Resources and Glossary

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Legal Resources

These third-party sites offer access to legal resources, legal aid, and legal background information such as cases, statutes, and regulations.

Note: Providing links to these resources should not be construed as legal advice and does not constitute endorsement by the USPTO of the linked sites or the parties providing the resources. Use of the listed resources is not a replacement for advice from an attorney.

Glossary

Affirmative defense - A type of legal defense that can negate liability for infringement. In trademark law, affirmative defenses include, among others, descriptive fair use, nominative fair use, parody, laches (i.e., undue delay on the part of the plaintiff in asserting its rights), and unclean hands (i.e., an assertion that the plaintiff has not acted in good faith in asserting its rights or otherwise acted improperly in connection with the case at hand).

Appear (appearance) - In litigation, to attend court as a party or as the attorney of a party.

Answer - A formal written response by the defendant in a civil case that responds to a complaint and may set forth grounds for a defense.

Assignee - A party to whom something, such as ownership of a trademark, has been transferred through an assignment.

Assignment - A document that is used to transfer a right or an ownership interest from one party to another.

Cease and desist letter/email - A letter/email in which one party, based on an assertion of legal rights, requests or demands that the party receiving the letter/email take certain actions or cease engaging in particular activities. These letters/emails are sometimes referred to as demand letters/emails. A trademark owner may send a cease and desist letter/email to another party, making claims about the owner's trademark rights and requesting that the party take certain actions, such as ceasing use of the alleged infringing mark, to avoid infringement litigation.

Common law - Law based primarily on principles set forth in prior court decisions, rather than on statutes or regulations. In trademark law, common law rights may arise from actual use of a mark.

Complaint - A written statement filed with a court to commence a civil lawsuit, in which the person commencing the lawsuit (the plaintiff) sets forth the allegations against the party being sued (the defendant).

Copyright - An intellectual property right that protects original works of authorship, such as writings, music, and works of art that have been tangibly expressed. This term is sometimes incorrectly used to refer to a trademark and vice versa. For copyright information, visit www.copyright.gov.

Counterclaim - Generally, a counterclaim is a claim made by a defendant against the plaintiff who initiated a lawsuit; a defendant may make a counterclaim to oppose or reduce a plaintiff's claims or to assert different claims against a plaintiff.

Damages - Damages refers to the amount of money that the defendant may pay to a plaintiff in a civil case if the plaintiff has won. Damages may be compensatory (for loss or injury) or punitive (to punish and deter future misconduct).

Declaratory judgment - A ruling by a judge determining the parties' rights concerning a disputed legal issue, resulting from a lawsuit usually filed by a party accused of wrongdoing by another party. For example, a person accused of infringing a trademark may file a lawsuit seeking a declaratory judgment that no infringement exists or that the other party's claimed trademark is not valid.

Default judgment - A judgment entered against a defendant who has failed to appear in court or to properly respond to a complaint. A default judgment often awards the plaintiff the relief sought in the complaint.

Defendant - The party against whom a claim is brought in a lawsuit.

Demand letter/email - See the definition for cease and desist letter/email above.

Dilution - Dilution is a claim that can be brought by the owner of a famous mark. Dilution occurs when use of a mark similar or identical to a famous mark diminishes the strength or value of the famous mark by "blurring" the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something distasteful or objectionable.

Ex parte - "Ex parte" means "with respect to the interests of one side only." Ex parte proceedings before the USPTO are those involving the USPTO's examination of a party's own trademark or patent application or registration. Compare with the definition of inter partes below.

Infringe (Infringing, Infringement) - To interfere with or misappropriate the intellectual property rights of another. Also see the entry for trademark infringement below.

Injunction - A court order prohibiting a party from performing, and/or requiring a party to perform, a particular action or actions.

Intellectual property - Creations of the mind, such as a creative work, an invention, or a distinctive indicator of a product's source, that may be protected by certain intangible property rights. Four common types of intellectual property are patents, trademarks, copyrights, and trade secrets.

Inter partes - Inter partes proceedings before the USPTO are adversarial proceedings between at least two parties, neither of which is the USPTO. For example, opposition and cancellation proceedings are types of inter partes proceedings.

IP - Acronym standing for Intellectual Property (defined above).

License - Permission to take certain actions or carry out particular activities that would otherwise be unlawful or infringing. For instance, a trademark owner may grant a license to another party, allowing that party to use the trademark owner's trademark.

Licensee - A party who has obtained a license from another.

Licensor - A party who grants a license to another.

Litigation - A lawsuit or the process of carrying one out.

Mediation - An informal type of dispute resolution in which a third party (mediator) tries to help two parties come to an agreement.

PACER - Acronym standing for Public Access to Court Electronic Records, which is a database run by the United States Courts. The public can use PACER to access electronic records that the federal district and appellate courts maintain, such as party filings and court orders in a lawsuit.

Patent - A patent is a property right the Government of the United States of America grants 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. There are three different types of patents - utility, design, and plant-each of which has distinct requirements.

Plaintiff ­- The party who files a lawsuit asserting wrongdoing by another.

Pretrial motion - A written request made to the court before the trial begins, which attempts to have a limited, usually procedural or evidentiary, issue ruled on by the court.

Principal Register - The USPTO's trademark register for marks found to distinguish an owner's goods or services, making the registered mark eligible for benefits including a legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods and/or services for which the mark is registered.

PTRC - Acronym for Patent and Trademark Resource Center, which is a library designated by the U.S. Patent and Trademark Office to receive and house copies of U.S. patents and patent and trademark materials, to make them freely available to the public, and to actively disseminate patent and trademark information.

Service of process - In litigation, the act of presenting a summons and complaint, or other formal legal documents, to the defendant.

Service mark - A word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of one party's services from those of others. The terms "trademark" or "mark" are commonly used to refer to both trademarks and service marks.

Settlement - A binding contractual agreement made between two parties to avoid litigation or to resolve a lawsuit prior to a decision by the judge or verdict from the jury.

Summons - A document that a plaintiff in a lawsuit files with a court and serves on the defendant along with a copy of the complaint. The purpose of the summons is to give the defendant notice of the lawsuit and of the time within which the defendant must respond to the suit.

Trademark - A word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of one party's goods from those of others. The terms "trademark" or "mark" are commonly used to refer to both trademarks and service marks.

Trademark infringement - The unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source or sponsorship of the goods and/or services.

TTAB - Acronym for the Trademark Trial and Appeal Board, an independent administrative tribunal within the USPTO that is authorized to determine a party's right to register a trademark with the USPTO or, if the party already owns a registration, its right to maintain it. The TTAB is not authorized to determine whether a party has the right to use a trademark, just whether it has the right to register it.

USPTO - The United States Patent and Trademark Office. The USPTO is the federal agency responsible for granting U.S. patents and registering U.S. trademarks.

Use in Commerce - Use in the sale or transport of goods or the rendering of services in "interstate" commerce between more than one state or U.S. territory, or in commerce between the U.S. and another country.

Note: These definitions are provided for use in understanding the contents of the USPTO's Trademark Litigation web pages. Some of the legal concepts have been simplified for purposes of brevity and clarity.

Sources

Black's Law Dictionary (9th ed. 2009)

Federal Rules of Civil Procedure (2013)

McCarthy on Trademarks & Unfair Competition (4th ed. 2014)

Trademark Manual of Examining Procedure (Oct. 2014)

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