This is not an exhaustive list. See the USPTO’s Glossary at https://www.uspto.gov/learning-and-resources/glossary for a more complete list of definitions regarding USPTO matters and see also the USPTO Trademarks Resources and Glossary.

A

AAU

Amendment to Allege Use.  An AAU or SOU (Statement of Use) is a form to file in an intent-to-use-based application to attest use in commerce of the trademark in the application for all of the goods or services in the application. The difference between an AAU and an SOU is the timing of the filing. An AAU is filed before an application receives its Notice of Allowance and an SOU is filed after the application receives its Notice of Allowance.

Abandonment or Abandoned

An abandoned application is an application for trademark registration that is removed from the USPTO docket of pending applications because of express abandonment or because the applicant failed to take appropriate action within the specified response period.

If  a USPTO application or registration shows a status of DEAD or abandoned on USPTO TESS (Trademark Electronic Search System), it means that specific application or registration is no longer under prosecution  or pending within the USPTO, and would not be cited by a trademark examiner against an applicant.

Trademark Act Section 45(1)5 provides a definition of abandoned that goes further than just application or registration status. This definition applies to common law trademarks and is not dependent on application or registration status.

    A [trade]mark shall be deemed to be “abandoned” ... [w]hen 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. Lewis Silkin LLP v. Firebrand LLC, 2018 WL 6923002 (TTAB 2018).

Note that trademark registrations that are DEAD on USPTO TESS (Trademark Electronic Search System) have a status of cancelled rather than abandoned. Cancelled trademark registrations are no longer active due to the registrant's failure to file the required continued use affidavit under Section 8 of the Trademark Act, or due to a cancellation proceeding at the Trademark Trial and Appeal Board or due to the outcome of a civil court action.

Abandonment - Failure To Respond Or Late Response’ and ‘ Abandonment Notice Mailed - Failure To Respond’

This means that the identified trademark was abandoned in full because a response to the Office Action was not received within the 6-month response period.

Acceptable Identification of Goods and Services Manual

This USPTO manual lists thousands of examples of identifications of goods and services that are acceptable and approved for use in TEAS Plus or TEAS Standard trademark applications. Thcontents of this manual are available both ‘inside’ and ‘outside’ of a USPTO application. The ‘outside’ version doesn’t require signing in to a MyUSPTO account. Link to ‘outside’ Acceptable Identification of Goods and Services Manual.

Acquired Distinctiveness

37 C.F.R. §2.41  Proof of [acquired] distinctiveness under section 2(f).

    (a) For a trademark or service mark.

    (1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required.

    (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a trademark or service mark is said to have become distinctive of the applicant’s goods or services by reason of the applicant’s substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.

    (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of the applicant’s goods or services, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.  

Affirmative Defense

TBMP 311.02(b)(1)    

An answer may also include a short and plain statement of any defenses, including affirmative defenses that the defendant may have to the claim or claims asserted by the plaintiff. Affirmative defenses may include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration (Morehouse) defense, prior judgment, or any other matter constituting an avoidance or affirmative defense. Such defenses may also include a pleading that defendant is at least entitled to a registration with a particular restriction (described in the pleading in sufficient detail to give plaintiff fair notice of the basis for the defense), except that geographic restrictions will be considered and determined by the Board only in the context of a concurrent use registration proceeding. See TBMP Chapter 1100. Cf. TBMP § 514. A request by defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C § 1068, must be made by way of motion under 37 C.F.R § 2.133  although the ground may also be raised as an affirmative defense in the answer (as originally filed, as amended or as deemed amended), by way of an allegation that sets forth the proposed restriction in detail and alleges that the restriction will avoid a likelihood of confusion and that plaintiff is not using the mark on the products or services being excluded from the registration. See TBMP § 309.03(b).

If the defendant offers to amend its identification of goods or services in its originally filed answer, because the Board does not typically review the answer at the pleading stage, the defendant should also file a motion with the Board in order to bring the matter to the Board’s attention for consideration. Pleading a restriction in the answer as originally filed, however, serves the purpose of putting plaintiff on early notice of the proposed restriction. Affirmative defenses may be deemed waived if not pursued at trial or argued in briefs. [ Note 5.]

Allowed for Registration - Principal Register (SOU accepted)

This status means the Statement of Use has been approved for an Intent to Use application that has already been through its Opposition Period with no opposition and the trademark should register in 4-6 weeks.

Amendment and Mail Process Complete

This status means that changes have been made to the trademark record. These changes may have been made by the applicant in a Response to Office Action (ROA) or Voluntary Amendment or may have been made by the examiner in an Examiner’s Amendment or may have been made by the applicant using some other form.

Answer

TBMP 311.01(a) The answer must contain admissions and/or denials of the allegations in the complaint and may include any defenses to those allegations.

Appeal

TMEP 1501 Appeal to Trademark Trial and Appeal Board 15 U.S.C. §1070

An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the prescribed fee.

37 C.F.R. §2.141  Ex parte appeals from action of trademark examining attorney.

    (a) An applicant may, upon final refusal by the trademark examining attorney, appeal to the Trademark Trial and Appeal Board upon payment of the prescribed fee for each class in the application for which an appeal is taken, within six months of the date of issuance of the final action.  A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.

    (b) The applicant must pay an appeal fee for each class from which the appeal is taken.  If the applicant does not pay an appeal fee for at least one class of goods or services before expiration of the six-month statutory filing period, the application will be abandoned.  In a multiple-class application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken.  If the applicant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant may either pay the additional fees or specify the class(es) being appealed.  If the applicant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.

An appeal from an examining attorney’s action is taken to the Trademark Trial and Appeal Board ("Board"), not to a court.  An appeal is taken by filing a notice of appeal and paying the appeal fee within six months of the date of issuance of the action from which the appeal is taken.  15 U.S.C. §1070;  37 C.F.R. §2.142(a).

Applicant

An applicant is the owner of a trademark who is filing a trademark application, an entity that can sue and be sued.

From TMEP 803: An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application under 15 U.S.C. §1051(b), by the person who is entitled to use the mark in commerce.  Normally the owner of a mark is the person who applies the mark to goods that he or she produces, or uses the mark in the sale or advertising of services that he or she performs.  

. . .

Applicants may be natural persons or juristic persons.  Juristic persons include corporations, partnerships, joint ventures, unions, associations, and other organizations capable of suing and being sued in a court of law.  15 U.S.C. §1127.  

Application/Registration Record

A public record maintained by the USPTO. It  includes all the materials that an applicant submits to the USPTO in connection with an application to register a trademark application, including (not exhaustive list) the drawing of the mark, application, specimen, and all of the steps taken by the USPTO toward registration and any maintenance as well as any communications between the applicant and the USPTO relating to that application/registration.

Approved for Pub-Principal Register

This status change in the record means that the USPTO believes the trademark would be entitled to registration under the current circumstances (assuming an acceptable AAU or SOU were filed for an intent-to-use application and that no new issues were found). If the application is an intent-to-use application, the examiner may re-examine an application when the Statement of Use (SOU) is filed because there may be new issues involved with the specimen submitted, new issues of likelihood of confusion with marks that registered during the lag time  or other issues.

When the APPROVED FOR PUB - PRINCIPAL REGISTER step is finished, the trademark application is given a date in the ‘Published for Opposition’ field that is 3-5 weeks after the date of APPROVED FOR PUB - PRINCIPAL REGISTER (This is a future date at this point, the actual publication has not taken place, just the approval.) In other words, 3-5 weeks before a mark publishes for opposition, the records show that it is going to publish and it can be searched and if applicable, an opposition planned for the  future 30 day period.

Assigned to LIE

This status means the subject trademark application has been assigned to an LIE. LIEs (Legal Instruments Examiners) are USPTO personnel that perform reviews and update trademark cases. TMEP 1401.01(a): “A legal instruments examiner ("LIE") will conduct a preliminary review of an amendment to allege use to determine whether it is timely and complies with the minimum requirements of 37 C.F.R. §2.76(c).  If so, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits. With respect to the requirement that the amendment to allege use include a verification or declaration signed by the applicant, or a person properly authorized to sign on behalf of the applicant, that the mark is in use in commerce, the LIE will review the document only to determine whether it bears a signed verification stating that the mark is in use in commerce.  The examining attorney will determine whether the amendment to allege use was filed by the owner.”

B

Boolean Operators in TESS Searching

Operator

Meaning and Use

AND

Boolean AND - Records retrieved will contain the each of the search terms specified. The order of occurrence of the search terms in the record is not restricted.

OR

Boolean OR - Records retrieved will contain at least one of the search terms specified.

NOT

Boolean NOT - Records retrieved will not include the search term following the NOT operator. NOT may be used with the SAME or WITH operators to retrieve documents that contain the first term but do not contain the second term in the same paragraph or sentence.

XOR

Exclusive OR - For two search terms, records will include either the first term or the second term, but not both.

SAME

The search terms occur in the same paragraph. This operator may be useful for searches of Goods and Services (i.e., searching for two or more terms within the same Goods and Services entry).

WITH

The search terms occur in the same sentence.

ADJ#

The search terms occur in the adjacent to each other in the order specified in the search. A numeric qualifier (1-99) can be appended to ADJ to allow additional words to be between the two search terms.

NEAR#

The search terms occur in the same sentence within the specified number of words of each other. For example, the search DOG NEAR2 CAT will retrieve records for which the words DOG and CAT appear in the same sentence with at most one word between them in any order.

Boolean Operators in ID Manual Searching

AND

Boolean AND - Records retrieved will contain the each of the search terms specified. The order of occurrence of the search terms in the record is not restricted.

OR

Boolean OR - Records retrieved will contain at least one of the search terms specified.

NOT

Boolean NOT - Records retrieved will not include the search term following the NOT operator. NOT may be used with the SAME or WITH operators to retrieve documents that contain the first term but do not contain the second term in the same paragraph or sentence.

XOR

Exclusive OR - For two search terms, records will include either the first term or the second term, but not both.

C

Cancellation or Cancellation Proceeding

TBMP 102.02    A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration, in whole or in part, of a trademark on the Principal Register or the Supplemental Register. A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the mark. See TBMP § 303 (Who May Oppose or Petition to Cancel).

Clearance Search or Trademark Clearance Search

The USPTO defines a clearance search as: “a search completed before you file your application to check if your chosen mark is available for use and registration. Do a clearance search to find trademarks that could keep your mark from registering or pose legal obstacles to use of your mark due to a likelihood of confusion.”

Commercial impression

The key likelihood of confusion factor in many cases is whether the marks of the respective parties are confusingly similar, when compared in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).

The phrase “commercial impression” is sometimes used to describe the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of sight, sound and meaning. Thus, the statement that: “The marks are very similar in overall commercial impression,” means that the marks are very similar in sight, sound and meaning. McCarthy on Trademarks and Unfair Competition § 23:21.50 (5th ed.).

No commercial impression? A geometric shape, as part of a design mark such as with design code 26.03.01 (oval carriers or borders), that forms a border or carrier does not create a significant commercial impression. It holds or borders the design or textual matter. This example from https://tess2.uspto.gov/tmdb/dscm/dsc_gl.htm#g1 gives this GOLDONI oval as an example of a lack of commercial impression because the oval design "carries" the word mark. The oval in SPRING COMMUNICATIONS act merely as a border for the mark. To gain commercial impression? Use a design mark that consists of more than one type of geometric shape and more than just a carrier or a border.

Commas (in a trademark application description) and Semicolons

TMEP 1402.01(a) [C]ommas should be used in the identification to separate items within a particular category of goods or services.  When the items are preceded by the word "namely," a comma should always be used before and after that term.  For example, "clothing, namely, hats, caps, sweaters, and jeans" is an acceptable identification of goods in Class 25 and shows proper use of commas. For additional information on the use of "namely" in an identification, see TMEP §1402.03(a).

TEMP 1402.01(a) Semicolons should generally be used to separate distinct categories of goods or services within a single class.  For example, "cleaners, namely, glass cleaners, oven cleaners, and carpet cleaners; deodorants for pets" is an acceptable identification in Class 3.  In this example, the word "cleaners" names the category covering "glass cleaners, oven cleaners, and carpet cleaners."  The semicolon prior to "deodorants for pets" indicates that the deodorants are a separate category of goods from the cleaners. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166 (TTAB 2013) (finding that, because a semicolon separated the two relevant clauses in registrant’s identification, its "restaurant and bar services" is a discrete category of services that stands alone and independently as a basis for likelihood-of-confusion analysis, and is not connected to nor dependent on the services set out on the other side of the semicolon).

Complaint (TTAB-Notice of Opposition or Petition for Cancellation)

[Suggested Format for Notice of Opposition or Petition for Cancellation]

TBMP 309.02(a) . . . The complaint should include the following information:

Heading: The complaint should bear at its top the heading "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD."

Identification of subject application or registration: The heading should be followed by information identifying the application or registration that is the subject of the complaint with the wording "Serial No.______" for an opposition or "Registration No.______" for a petition to cancel.

Name of proceeding: The application or registration number should be followed by the name of the proceeding (i.e., "ABC Corporation v. XYZ Company") and the wording "Opposition No. ______" or "Cancellation No. ______."

Title of Paper: The title should describe the nature of the paper (i.e., "Notice of Opposition" or "Petition to Cancel").

Plaintiff information: The complaint should also include plaintiff’s name, entity type (i.e., individual, partnership, corporation, association, etc.), and business address; the names of the partners, if the plaintiff is a partnership, or the state or country of incorporation, if the plaintiff is a corporation.

Registrant information in petition to cancel:A petition to cancel should indicate the name and correspondence address and the current email address(es) of the current owner of record of the registration. To determine the correspondence address of the owner of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  The TSDR display of information includes a tab for "status," a tab for "documents" and a link to "View Assignments." The petitioner may consult the assignments database to determine whether the registration has been assigned. If the registration has been assigned, and the assignment has been recorded, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(c)(2). Plaintiffs are encouraged to provide information about a new owner, which may not be in the Office’s TSDR database, even if there is a domestic representative. Also, plaintiffs are encouraged to provide current contact information for attorneys, or in the case of registrations under § 66(a) of the Act, current contact information for the designated representative for the international registration, which may not be in the Office’s TSDR database.  Providing such information facilitates the Board’s location and service of the proper parties in order to avoid defaults that may subsequently be set aside and thus prolong the process.

Substance of complaint: The complaint must also include a pleading of the substance (i.e., standing and grounds) of the complaint. See TBMP § 309.03.

Signature: The complaint must be signed and include a description of the capacity in which the signing individual signs, e.g., attorney for plaintiff, plaintiff (if plaintiff is an individual), partner of plaintiff (if plaintiff is a partnership), officer of plaintiff identified by title (if plaintiff is a corporation), etc. See TBMP § 309.02(b).

Concurrent Use Proceeding

TBMP 102/02  A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration on the Principal Register, that is, a registration with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods and/or services on or in connection with which the mark is used (usually, a concurrent registration is restricted as to the territory which it covers). See TBMP § 1101.01. The proceeding may be initiated only through the filing of an application for registration as a lawful concurrent user, and is instituted by the Board only after each of the one or more involved applications has been published for opposition in the Official Gazette, and all oppositions thereto (if any) have been withdrawn or dismissed. See TBMP § 1102.01 and TBMP § 1105. For further information, see TBMP Chapter 1100 (Concurrent Use Proceedings).

Counterclaim (Compulsory)

TBMP 313.04    Compulsory Counterclaims

37 C.F.R. § 2.106(b)(3)(i)  A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if the claim is the subject of another proceeding between the same parties or anyone in privity therewith; but the applicant must promptly inform the Board, in the context of the opposition proceeding, of the filing of the other proceeding.

37 C.F.R. § 2.114(b)(3)(i)  A defense attacking the validity of any one or more of the registrations pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to respondent when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the cancellation proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if the claim is the subject of another proceeding between the same parties or anyone in privity therewith; but the party in position of respondent and counterclaim plaintiff must promptly inform the Board, in the context of the primary cancellation proceeding, of the filing of the other proceeding.

Counterclaims for cancellation of pleaded registrations in Board proceedings are governed by 37 C.F.R. § 2.106(b)(3)(i)  and 37 C.F.R. § 2.114(b)(3)(i).  If the defendant knows the grounds for a counterclaim to cancel a pleaded registration when the answer is filed, the counterclaim must be pleaded with or as part of the answer.  If grounds are learned during the course of the proceeding, through discovery or otherwise, the counterclaim must be pleaded promptly after the grounds therefor are learned. The counterclaim must be filed in ESTTA.

A defendant who fails to timely plead a compulsory counterclaim cannot avoid the effect of its failure by thereafter asserting the counterclaim grounds in a separate petition to cancel. In such a case, the separate petition will be dismissed, on motion, on the ground that the substance of the petition constitutes a compulsory counterclaim in another proceeding, and that it was not timely asserted.

If a defendant confronted with a motion for summary judgment knows of grounds for a counterclaim that might serve to defeat the motion, the counterclaim should be asserted in response to the motion, even if no answer to the complaint has yet been filed.

A plaintiff which fails to plead a registration, and later seeks to rely thereon, will not be heard to contend, if defendant then moves to amend its answer to assert a counterclaim to cancel the registration, or then files a separate petition to cancel the registration, that the counterclaim or separate petition is untimely because it was not pleaded when defendant filed its answer. A plaintiff may not, by failing to plead a registration on which it intends to rely, deprive a defendant of its right to petition to cancel the registration, either by counterclaim or by separate petition, at such time as opposer seeks to rely upon the registration. Even if the defendant knows grounds for cancellation of a plaintiff’s unpleaded registration when the defendant files its answer, the defendant is under no compulsion to seek to cancel the registration unless and until the plaintiff pleads the registration.

If the parties or their privies are involved in another proceeding involving the same claims that could be the subject of a counterclaim in the opposition or the primary cancellation proceeding, the Board must be promptly notified in the opposition or primary cancellation proceeding.

Counterclaim (Permissive)

TBMP 313.05    Permissive Counterclaims

A party may counterclaim to cancel a registration that is owned, but not pleaded, by an adverse party. A counterclaim to cancel a registration owned, but not pleaded, by an adverse party is a permissive counterclaim. The filing date of the counterclaim is the date of electronic receipt in the Office of the counterclaim with the required fee.  A counterclaim must be filed through ESTTA. In the rare instance that a paper filing is permitted by the Director, on petition, the filing date of a counterclaim will be determined in accordance with 37 C.F.R. § 2.195  – 37 C.F.R. § 2.198. A counterclaimant must serve a copy of the counterclaim (with any exhibits thereto) on every other party to the proceeding, and must make proof of such service before the Board will consider the counterclaim.

D

DEAD trademark

If  a USPTO application or registration shows a status of DEAD or abandoned on USPTO TESS (Trademark Electronic Search System), it means that specific application or registration is no longer under prosecution  or pending within the USPTO, and would not be cited by a trademark examiner against an applicant.

Disclaimer

Trademark Disclaimers -disclaimer requirements as a Part of a USPTO Trademark Registration

Applications for USPTO trademarks often contain unregisterable words, other matter or components that are unregisterable because they descriptive, merely descriptive, deceptively descriptive, geographically descriptive, generic, a surname or meeting other grounds for refusal. Often the unregisterable matter is the common name for the goods or services (generic term) or a laudatory term. See also https://tmrefusal.com/examplesdisclaimers.html.

Standard Disclaimer Form

The standardized disclaimer text is as follows:

No claim is made to the exclusive right to use ____________, apart from the mark as shown.

Where non-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:

No claim is made to the exclusive right to use ________ or ________, apart from the mark as shown.

The standard wording required for a design element is:

No claim is made to the exclusive right to use the design of “____” apart from the mark as shown.

For non-Latin characters, the following format is suggested:

No claim is made to the exclusive right to use the non-Latin characters that transliterate to “[specify Latin character transliteration]” apart from the mark as shown.  

Doctrine of Analogous Use

Use analogous to trademark use, in contrast, is nontechnical use of a trademark in connection with the promotion or sale of a product under circumstances which do not provide a basis for an application to register, usually because the statutory requirement for use on or in connection with the sale of goods in commerce has not been met. Although never considered an appropriate basis for an application to register, such use has consistently been held sufficient use to establish priority rights as against subsequent users of the same or similar marks. See: Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA 1972); National Cable Television Ass'n., Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991).

Shalom Children's Wear, Inc. v. In-Wear A/S , 1993 TTAB LEXIS 16, *12-13, 26 U.S.P.Q.2D (BNA) 1516, 1519 (TTAB 1993).

Doctrine of Extra Care

The trademark doctrine of "Extra Care" or "Greater Care" for pharmaceuticals stands for the proposition that when the consequences of confusion are much more serious, relief should be granted to the senior user upon a lesser proof of confusing similarity in a prescription drug case than in other areas of trademark litigation.

Doctrine of Foreign Equivalents

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine similarity of connotation with English words in a likelihood of confusion analysis. In re La Peregrina Ltd., 86 USPQ2d 1645, 1647-48 (TTAB 2008).

Doctrine of Unlawful Use in Commerce

The unlawful use doctrine denotes a policy of the United States Patent and Trademark Office's Trademark Trial and Appeal Board [TTAB] which holds that use of a mark in commerce only creates trademark rights when the use is lawful.

NYcityVAN, LLC v. Thomas, No. 1:18-cv-6692-FB-PK, 2020 U.S. Dist. LEXIS 216774, at *1 (E.D.N.Y. Nov. 19, 2020).

The unlawful use in commerce doctrine is derived from Section 45 of the Trademark Act, 15 U.S.C. § 1127, which defines "commerce" as "all commerce which may lawfully be regulated by Congress." Thus, in order to obtain a federal registration, use of a mark in commerce or, if applicable, its intended use, must be lawful. In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016);  In re Midwest Tennis & Track Co., 29 USPQ2d 1386 n.2 (TTAB 1993) (citing Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982)). See also Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987).

  DuPont Factors

In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not [**7]  used (house mark, "family" mark, product mark).

(10) The market interface between applicant and the owner of a prior mark:

(a) a mere "consent" to register or use.

(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.

(c) assignment of mark, application, registration and good will of the related business.

(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.

In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).

TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS Trademark Product Line  TMPL.US.com

TEAS application TEAS Plus  Where to trademark search?

Trademark e Search  Strong Trademark  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

 Examples of Disclaimers FREE Resources

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen?   

Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?

Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching

TBMP 309 Grounds Opposition/Canc.  

Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

   Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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