those who use this Dictionary find this book to be an efficient and effective resource.

Rachel Gader-Shafran MA, JD, LLM

Washington, DC

2013

USERS GUIDE

THE TRADEMARK LAW DICTIONARY

UNITED STATES DOMESTIC TRADEMARK LAW TERMS & INTERNATIONAL

TRADEMARK LAW TERMS

This Dictionary compiles U.S. Domestic Law and International Law terms, concepts and case law. This Dictionary is divided into two sections; U.S. Domestic Law Terms and International Law Terms. Each definition is followed by a citation to the U.S. Statute and/or International Agreement, respectively, with Article numbers.

Appendices contain both U.S. Domestic Law and International Law charts with Tables of Contents for each and websites where documents can be accesses.

The definitions of terms are taken directly from the original documents. At the beginning of each definition a citation is given which indicates the source document(s) and the Article or Treaty.

If a term is defined in more than one source document all the definitions are provided under the one term and each is cited separately with multiple citations. Cross-references to related terms are provided where applicable and indented after the actual definition of the term.

Example: Multiple definitions for a single term:

Lanham Act (15 USC §1127); (AIA §2(4))

(15 USC §1127);

the intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations

(AIA §2(4))

means the Act entitled An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes, approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946).

Example: Cross-references to related term (See indented definition)

Appellate Board (India-TM-1999 §2(a); India-GI-1999 §2(1)(a))

means the Appellate Board established under section 83;

India-TM-1999 §83

Establishment of Appellate Board The Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under this Act.

This dictionary does not presume to include all the definitions of all the terms in the areas of Patents and it is advised that users consult all original documents.

SECTION ONE

UNITED STATES DOMESTIC LAW

TRADEMARK TERMS

A

Abandon (ed)(ment) (15 USC §1127(1-2)); (USPTO)

(15 USC §1127(1-2)) a mark shall be deemed to be abandoned if either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. Use of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

(USPTO) 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. See, Dead, Notice of Abandonment, Petition to Revive an Application

Acceptable Identification of Goods and Services Manual (USPTO) 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 manual is not exhaustive and is meant as a guide to aid applicants and their attorneys in formulating acceptable identifications of goods and/or services.

Actual Use (Generally) before the revision of the Lanham Act, an application was not allowed to be filed until after actual use in commerce of the mark had occurred in two or more states. In other words, protection did not begin until the mark was used in commerce and exposed to the public and possibly to competitors. Intent to Use allows an applicant to protect a mark during the developmental stages, before exposure to the public. See, Intent to Use, Trademark Registration

Aesthetic Functionality are features of a mark not protected by trademark law because they are needed to, 1) improve the sales of a product, or; 2) because the product the needs the particular component to operate. See, Utilitarian Functionality

AIS See, Automated Information System (USPTO)

Anticybersquatting Consumer Protection Act See, Cyberpiracy Protection for Individuals, Cyberpiracy Prevention, Bad Faith Intent

Allegation of Use (USPTO) a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. The allegation of use must include one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee. If filed before the examining attorney approves the mark for publication, the allegation of use is also called an Amendment to Allege Use. If filed after issuance of the Notice of Allowance, the allegation of use is also 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.

Any Person (15 USC §114 (1)(b)) includes the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the United States and with the authorization and consent of the United States, and any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.

Appeal (USPTO) 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. 15 U.S.C. Section 1070; 37 C.F.R. Section 2.142(a) and Trademark Trial and Appeal Board Manual of Procedure (TBMP) Section 1202.03.

Applicant (15 USC §1127) and registrant embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant. See, Registrant

Application (USPTO) a document by which a person requests a federal trademark registration. 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.

Arbitrary Marks (USPTO) 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).

Assignment (USPTO) 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. See, License, Goodwill

Automated Information System

(USPTO)

B

Bad Faith Intent (15 USC §1125 (d)(1B)) in determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—

(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;

(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section.

(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. See, Cyberpiracy Prevention

Blackout Period (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.

Blurring See, Dilution

Bona Fide Intent See, Registration of Trademarks

C

Cancelled (Trademark) (USPTO) 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 the Trademark Act, to a cancellation proceeding at the Trademark Trial and Appeal Board or to the outcome of a civil court action.

Cancellation of Registration (15 USC §1064(1-5)) a petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:

(1) Within five years from the date of the registration of the mark under this chapter.

(2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.

(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.

(5) At any time in the case of a certification mark on the ground that the registrant

(A) does not control, or is not able legitimately to exercise control over, the use of such mark, or

(B) engages in the production or marketing of any goods or services to which the certification mark is applied, or

(C) permits the use of the certification mark for purposes other than to certify, or

(D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies: Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied

Certification Mark (15 USC §1127) (USPTO)

(15 USC §1127)

means any word, name, symbol, or device, or any combination thereof—(1) used by a person other than its owner, or

(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, 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.

(USPTO)

any word, name, symbol, device, or any combination, 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.

Certificate of Registration (USPTO) official document from the USPTO evidencing that a mark has been registered.

Claim, See, Registration as Constructive Notice of Claim of Ownership

Classification of Goods and Services (USPTO) Goods and services are classified by an international system, according to international treaties to which the United States is a signatory. All goods and services included in trademark applications are classified by the Office according to this system. For a listing of the classes, see the Trademark Acceptable Identification of Goods and Services Manual. See, Goods, Identification of Goods and/or Services, Service Mark, Services

Coat of Arms See, Flag, Coat of Arms, Insignia

Collective Mark (15 USC §1127); (USPTO)

(15 USC §1127)

means a trademark or service mark—

(1) used by the members of a cooperative, an association, or other collective group or organization, or

(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, and includes marks indicating membership in a union, an association, or other organization.

(USPTO)

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. See, Collective Marks and Certification Marks Registrable

Collective Marks and Certification Marks Registrable (15 USC §1054) subject to the provisions relating to