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IP Definitions

IP Definitions

Abandonment
An application that has been declared abandoned is “dead” and no longer pending.

Acceptable Identification of Goods and Services Manual
This manual lists numerous examples of identifications of goods and services that are acceptable to the USPTO for inclusion in trademark applications and registrations.

Allegation of use
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.

Appeal (trademark)
An applicant who wants to contest a final refusal from an examining attorney may file an appeal to the trademark trial and appeal board.

Applicant
inventor or joint inventors who are applying for a patent on their own invention, or the person who is applying for a patent in place of the inventor.

Application (patent)
An application for patent that includes all types of patent applications (i.e., utility, design, plant, and reissue) except provisional applications. A nonprovisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee.

Application (trademark)
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 Mark
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.

Assignment
A transfer of ownership of a patent/trademark application or patent from one entity to another.

Cancellation Proceeding
A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an existing registration of a mark.

Certification Mark
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.

Claims
Define the invention and are what aspects are legally enforceable. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.

Classification
Patents are classified (organized) in the U.S. by a system using a 3 digit class and a 3 digit subclass to describe every similar grouping of patent art.

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

Copyright
A form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The Library of Congress registers copyrights which last for the life of the author plus 70 years.

CTM
The European Community Trademark. The CTM consists of 27 members; all the present members of the European Union.

The following is a complete listing of the current member states of the European Community: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom.

Declaration
A document in which an applicant for patent declares, under penalty of fine or imprisonment, or both, that (1) he or she is the original or sole inventor, (2) shall state of what country he or she is a citizen, (3) that he or she has reviewed and understands the contents of the specification and claims which the declaration refers to, and (4) acknowledges the duty to disclose information that is material to patentability. An oath or declaration must be filed in each nonprovisional patent application.

Domain name
Domain names are the human-friendly forms of Internet addresses, and are commonly used to find web sites. For example, the domain name wipo.int is used to locate the WIPO web site at http://www.wipo.int or the WIPO Arbitration and Mediation Center site at http://arbiter.wipo.int. A domain name also forms the basis of other methods or applications on the Internet, such as file transfer (ftp) or email addresses – for example the email address arbiter.mail@wipo.int is also based on the domain name wipo.int.

Domestic representative
A person residing within the United States who is appointed by a patentee or assignee of a trademark application or registration that does not reside in or is not domiciled within the United States.

Enforceability of Patent
The right of the patent owner to bring an infringement suit against a party who, without permission, makes uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action.

Filing refusal
Also known as a final office action, which makes “final” any outstanding refusals or requirements. A proper response to a final office action is a) compliance with the requirements or b) appeal to the trademark trial and appeal board.

generic Top-Level Domain (gTLD)
A gTLD is a generic top level domain. It is the top-level domain of an Internet address, for example: .com, .net and .org. In addition, seven new gTLDs were also selected by ICANN (the Internet Corporation for Assigned Names and Numbers) on November 16, 2000.

Identification of goods and/or services
A written statement of the goods and/or services included in an application. Every application must include an identification of goods and/or services. If you fail to list any recognizable goods or services, the USPTO will return the application and refund the fee. When specifying the goods and/or services, applicants should use clear, concise terms, i.e., common commercial names and language that the general public easily understands.

Intent-to-use (ITU)
Applicants who have not yet used (in commerce that can be regulated by congress) the mark they wish to register may file a trademark application under this filing basis. An “intent to use” application must include a sworn statement (usually in the form of a declaration) that applicants have a bona fide intention to use the mark in commerce. Applicants who file based on “intent to use” must begin actual use of the mark in commerce and file an allegation of use before the USPTO will register the mark.

Interference
A proceeding, conducted before the board of patent appeals and interferences (board), to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents

Joint Ownership
Patents may be owned jointly by two or more persons as in the case of a patent granted to joint inventors, or in the case of assignment of a part interest in a patent.

Likelihood of confusion
A statutory basis for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO.

Mere descriptiveness
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.

Madrid Protocol
The “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks” (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.” See Madrid Protocol Contracting States.

Non-final office action (rejection)
An office action made by the examiner where the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment.

Non-final office action
An office action letter that raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final office action, the examining attorney will issue another non-final office action that sets forth the new issue(s) and continues any that remain outstanding. Applicants must respond to non-final office action letters within 6 months from the date they are issued to avoid abandonment of the application.

Notice of abandonment
A written notification from the USPTO that an application has been declared abandoned. 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.

Notice of Allowance
NOA – a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet.

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

Opposition Proceeding / Cancellation Proceeding
An opposition proceeding involves a proceeding before the Trademark Trial and Appeal Board (TTAB) in which the plaintiff seeks to prevent the issuance of a registration of a mark. A cancellation proceeding involves a proceeding before the Trademark Trial and Appeal Board (TTAB) 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.

Paris Convention
This convention states that each contracting State must grant the same protection to nationals of the other contracting States. The Convention also provides for the right of priority in the case of patents, marks and industrial designs. This right means that, on the basis of a regular first application filed in one of the contracting States, the applicant may, within a certain period of time (12 months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other contracting States; these later applications will then be regarded as if they had been filed on the same day as the first application.

Patent
A property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. The term of a new patent is 20 years from the date on which the application for the patent was filed in the Unites States. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions.

There are three types of patents:

1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or any new and useful improvement thereof;

2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Patent Pending
A phrase that often appears on manufactured items. It means that someone has applied for a patent on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item and that copiers should be careful because they might infringe if the patent issues.

Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, “an international application,” in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in any State or region that is party to the PCT. There are currently over 112 PCT Contracting States. For a complete and accurate listing of member states follow the link below:
PCT Contracting States

Patent and trademark depository library
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. The libraries also actively disseminate patent and trademark information and offer internet access to the USPTO online collection.

Petition to revive an application (trademark matters)
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.

Priority action
A letter in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. 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.

Reexamination proceeding
At any time during the enforceability of a patent any person may file a request for the USPTO to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability.

Request for extension of time to file a statement of use
Extension request – a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, 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. 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, or the USPTO will not register the mark.

Request to reinstate an application
If an application is abandoned due to a USPTO office error, an applicant may file a request to reinstate the application, instead of a petition to revive. There is no fee for a request for reinstatement. You must file a request for reinstatement within two months of the issue date of the notice of abandonment. You must include a true copy of the document that was timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO.

Statement of use
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. With a statement of use, the owner must submit: (1) a filing fee of $100 per class of goods/services; and (2) one specimen showing use of the mark in commerce for each class of goods/services. Statements 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.

Stylized Mark
One type of depiction of the mark sought to be registered. Another name for this type of mark is “special form.” If the mark includes a particular style of lettering, or a design or logo, the mark is considered to be stylized or in special form.

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

Suspension inquiry letter
An office action inquiring as to the status of the matter that is the basis for suspension of an application. The examining attorney will issue a suspension inquiry letter after an application has been suspended for six months or more, unless the information is available to the examining attorney in the office’s databases. If the applicant does not respond to the suspension inquiry letter, the application will be abandoned.

Trade Secret
Information that companies keep secret to give them an advantage over their competitors.

Trademark / Servicemark
A trademark is a word, name, symbol, sounds, colors, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark 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 commonly used to refer to both trademarks and servicemarks. Trademarks that are used in interstate or foreign commerce may be registered with the USPTO. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

Trademark Act
Trademark Act of 1946 (and its amendments) is the major body of U.S. law that governs federal registration of trademarks.

Uniform Domain Name Dispute Resolution Policy (UDRP)
The UDRP is the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999. The UDRP is based on recommendations made by WIPO in the Report on the First WIPO Internet Domain Name Process, focusing on the problems caused by the conflict between trademarks and domain names. The UDRP was designed to provide fast and cost-effective arbitration procedure for resolving disputes involving the registration of Internet domain names.

World Intellectual Property Organization (WIPO)
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.

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IP Definitions May 27, 2016