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Knowmad Law Glossary

We try to avoid legal jargon whenever we can. But sometimes we forget. And sometimes it’s unavoidable.

 

That’s why we’ve compiled a list of legal terms that we frequently use when advising clients. If we’ve sent you an email and you’re confused, maybe this will help. Or give us a call, and we’d be happy to walk you through it.

Acquired Distinctiveness: Notwithstanding the descriptiveness of a word or phrase, if consumers have come to associate it with a particular business’s goods or services, that business may be able to claim exclusive trademark rights. This is also called Secondary Meaning. Factors bearing on acquired distinctiveness include the length of use of the mark, extent of marketing activities promoting the mark, and consumer recognition of the mark. If a business has exclusively and continuously used a mark for 5 years, the USPTO will consider this to be sufficient (though non-conclusive) evidence of acquired distinctiveness.

Assignment: Transferring ownership of an item of intellectual property is referred to as assigning the IP, and the document effecting the transfer is called an assignment. By statute, copyright assignments must be made in writing to be effective. Trademark registration and patent assignments must be recorded with the USPTO.

Author: The person who created (or contributed to the creation in the case of joint authors) a work is the author. In the case of a Work Made for Hire, the party who directed the creation of the work is considered legally to be the author. Authorship is distinct from copyright ownership, and an author may or may not own the copyright to a work.

Cause of Action: A cause of action, or claim, is a theory by a party bringing a civil lawsuit (the Plaintiff) that some law allows or requires the court to take a particular action when confronted by facts similar to those alleged by the plaintiff. If no law exists to support the plaintiff’s claim, the court may dismiss it.

Class: The 1957 Nice Agreement created an international system of classification for goods and services, currently divided into 45 International Classes. Applicants for U.S. trademark registrations must identify their goods and services according to the Nice Classification System, and the cost of the application, as well as the cost of renewals and other documents, are determined based on the number of classes. International classification can also be helpful in determining whether a trademark application presents a likelihood of confusion with a prior mark, though international classification is not conclusive of whether goods or services are related for likelihood-of-confusion purposes.

Derivative Work: A new work of creative expression based on an existing work. Core examples of derivative works are translations, abridgments, rearrangements, and adaptations to different media (e.g. a film version of a book or a painting of a sculpture).

Descriptiveness: If a word or phrase merely describes some feature or characteristic the goods or services (that is, if it might be applied to any such goods or services, not just those originating from a particular business), then it is not considered inherently distinctive enough to serve as a designation of origin and, therefore, cannot initially be protected as a trademark. Applications to the U.S. principal trademark register will be rejected by the USPTO if the Examining Attorney determines that the mark is descriptive of the identified goods or services (though a Supplemental Registration may be available). However, descriptive marks can be protected if they acquire Secondary Meaning.

DMCA: The Digital Millennium Copyright Act is a 1998 federal law. Among other things, the DMCA provides a way for online service providers (ISPs, websites, social media platforms, etc.) to escape liability for copyright infringements committed by their users, as long as they meet certain criteria, including compliance with the DMCA's “Notice and Takedown” procedure for removal of infringing content.

Examiner: Also called the Examining Attorney, this is the title of the USPTO attorney assigned to review a trademark or patent application and determine whether it is entitled to registration or issuance, based upon that attorney’s interpretation of the law and facts.

Identification of Goods and Services: Trademark rights do not exist in a vacuum and arise only in connection with specific goods or services. In order to obtain a U.S. registration, the trademark owner must identify the goods and/or services for which it uses (or intends to use) its trademark. This identification must include the International Class into which the goods or services fall and must describe the goods or services in sufficiently narrow and commonly recognized commercial terms, as determined by the USPTO through its Examining Attorneys.

Infringement: When someone exercises one of the exclusive rights embodied in a piece of intellectual property without the owner’s permission, this is called infringement, and the owner can request a court to issue an injunction ordering a stop to the infringing conduct and/or in some cases to award money damages. Examples of infringement include reproducing a work without the copyright owner’s permission, using an invention without the patent owner’s permission and using a trademark in connection with goods or services without the trademark owner’s permission in a manner likely to confuse consumers.

IP: Intellectual Property. This is a specialized area of law governing the rights to intangible assets, such as patents, trademarks, copyrights, trade secrets, domain names, plant varieties, and semiconductor mask works.

 

License: A license is permission to do something, such as permission to distribute a work that’s subject to copyright or permission to practice a patented invention or permission to use a trademark to sell certain goods. A license might be broad or narrow, temporary or perpetual, worldwide or limited by territory, unrestricted or subject to explicit conditions. The terms of a license are typically set forth in a licensing agreement or other contract.

 

Likelihood of Confusion: Likelihood of Confusion is a legal standard used in determining whether a trademark has been infringed. It is also a standard used by the USPTO to determine whether a mark in an application is too similar to a mark in a prior registration. The two most important factors (though not the only factors) considered in a Likelihood of Confusion analysis are the similarity of the marks and the relatedness of the goods and/or services. However, neither the marks nor the goods/services need be identical for a court or a USPTO examiner to determine there is a likelihood of confusion.

NDA: Non-Disclosure Agreement. This is a contract in which one party usually agrees not to disclose or use confidential information learned from the other party except in certain circumstances and under certain conditions. Sometimes also called a Confidential Disclosure Agreement (CDA) or simply a Confidentiality Agreement.

 

Office Action: This is a preliminary refusal of a trademark application, issued by the examining attorney. Office Actions issue in approximately 80% of U.S. trademark applications. An Office Action may simply be a request for further information or for a technical amendment to the application. Or it may mean that something is substantively wrong with the mark, such as a determination that it is descriptive or presents a likelihood of confusion with a prior registration.

Priority: Who got there first? Priority dates are very important for both trademark registrations and patents, since they often determine who is entitled to claim what rights. For trademark applications, the priority date is usually the date on which the application is filed. That means, even if it takes years for your registration to issue, your rights revert to the filing date. However, under an international treaty called the Paris Convention, if a trademark applicant in any member country files an application in any other member country within six months, they can claim priority to their foreign application, theoretically jumping another applicant’s place in line.

 

Prosecution: Obtaining a certificate of trademark registration often involves more than simply filing the application. Generally, there is some back and forth between the application and the USPTO examining attorneys assigned to the application. This is referred to as prosecution of the application.

Secondary Meaning: Notwithstanding the descriptiveness of a word or phrase, if consumers have come to associate it with a particular business’s goods or services, that business may be able to claim exclusive trademark rights. This is also called Acquired Distinctiveness. Factors bearing on acquired distinctiveness include the length of use of the mark, extent of marketing activities promoting the mark, and consumer recognition of the mark. If a business has exclusively and continuously used a mark for 5 years, the USPTO will consider this to be sufficient (though non-conclusive) evidence of secondary meaning.

 

Specimen: Proof that you are using a mark in commerce, filed with the USPTO in connection with a trademark application. For an application related to services, a specimen can be marketing materials, like a brochure or a magazine ad or a screenshot of your website. For an application related to goods, though, a specimen must show the mark somehow physically connected to goods, such as on product packaging or tags or labels or point-of-sale displays. A specimen is more than just a picture of your mark. It has to show how the mark is used “out in the wild.”

Subpoena: An order from a court requiring a person or company to give testimony or produce documents relevant to a lawsuit.

 

Suggestive marks: Suggestive trademarks are more distinctive than trademarks that are merely descriptive, but they still may have some connection to the goods or services. If a mark is suggestive, it may be entitled to federal registration. Examples of marks that might be considered suggestive include CHEETOS (suggesting a CHEEse-flavored snack), MICROSOFT (suggesting SOFTware for machines with MICROprocessors) and FACEBOOK (suggesting a website with functionality similar to a university directory sometimes called a “facebook”).

 

Supplemental Registration: A U.S. trademark registration used principally to register descriptive trademarks. Supplemental registrations don’t provide most of the legal benefits of a standard or “principal” trademark registration. For example, they do not establish exclusive rights to a mark. However, they provide some benefits relative to relying on common-law trademark rights and are often useful for trademark owners who cannot obtain a principal registration

 

Trade Secret: Trade secrets consist of confidential information that has value to your business. Trade secrets might include confidential product formulae, production methods or even business data such as customer contact lists. If trade secret status is established, a business may have a cause of action against anyone who misappropriates (i.e. unlawfully obtains or shares) the trade secret.

Use in Commerce: Trademark protection requires that a mark be used in commerce. This means that consumers must encounter the mark in connection with goods or services such that they would regard it as a designation of origin.

USPTO: The United States Trademark Office, the federal agency that issues both patents and trademark registrations.

Work: A work is the object of a copyright claim, the thing to which copyright attaches. It might be a book or a picture or a song or any other piece of media content.

Work-for-Hire Agreement: A Work-for-Hire Agreement is a contract where an author agrees to create a work for someone else, whom the parties agree will own the copyright. This sometimes involves an agreement that work will be considered Work-Made-for-Hire and the person or company who commissions the work will be considered its legal author. But more often it simply involves an agreement by the author to assign her rights.

Work-Made-for-Hire: When an employee creates a work for her employer and the work is within the scope of her employment, it is considered a Work-Made-for-Hire, and the employer is legally regarded as the author of the work. Under certain limited circumstances, works created by independent contractors may also be Works-Made-for-Hire, but more often the rights to works created by non-employees are obtained via an assignment.