Glossary Terms
In this glossary, you will find an extensive collection of definitions, explanations, links, and insights into the various facets of intellectual property protection.
From common terms to more specialized jargon, we strive to make the content accessible and informative for both seasoned professionals and those new to the world of intellectual property.
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The application has been abandoned for one of several reasons, including:
Applicant’s failure to respond within six (6) months
Applicant’s failure to submit the required information or documents
Applicant’s voluntary withdrawal
The result of a successful challenge (Opposition) by a third party
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The mark has been approved for registration and has passed the Opposition period. The USPTO is awaiting the submission of a Statement of Use by the owner.
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The party that filed the application to register the mark.
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“An Introduction to Artificial Intelligence for Federal Judges” by James E. Baker, Laurie N. Hobart, and Matthew Mittelsteadt (Federal Judicial Center), February 2023 https://www.fjc.gov/sites/default/files/materials/47/An_Introduction_to_Artificial_Intelligence_for_Federal_Judges.pdf
“Generative Artificial Intelligence and Data Privacy: A Primer”, by Kristen E. Busch (Congressional Research Service), May 2023 https://crsreports.congress.gov/product/pdf/R/R47569
“Defining Data: Improving Terminology Around Generative AI Models” by Franklin Graves and Elizabeth Rothman, June 2023 https://ipwatchdog.com/2023/06/21/defining-data-improving-terminology-around-generative-ai-models/id=162562/
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Assigning the trademark to another person. Documents that have been filed with the USPTO that affect title to the mark. While most involve the assignment of all rights, title, and interest in the mark, entries also record mergers, security interests and other transactions.
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Decentralized technology spread across many computers that records transactions on an immutable ledger. It functions as a security blanket for cryptocurrencies, NFTs, and other items.
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Used in a copyright context to include the following rights afforded to a copyright owner:
(1) to reproduce the copyrighted work; (2) to make derivative works (such as a movie from a novel); (3) to distribute copyrighted works to the public; (4) to perform, publicly, certain works (such as music); and, (5) to display, publicly, certain works (such as paintings).
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An administrative proceeding before the Trademark Trial and Appeal Board. The proceeding shares many characteristics with federal court litigation, though usually less expensive and shorter in time. A petition for cancellation may be filed by any person that believes he or she will be damaged by a mark's registration.
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The registration has been cancelled by the USPTO for one of several reasons, the most common being the Registrant’s failure to file a Section 8 Affidavit of Use between the 5th and 6th anniversaries of the Registration Date.
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Creative Commons designation enables scientists, educators, artists and other creators and owners of copyright- or database-protected content to waive those interests in their works and thereby place them as completely as possible in the public domain, so that others may freely build upon, enhance and reuse the works for any purposes without restriction under copyright or database law.
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A mark used to designate that the goods or services associated with the mark have met certain specified criteria, such as those of quality, origin, or method of manufacture. A certification mark is not used by its owner, but rather by authorized users. Also, a certification mark does not distinguish the goods/services of one person from those of another person, but instead indicates that the goods/services of authorized users are certified as to a particular aspect of the goods/services.
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A trademark or service mark used by an organization to distinguish the goods or services of the organization’s members from non-member goods or services.
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A mark used to designate membership in an organized group.
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The date the mark was first used in commerce that Congress can regulate (e.g., commerce across state, territorial, or international lines).
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Legal rights that do not require formal registration to enforce them. Though proving such rights can be difficult, and the initial burden is on the alleged owner.
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Copyright Claims Board is an alternative to federal court for resolving copyright disputes less than $30,000. Generally it is a less expensive and likely quicker process than resolving these types of disputes in federal court. Congress passed the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act) that directed the U.S. Copyright Office to form the Copyright Claims Board (CCB). Claims will likely start to be accepted in spring/summer 2022.
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The party designated to receive correspondence from the USPTO regarding the application, registration, or TTAB proceeding.
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https://www.c-span.org/video/?452837-1/senate-banking-panel-explores-cryptocurrencies-blockchains
OCTOBER 11, 2018, Cryptocurrencies and Blockchains
Economist Nouriel Roubini and the Coin Center’s Research Director, Peter Van Valkenburg, testified at a Senate Banking, Housing and Urban Affairs Committee hearing on cryptocurrency and blockchain technology. The hearing focused on securing and regulating the crypto-industry.
https://www.nytimes.com/interactive/2022/03/18/technology/cryptocurrency-crypto-guide.html
https://penntoday.upenn.edu/news/beginners-guide-cryptocurrency
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Cybersquatting is the act of registering domain names that closely resemble existing trademarks or brands, with the intent to profit from the confusion or sell them back to the rightful owners at a higher price.
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https://onezero.medium.com/why-decentralization-matters-5e3f79f7638e
Miles Jennings, Principles & Models of Web3 Decentralization https://future.com/web3-decentralization-models-framework-principles-how-to/
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Decentralized Autonomous Organization is a group of people with a shared goal and no central leader that uses a blockchain to influence decisions.
https://a16zcrypto.com/wp-content/uploads/2022/06/dao-legal-framework-part-1.pdf
https://a16zcrypto.com/wp-content/uploads/2022/06/dao-legal-framework-part-2.pdf
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Decentralized Finance refers to a financial system that operates on blockchain technology, enabling peer-to-peer transactions and eliminating the need for traditional intermediaries like banks.
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Identifies the various components of a mark that has a design feature. Descriptive statements are most often present when the presentation of the mark could be subject to multiple interpretations.
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If the mark includes a design element, the USPTO will assign one or more six-digit codes to describe the design. Based on codes developed by the World Intellectual Property Organization (WIPO), each entry also includes an equivalent literal description of the specific design feature.
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A design mark is a type of trademark that protects the visual design, appearance, or ornamentation of a product or service, distinguishing it from others in the marketplace.
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The portion(s) of a mark that are disclaimed by the owner as not subject to its exclusive use. This normally includes matters that are considered descriptive of the goods or services.
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The Digital Millennium Copyright Act is a United States copyright law that provides a framework for protecting online content and intellectual property, while also establishing provisions for addressing copyright infringement on the internet.
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Ethereum Name Service is a decentralized naming system built on the Ethereum blockchain, allowing users to replace complex wallet addresses with human-readable domain names, simplifying transactions and interactions within the Ethereum ecosystem.
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A legal professional employed by the USPTO to review trademark applications and determine the eligibility of proposed marks for registration based on legal requirements and potential conflicts with existing trademarks.
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The registration has expired, normally because the owner failed to renew it in a timely manner or the USPTO has refused renewal.
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A legal process that allows interested parties to challenge and potentially remove a registered trademark from the official records if they believe it was improperly registered or should no longer be protected.
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The date that the USPTO received a complete application that contained all required materials and assigned a Serial No. to the application.
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This indicates the statutory basis that the owner of the mark has relied on for filing the application. Applications may be based on:
A good faith intent to use the mark on the stated goods/services (1(b))
Actual use of the mark in commerce (1(a))
Ownership of a non-US (International) registration or priority application for the mark (44(e) or 44(d))
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The date the mark was first used anywhere on or in association the goods/services.
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General Data Protection Regulation is mandatory in the European Union (EU) as of May 25, 2018 to protect the rights of its residents and their personal data. GDPR applies to any organization who obtains personal data from residents within the EU, even if your business is outside of the EU.
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The potential mark cannot be registered as a trademark because it does not serve as a distinctive source identifier
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A description of the goods and/or services on or in connection with which the mark is used.
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Copyright owners may register groups of certain kinds of works together in one application at a significantly discounted rate compared to registering each work individually. There are 3 main types of group registrations: Published, Unpublished, and Photographs.
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A copyright owner can register up to 750 photographs together through this application. All of the photographs must either be published or unpublished.
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An incontestable trademark is a status granted to a registered trademark by the U.S. Patent and Trademark Office (USPTO) after five years of continuous use, providing the trademark owner with stronger legal protections against certain challenges to the validity of the mark.
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Initial interest confusion is a concept in trademark law where the unauthorized use of a similar mark creates confusion among consumers at the first point of contact, even if the confusion is later cleared up before an actual purchase or transaction occurs.
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An injunction is a court order that requires an individual or entity to cease certain actions or behaviors, or to take specific actions, typically to prevent harm, maintain the status quo, or enforce rights during ongoing legal proceedings.
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The International Classification schedule contains 45 classes of goods and services. This schedule is the primary classification system used by the USPTO. In a trademark application, the applicant must select one or more classes depending on the goods or services identified in it.
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The Internet of Things refers to the interconnected network of physical devices, objects, and sensors that can collect and exchange data over the internet, enabling them to communicate and interact with each other and with users.
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The Lanham Act (aka the United States Trademark Act of 1946) is a U.S. federal law that governs trademark registration, protection, and enforcement, providing a legal framework for trademark owners to safeguard their rights and prevent unfair competition in the marketplace.
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The party that was recognized as the owner of the mark when the latest action was taken on the registration.
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The Madrid Protocol is an international treaty that facilitates the streamlined process of filing and managing trademark applications in multiple countries through a single application, simplifying the registration and protection of trademarks worldwide.
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A trademark or mark for short is a distinctive sign, symbol, word, or design that identifies and distinguishes goods or services of one seller or provider from those of others in the marketplace.
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Multisig, short for "multi-signature," is a security feature in blockchain technology that requires multiple authorized parties to approve and sign a transaction, enhancing the security and control over digital assets.
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The Music Modernization Act is a U.S. copyright law that aims to modernize and streamline the licensing and royalty distribution process for digital music, benefiting songwriters, performers, and digital music providers.
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Non-Fungible Token is a unique digital asset or token that represents ownership of a specific item, artwork, or collectible on the blockchain, making it indivisible and distinguishable from other tokens.
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Information relating to the home country application or registration that is claimed by a non-US applicant and that normally constitutes as the basis for the filing of the US application under Section 44 of the trademark statute.
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There is a common perception that the blockchain technology that underpins NFTs leaves the digital assets impervious to corruption and is permanent. This is true in terms of the smart contract, however, there is a potential vulnerability that exists in the way that digital artwork (content and metadata) may be stored for some projects.
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A licensing approach that allows the use and distribution of certain trademarks in connection with open-source software, subject to specific conditions outlined by the trademark holder.
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A third party has filed an Opposition proceeding with the Trademark Trial and Appeal Board (TTAB) in an attempt to block the proposed registration of the mark.
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Third parties can file an Opposition with the TTAB to oppose registration of a published trademark.
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The Paris Convention for the Protection of Industrial Property is an international treaty that establishes a framework for the protection of intellectual property rights, including patents, trademarks, and industrial designs, fostering cooperation among member countries and ensuring certain minimum standards for IP protection.
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The application has been granted a filing date and is in the examination process.
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Discloses information you collect, why you collect it, and how a user can update, manage or delete the information collected.
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Public domain refers to creative works, such as books, music, and art, that are not protected by copyright or intellectual property laws, making them freely available for anyone to use, share, and modify without permission or payment.
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The date when the mark was published in the Trademark Official Gazette. The date signals the beginning of the 30-day period in which third parties can oppose the proposed registration of the mark by filing an Opposition proceeding before the TTAB.
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The application has been examined, passed by the Examining Attorney, and published for opposition in the Trademark Official Gazette. Parties who believe that they will be damaged by the registration of the mark have 30 days from the Published Date to oppose its registration.
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A work is considered published when the work is distributed to the public by sale or other transfer of ownership, or by rental, lease, or lending. The Copyright Office leaves the determination of whether or not a work is published to the applicant. The key question is whether the author or copyright owner intended distribution, or intended to offer the copies or phonorecords for further distribution, public performance, or public display by a group of persons, or did the author or copyright owner only authorize public performance or public display.
Examples of what counts as published work:
Distributing copies of a leaflet on a street corner.
Giving away copies of a photograph without further restriction.
Posting images to a private section of their website so a client can review, download, or order a print.
Selling the original copy of a painting at an auction.
Selling a product with copyrightable artwork on the packaging and label.
Putting app on a public website for people to purchase and download the app.
Examples of what counts as unpublished work:
An online advertisement that offers to sell an ebook to the public but does not make the ebook available for download.
Posting an photograph to a social media site for the purpose of public display/self-promotion.
Displaying a painting in a museum, gallery, or lobby of a building (regardless of whether the copyright owner prohibited others from taking photos or reproductions of that work).
Performing a song at a concert/TV/radio, regardless of the size of audience.
Showing a motion picture in a theater/TV.
Performing a play or choreographic work.
Delivering a speech, lecture, or sermon at a public event.
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The USPTO maintains Principal and Supplemental Registers. Marks on the Supplemental Register are inherently flawed marks and are afforded more limited rights than those on the Principal Register.
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The date the application was approved for registration and the registration certificate was issued.
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The mark has been registered and a certificate has been issued by the USPTO.
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The party that owned the mark at the time of registration and received the registration certificate.
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A unique number assigned to each new trademark registration when it is issued.
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Right to control the commercial use of one’s identity.
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A unique number assigned by the USPTO to each complete trademark application when it is filed.
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A word, symbol, slogan or combination thereof used in connection with the sale or advertising of services (in contrast to tangible goods) to identify and distinguish the services of one entity from those of another.
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A streamline application for registering one work by one author. This means that a work cannot be registered using this application if it was created jointly by two or more authors, is a “work made for hire," or incorporates material created by someone else.
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Programs that automatically run when certain predetermined conditions are met.
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In the context of trademark law, a specimen is a physical or digital sample of how a mark is being used on goods or services, submitted as evidence during the trademark application process to demonstrate its actual usage in commerce.
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This is the default application for registering a single work. This application is used to register a variety of types of works including a work created by a single author, a work created jointly by two or more authors, a work made for hire, a derivative work, a compilation (a work formed by a collection and assembling of preexisting materials selected, coordinated, or arranged in a way that the work as a whole constitutes an original work), a collective work (a compilation of separate works assembled together to create a collective whole), and a unit of publication (works that are physically packaged or bundled together as a single unit–i.e., package for greeting cards).
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A declaration filed with the U.S. Patent and Trademark Office (USPTO) by a trademark applicant, confirming the actual commercial usage of the mark in commerce for the specified goods or services listed in the application.
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The most recent status of the mark with the USPTO.
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Top Level Domain Name is the highest level in the hierarchical Domain Name System (DNS) of the internet, located to the right of the dot in a web address, such as .com, .org, or .net.
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A word, symbol, slogan or combination thereof used to identify the source of a tangible good in the marketplace.
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A publication issued by the USPTO that serves as an official public record and to provide notice to the public on pending trademark applications and registered trademarks.
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Provides the English equivalent and/or pronunciation (transliteration) of non-English words and non-Latin characters that appear in the mark.
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Trademark Trial and Appeal Board, an administrative court in the USPTO that is responsible for deciding proceedings such as registration disputes, oppositions, cancellations, and appeals.
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Uniform Dispute Resolution Policy is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes over domain names that involve allegations of abusive registration, cybersquatting, or trademark infringement.
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Unfair competition is not clearly defined by law, but interpretations include that it includes infringement of unregistered marks and false advertising or simply any unfairness conduct in trade. An interesting review of the history of unfair competition can be found here: https://www.inta.org/wp-content/uploads/public-files/resources/the-trademark-reporter/TMR-Vol-110-No-04-082720-4PM-Secured-1.pdf
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Up to 10 unpublished works can be registered together through this application. All works in the group must be unpublished, fall within the same classification (i.e., performing arts, sound recording, visual arts, literary work), and have the same author or co-authors.
Examples of what counts as unpublished work:
An online advertisement that offers to sell an ebook to the public but does not make the ebook available for download.
Posting an photograph to a social media site for the purpose of public display/self-promotion.
Displaying a painting in a museum, gallery, or lobby of a building (regardless of whether the copyright owner prohibited others from taking photos or reproductions of that work).
Performing a song at a concert/TV/radio, regardless of the size of audience.
Showing a motion picture in a theater/TV.
Performing a play or choreographic work.
Delivering a speech, lecture, or sermon at a public event.
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Identifies the class(es) that a mark has been assigned to in the US Classification system.
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United States Patent and Trademark Office, the federal agency charged with the administration of the trademark registration process.
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The Visual Artists Rights Act is a U.S. federal law that grants certain moral rights to visual artists, protecting their rights of attribution and integrity for their original works of visual art.
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Web3 refers to the next generation of the internet, characterized by decentralized, blockchain-based protocols and technologies that aim to create a more open, secure, and user-centric online ecosystem, enabling peer-to-peer interactions and ownership of digital assets.
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World Intellectual Property Organization (WIPO), a specialized agency of the United Nations responsible for promoting the protection of and enforcement of intellectual property rights globally.
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A word mark is a type of trademark that consists of text or words only, without any additional design, symbols, or graphics.
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A work-for-hire is a legal arrangement where the employer or commissioning party retains the copyright and ownership of a creative work produced by an individual or contractor, rather than the creator retaining those rights.