CTA Trademark Agent flashcards

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42 cards. Read the term and the definition here. The deck at the top of this page is optional.

Lanham Act: The primary U.S. federal trademark statute, codified at 15 U.S.C. §§ 1051–1141n, governing registration, opposition, cancellation, and remedies for trademark infringement and unfair competition.
Use in commerce: The bona fide use of a mark in the ordinary course of trade, not made merely to reserve a right in a mark; required for federal registration under § 1(a).
Constructive use: The legal effect of filing a federal trademark application that gives the applicant nationwide priority as of the filing date, subject to certain exceptions under § 1057(c).
Madrid Protocol: An international treaty allowing trademark owners to seek registration in multiple member countries through a single application filed with their home office, such as the USPTO.
Trademark Law Revision Act: The 1988 amendment to the Lanham Act that introduced intent-to-use applications and made other changes, effective November 16, 1989.
Trademark Modernization Act: The 2020 law that created ex parte expungement and reexamination proceedings and clarified the rebuttable presumption of irreparable harm for injunctions in trademark cases.
TESS: The USPTO’s Trademark Electronic Search System, used for searching federal trademark applications and registrations; replaced by the new Trademark Search system in 2023.
Design search code: A numerical code from the USPTO’s Design Search Code Manual used to search for design marks by their figurative elements, such as animals or geometric shapes.
du Pont factors: The 13 factors from In re E.I. du Pont de Nemours & Co. that the TTAB considers when assessing likelihood of confusion between two marks.
Knock-out search: A preliminary search of the federal register for identical or near-identical marks in the same class, conducted before a full clearance search to identify obvious blockers.
Acquired distinctiveness: The legal doctrine under § 2(f) that allows a descriptive mark to be registered on the Principal Register if the applicant proves the mark has acquired secondary meaning.
Clearance search: A comprehensive search of federal, state, and common-law sources to identify potential conflicts with a proposed trademark before filing or use.
Intent-to-use application: A federal trademark application filed under § 1(b) based on a bona fide intent to use the mark in commerce, not on actual use.
TEAS Plus: A USPTO electronic filing option with a lower fee, requiring the applicant to use pre-approved wording from the ID Manual and comply with other requirements.
Specimen of use: Evidence showing the mark as actually used in commerce, such as packaging or a website screenshot, required for use-based applications and § 8 declarations.
ID Manual: The USPTO’s Acceptable Identification of Goods and Services Manual, which provides pre-approved wording for goods and services in trademark applications.
Statement of Use: A filing in an intent-to-use application that alleges the mark is now in use in commerce and includes a specimen, required before registration issues.
§ 44(d) priority: A claim in a U.S. application based on a foreign application filed within six months, giving the U.S. application the benefit of the foreign filing date.
Office action: A written notification from the USPTO examiner raising issues with an application, such as likelihood of confusion or descriptiveness, to which the applicant must respond.
Final Office action: An examiner’s action issued after a response to a non-final action, from which the applicant may appeal to the TTAB or request reconsideration.
Notice of Allowance: The USPTO notice issued in an intent-to-use application after publication, indicating the application has been approved but registration awaits a Statement of Use.
Suspension: A temporary halt in prosecution, often because a prior-filed application or registration may block the current application, pending resolution of the earlier matter.
TTAB appeal: An appeal to the Trademark Trial and Appeal Board from a final refusal by the examiner, involving briefing and possibly an oral hearing.
§ 2(d) refusal: A refusal to register based on a likelihood of confusion with a prior registered or applied-for mark, the most common substantive refusal.
Consent agreement: An agreement between an applicant and a prior mark owner allowing registration, often used to overcome a § 2(d) refusal if the parties agree to avoid confusion.
Supplemental Register: A secondary register for marks capable of distinguishing goods or services but not registrable on the Principal Register, such as descriptive marks without acquired distinctiveness.
Examiner’s amendment: A proposed change by the examiner to an application to resolve issues, which the applicant must review and agree to before it takes effect.
Opposition proceeding: A TTAB proceeding filed within 30 days of publication by a party who believes it would be damaged by registration of the mark.
Cancellation proceeding: A TTAB proceeding to cancel a registered mark, filed by a party who believes it is or will be damaged by the registration.
Extension of time to oppose: A request filed with the TTAB to extend the 30-day opposition period, up to 90 days initially, with further extensions possible for good cause.
Ex parte expungement: A TMA-created proceeding allowing a third party to request cancellation of a registration for goods or services never used in commerce.
§ 8 declaration: A filing between the 5th and 6th year after registration (with a six-month grace period) attesting continued use of the mark, required to maintain the registration.
§ 15 declaration: A filing after five years of continuous use that makes a registration incontestable, providing conclusive evidence of the mark’s validity and exclusive right to use.
§ 9 renewal: A filing every 10 years after registration (with a six-month grace period) to renew the registration, required to keep it in force.
Post-registration audit: A USPTO program that randomly audits registrations to verify use of the mark, with failure to respond potentially resulting in cancellation.
Polaroid factors: The multi-factor test from Polaroid Corp. v. Polarad Electronics Corp. used in the Second Circuit to assess likelihood of confusion in trademark infringement cases.
Trademark counterfeiting: The trafficking in goods or services knowingly using a counterfeit mark, subject to criminal penalties and civil statutory damages up to $2,000,000 per mark.
Trademark dilution: A cause of action under the TDRA for famous marks, based on blurring or tarnishment, without requiring likelihood of confusion.
ACPA: The Anti-Cybersquatting Consumer Protection Act, which provides a cause of action against bad-faith registration of domain names confusingly similar to trademarks.
Bona fide intent: The requirement in an intent-to-use application that the applicant actually intends to use the mark in commerce, not merely to reserve it.
Duty of candor: The ethical obligation of a practitioner to disclose material information to the USPTO, such as known conflicting marks or prior registrations.
Conflict of interest: A situation under USPTO ethics rules where representation of one client is directly adverse to another, requiring informed consent from both clients.