[syndicate] Re: what the fuck ?

[James Allan]

Hmm. I sense a disturbance in the network....and christen it BoyWars
(that's trademarked btw).

So, for future reference and semi-legal sounding correspondance here's a
handy glossary from the good people at the International Tradmark
Association (http://www.inta.org/info/glossary.html).


....................................................

A

Abandonment
Discontinuation of use of a trademark with no intent to resume such use


Actual Confusion
When a consumer is in fact confused as to the source of goods or services
because of similarity between two marks


Acquiescence
Failure to take action against infringing parties, or other actions
indicating, implicitly or explicitly, that nothing will be done about
infringing activities. Can lead to abandonment of trademark rights.


Acquired Distinctiveness
Marks that are not inherently distinctive (for example, those that are
merely descriptive, surnames, or geographic indicators) may nevertheless
become capable of serving as trademarks by becoming associated in the mind
of the relevant public with a particular source of goods and services as a
result of extensive advertising and widespread use. This is called
“acquired distinctiveness” or “secondary meaning.”


Alternative Dispute Resolution (ADR)
Utilizing processes to resolve disputes outside traditional litigation
channels


Amendment to Allege Use (AAU)
Attestation that the mark that is the subject of an intent-to-use (ITU)
application has been used in interstate commerce; filed before the USPTO
has issued a Notice of Publication.


Anticybersquatting Consumer Protection Act (ACPA)
A 1999 amendment to the Lanham Act providing a cause of action against
cybersquatters, i.e., those who register others’ trademarks as domain
names with bad-faith intent to profit.


Anti-Dilution Statutes
State and federal laws that enable the owner of a famous mark to prevent
third-party uses of the mark that might tarnish the mark or blur its
distinctiveness


Application
Request to register at a Trademark Office


Arbitration
The referral of a dispute to one or more impartial persons for final and
binding determination


Arbitrary Mark
Marks that are existing words with no relation to the goods or services
(APPLE for computers and TIDE for detergent)


Assignments
Transfer, sale


Availability Search or Clearance Search
Review of existing trademarks owned by others (registered or not) to
determine whether adoption and use of a trademark might pose a risk of
infringement liability, and whether the mark may be registrable. Can be
either preliminary (“screening” or “knockout” search) or comprehensive
(“full”).


B
Bad faith
Acting with intent to mislead or deceive or to neglect a duty or
contractual obligation


Blurring
Weakening the distinctiveness of a famous trademark; one form of dilution


Bona Fide
Latin for “good faith.” In or with good faith; openly and sincerely,
without intent to deceive or defraud


Brand
The commercial “persona” of a particular product or service, established
by marketing and advertising; often captured via one or more trademarks


C
Cause of Action
Basis for filing a lawsuit, or a claim asserted in a lawsuit, deriving
either from statutory or common law


Cease and desist letter
A letter sent by a trademark owner demanding that another immediately stop
using its trademark, typically accompanied by at least the implicit threat
of a lawsuit.


Channels of Trade
The media in which the goods and/or services associated with a trademark
are advertised; the vehicles used to market and/or sell them; and/or the
target market to which they are sold. One of the Polaroid Factors used to
analyze likelihood of confusion between two marks.


Class
Category of goods or services adopted as an international standard in most
countries


Coexistence agreement
Agreement by two or more persons that similar marks can coexist without
any likelihood of confusion; allows the parties to set rules by which the
marks can peacefully coexist.


Commerce Clause
Third paragraph of Article I, Section 8 of the United States Constitution,
empowering Congress “To regulate Commerce with foreign Nations, and among
the several States, and with the Indian Tribes.”


Common Law Trademark
The owner of a trademark that is used in commerce acquires common law
rights in that mark that can be enforced in the courts, whether or not the
mark has also been registered


Community Trade Mark (CTM)
Single unitary right covering all countries in the European Union.
Accessible to all Paris Convention Countries, the members of the World
Trade Organization, and on the basis of reciprocity with all European
Union member countries


Comprehensive (“Full”) Search
Thorough review of existing trademarks owned by others (registered or not)
to determine whether adoption and use of a trademark might pose a risk of
infringement liability, and whether the mark may be registrable.


Concurrent use agreement
Agreement by two or more persons to use the same or similar mark in
connection with the same or similar products or services; usually limited
by geographic boundaries.


Constructive use date
The date on which use of a trademark is deemed to have occurred, even
without actual use. For example, the filing date of an intent-to-use
(“ITU”) application will be treated as if it were the actual date of first
use, if and when the ITU application ripens into a registration.


Copyright
Ownership rights in original works of authorship, granting the owner
exclusive control over distribution, display, copying, performance, and
adaptation of those works


Corporate Name
The name under which a corporation conducts business, also known as a
trade name. It may or may not also be used as a trademark to identify the
corporation’s goods and services.


Counterfeiting
Deliberate use of a spurious mark which is identical with or substantially
indistinguishable from a registered mark


CPR Institute for Dispute Resolution (CPR)
ADR provider approved by ICANN for domain name disputes


D
Deceptive
Likely to deceive the public as to the origin and/or nature of the goods
or services


Declaratory judgment action
A determination by a court of the legal rights and responsibilities of the
parties. Typically, a party sued for trademark infringement will
counterclaim for a declaration of non-infringement. Under proper
circumstances, a party may request such a declaration in anticipation of
being sued.


Defensive Registration
Special category of trademark registrations that, although generally not
used, aims to protect the primary trademark


Descriptive Mark
Marks having direct reference to the nature and/or other characteristics
of the goods or services


Details (Of the Applicant)
The full name, address, and nationality of the applicant


Dilution
Unauthorized use of a highly distinctive mark by another in a manner which
tends to blur its distinctiveness or tarnish its image even without any
likelihood of confusion


Distinctive
Marks that present a unique commercial impression


Domain Name
A component of an Internet “address” or URL (Universal Resource Locator)
consisting of a top-level domain or “suffix” (e.g., “.com,” “.org,” etc.)
and a second-level domain chosen by the owner of the website. For example,
in INTA’s URL, http://www.inta.org, the domain name is “inta.org.”


Due diligence
The level of prudence, activity, or care properly to be expected from a
reasonable and prudent person under particular circumstances, not measured
by an absolute standard but determined under the facts of the situation.
In trademark law, the level of caution to be exercised, when adopting a
new trademark, to avoid infringing the rights of others.


Duration
Life of a trademark registration, indefinitely renewable


E
Estoppel
Equitable legal doctrine whereby a party is prevented by his own past
conduct from claiming a right or entitlement, to the detriment of some
other party that was entitled to, and did, rely on that conduct


Examination
Analysis carried out by a national or regional trademark office to
determine the registrability of a trademark


F
Fanciful or Coined Mark
A mark that is made up and has no built-in meaning (KODAK for cameras and
EXXON for petroleum)


Fair Use
Use of another’s trademark that is (a) descriptive of one’s own products;
(b) other than use as a trademark; and (c) undertaken in good faith.
Usually considered an absolute defense to a claim of trademark
infringement.


Federal Trademark Dilution Act
Section 43(c) of the Lanham Act, creating a cause of action that enables
the owner of a famous mark to prevent third-party uses of the mark that
might tarnish the mark or blur its distinctiveness. See 15 U.S.C. §
1125(c)


File History
The record of official filings and actions in the USPTO related to the
prosecution of a trademark application


Filing
To deposit a trademark application at the Trademark Office


Franchise
A license from the owner of a trademark permitting another to sell a
product or service under that trademark, usually in accordance with
methods and practices established by the franchisor.


G
Generic Term
A word or phrase that is or has come to be the common term associated with
or known as a particular category of goods or services to which it
relates, thereby ceasing to function as an indicator of origin


Genericide
The process by which a mark loses its distinctiveness, and hence its
ability to function and be legally protected as a trademark. This usually
occurs when a mark is used improperly, and over a long period of time, as
the common descriptive (“generic”) name for a type or category of goods or
services, rather than as an identifier for the goods or services of a
particular party.


Goods
Products identified by a trademark


Goodwill
Value of business attached to a trademark


Gravamen
The gist or thrust of a grievance or complaint


H
Home Registration or Application
Registration or application granted or filed in the country of origin.


I
Identity
The commercial “persona” of an individual, which may be protectable under
the right of publicity


Incontestability
State of a trademark registration, after a certain time and under given
conditions, becoming unattackable to varying degrees


Infringement
Violation of trademark rights


Inherently distinctive
Marks that communicate to the consumer, when encountered for the first
time, that they are identifying the source of goods and/or services rather
than merely describing the goods and services themselves. Inherently
distinctive marks can be further classified as suggestive, fanciful, or
arbitrary. Marks that consist of generic or merely descriptive terms are
not inherently distinctive.


Injunctive relief
A court order preventing or mandating certain conduct, either on a
temporary basis pending a full determination of the merits of a lawsuit,
or on a permanent basis following such a determination. Typically, in
trademark, an order barring use of a trademark.


Intent to Use (ITU) Application
An application for a federal registration made to the USPTO for a
trademark that is not yet being used. Affords an opportunity to see if the
USPTO will register the mark before investing in marketing and promoting
the mark; also secures an early priority date (normally a priority date is
not set until actual use).


International Classification
An internationally agreed system by which “goods” are grouped into 34
different classes, generally sorted by the material from which the goods
are made and/or the use to which the goods are put, and “services” are
grouped into 11 different classes, generally sorted by the type of service
provided. The purpose of the system is to enable trademarks to be searched
and compared for possible conflicts.


International Registration (IR)
Trademark registration obtained from the World Intellectual Property
Organization (WIPO) pursuant to the Madrid Agreement and/or the Madrid
Protocol


International Trademark Association (INTA)
Worldwide association of trademark owners, attorneys, and other professionals


Internet Corporation for Assigned Names and Numbers (ICANN)
An international body that oversees the assignment of Internet domain names


Interstate Commerce
Commerce between persons or places in two or more states; activity that
may be regulated by Congress pursuant to the Commerce Clause of the U.S.
Constitution


L
Laches
Equitable legal doctrine whereby a party is prevented by his own delay or
inaction from claiming a right or entitlement, to the detriment of some
other party that was entitled to, and did, rely on that delay or inaction


Lanham Act
The U.S. federal statute governing trademarks and unfair competition; also
known as the Trademark Act. See 15 U.S.C. §§ 1051 et seq


License
Proprietor's authorization to third parties to use its trademark


Likelihood of Confusion
The prospect that consumers might be confused as to the source of goods or
services represented by two similar trademarks; the basic standard for
trademark infringement


Likelihood of Dilution
The prospect that a famous mark might be tarnished, or its distinctiveness
blurred, by another mark. Recently rejected by the U.S. Supreme Court as a
basis for liability under the Federal Trademark Dilution Act; still viable
under many state antidilution laws


M
Madrid Protocol
Trademark treaty enacted in 1995 (in conjunction with the 1891 Madrid
Agreement), enabling trademark owners to obtain a single International
Registration that can extend protection to any country that has signed the
Protocol.


Mark
Any trademark, service mark, certification mark, or collective mark


Marking
Indication on the goods, or in connection with services, that a mark is
registered or that rights are claimed in the mark either by the
international symbol ® (for registered marks) or by other symbols or
wording permitted or required by the law of each country


Mediation
A meeting between the disputants and a neutral whose role is to help the
parties explore issues, needs and settlement options


Mismarks
Trademarks designed to be confusingly similar to existing marks, for the
purpose of passing off one’s goods or services as those of another


O
Opinion Letter
Written analysis provided by an attorney to a trademark owner or
prospective trademark owner, analyzing the results of a
clearance/availability search and identifying the legal risks associated
with using a particular trademark, such as the possibility of infringing
or diluting an existing mark and hence being sued, and the likelihood that
an application for trademark registration will be rejected.


Oppose
To contest or object to an application at the Trademark Office level


P
Patent
The exclusive right to make, use or sell an invention with respect to
devices or methods that are deemed useful, novel, and non-obvious


Polaroid Factors
Factors typically analyzed by courts to determine whether a likelihood of
confusion exists between two trademarks (named after the famous case,
Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert.
denied, 368 U.S. 820 (1961), in which they were articulated). They
include: (a) the strength of the plaintiff’s mark; (b) similarity of the
marks; (c) relatedness of the goods or services; (d) overlap in marketing
channels for the goods and services; (e) likelihood that the plaintiff
might enter the market for the defendant’s goods and services; (f)
evidence of actual confusion; (g) the defendant’s intent in adopting its
mark; (h) the sophistication of the target market, i.e., the degree of
care consumers are likely to exercise in distinguishing between goods and
services from different sources.


Policing
Monitoring the marketplace for unauthorized or improper uses of a
trademark, and pursuing enforcement of one’s rights accordingly


Preliminary Injunction
A court order temporarily preventing or mandating certain conduct pending
a full determination of the merits of a lawsuit. Typically, in trademark
law, an order barring use of a trademark pending resolution of an
infringement action.


Preliminary (“Screening”; “Knockout”) Search
Initial availability/clearance search, aimed at spotting
readily-identifiable conflicts at the outset so as to avoid the need for a
comprehensive (“full”) search. Often used to narrow a list of potential
trademarks under consideration.


Presumption of Abandonment
Statutory presumption that a party that has not used its mark for two
years has abandoned its rights in the mark, i.e., has discontinued use
with intent not to resume use


Prima Facie
Latin for “on the face of it”; a fact or argument presumed to be true
unless disproved by evidence to the contrary


Principal Register
The primary registry of trademarks maintained by the USPTO. To qualify for
registration on the Principal Register, a trademark must be distinctive
and currently in use. Trademarks that qualify for Principal Register
registration receive all the benefits of registration, whereas those
registered on the Supplemental Register do not.


Prior Use
Marketing or selling goods or services with the mark before, or in absence
of, registration


Priority/Priority Date
The date that determines who has superior rights as between two parties
using the same mark for similar goods and/or services. In the United
States, the priority date is generally the date a trademark was first used
in commerce (but see Constructive Use). In most other countries, the
priority date is the date of the first filing of a trademark application.


Proof of use
Proof that a mark has been used in commerce in connection with the
identified goods and/or services; usually, a specimen of the mark as used
in commerce and a signed declaration from the applicant attesting to the
date of first use. May be filed in conjunction with an application based
on use in commerce, or as part of a Statement of Use or Amendment to
Allege Use in conjunction with an Intent-to-Use (ITU) Application.


Q
Quality Assurance
Obligation of a trademark owner to ensure that goods and services sold
under its trademark (by licensees, for example) conform to a consistent
standard of quality


Quasi-Property Rights
>From the Latin quasi, meaning “as if”; “almost as it were”; “analogous
to.” Hence, similar to property rights


R
® symbol
A symbol attesting that a trademark or service mark has been registered


Record
To register any documents with the Trademark Office relating to the
ownership or scope of rights of the mark


Rectify
To cancel, revoke, or expunge a trademark registration (peculiar to the
United Kingdom and a few other British law countries)


Registration
Grant of a trademark certificate by national or regional authorities


Renewal
Prolongation of registration for an additional period of time


Royalty
Payment made by a licensee in return for permission to use another’s
trademark


S
Search
Investigation of a country’s or region’s trademark register for similar
marks as used with similar goods or services to determine the availability
of a trademark for registration and use


Secondary Meaning
Marks that are not inherently distinctive (for example, those that are
merely descriptive, surnames, or geographic indicators) may nevertheless
become capable of serving as trademarks by becoming associated in the mind
of the relevant public with a particular source of goods and services as a
result of extensive advertising and widespread use. This is called
“acquired distinctiveness” or “secondary meaning.”


Security Interest
Interest in property obtained pursuant to an agreement whereby the
property serves as collateral for a loan. Trademarks and trademark
registrations can be used in this manner.


Service Mark
Marks used in the sale or advertising of services to identify and
distinguish the services of one company from those of others


Services
Activities (physical or intellectual) identified by a trademark


Source Identification
The basic function of a trademark: denoting the unique source of the
particular goods or services to which the mark pertains


Statement of Use (SOU)
Attestation that the mark that is the subject of an intent-to-use (ITU)
application has been used in interstate commerce; filed after the USPTO
has issued a Notice of Publication.


Suggestive Mark
Marks that suggest some attribute of or benefit from the goods or
services, but do not describe the goods themselves (COPPERTONE for tanning
lotion and WHIRLPOOL for washers)


Supplemental Register
A secondary registry of marks maintained by the USPTO, often for marks not
considered sufficiently distinctive to be listed on the Principal
Register. Though marks on the Supplemental Register do not receive all the
benefits of registration available to marks on the Principal Register,
registration on the Supplemental Register does allow the owner to use the
® symbol next to its mark, and also provides notice to potential users
that the mark is already being used.


T
Tarnishment
Weakening the distinctiveness of a famous trademark, usually through
inappropriate or unflattering associations; one form of dilution


Temporary restraining order (TRO)
A court order temporarily preventing or mandating certain conduct pending
further determination of the merits of a lawsuit. Typically, in trademark
law, an order barring use of a trademark at the outset of an infringement
action.


Trade Dress
The overall graphics and shape of the product or its packaging


Trade Name
The name used by a company in its business activities


Trade Secret
Any knowledge, device, formula, compilation of information, or the like,
that is used in business, is not known to others, and gives a competitive
advantage to the owner


Trademark
Any word, name, symbol, device, slogan, package design or combination of
these that serves to identify and distinguishes a specific product from
others in the market place or in trade. Even a sound, color combination,
smell or hologram can be a trademark under some circumstances. The term
trademark is often used interchangeably to identify a trademark or service
mark. (Depending on the country you are in, this term may be spelled
trade-mark, or trade mark.)


Trademark Attorney
An expert on trademarks who is qualified to practice before a country’s
Trademark Office and may be licensed to practice law in some countries.
Depending on the country, a trademark attorney is referred to as a
trademark practitioner, trademark agent, or trademark consultant.


Trademark Law Revision Act
1988 revision of the Lanham Act


Trademark Manual of Examining Procedure (TMEP)
Codification of the standards and procedures used by USPTO Examining
Attorneys in the review of trademark applications


Trademark Law Treaty (TLT)
1996 treaty that harmonized requirements and simplified administrative
procedures for international trademark registrations


Trademark Treaty Implementation Act
Amendment to the Lanham Act, requiring proof of actual use in commerce of
registered marks every ten years


Trademark Trial and Appeal Board (TTAB)
Administrative tribunal of the USPTO; adjudicates opposition and
cancellation proceedings, and hears appeals of final rejection of
trademark applications


Treble Damages
Three times the damages proved in an infringement action. Awarded at the
discretion of the court, usually in cases of willful infringement.


U
Uniform Domain Dispute Resolution Policy (UDRP)
ADR system operated by the World Intellectual Property Organization (WIPO)
for disputes between trademark owners and domain name registrants.


Unfair Competition
Common law cause of action encompassing trademark infringement as well as
other unfair business practices such as false advertising


United States Patent and Trademark Office (USPTO)
The U.S. federal agency responsible for overseeing the grant, registration
and maintenance of patents and trademarks


Use
The marketing or sale of goods or services under a trademark


W
Watch Service
A third party retained for the purpose of monitoring marketplace for
unauthorized or improper uses of one’s trademarks. See Policing.


Well-Known Marks
Those marks that, in view of their widespread reputation, may enjoy
broader protection than ordinary marks



-------------------------------------------------


Sources:

William M. Borchard, ed., Trademark Basics: A Guide for Business. New
York: International Trademark Association, 1997.

Weston, Robert, John Hornick, Julia Holden, Allen Israel and Davina Lee,
eds., Country Guides: Basic Information on Trademark Registration
Worldwide, 3rd Edition. New York: International Trademark Association,
2002.

To learn more about these INTA Publications, visit our online Publications
Catalog.

Thank you to the members of the Online Resources subcommittee of the
2004-2005 Information Resources Committee for their hard work and
dedication in updating and making this resource available to the public.