Important Terms to Know while doing Trademark Filing – Part II

In the previous part, we discussed some terms those are commonly used in the arena of trademark and trademark filing. With this article, we came up with some more terms those are used by professionals working in the domain of trademark and trademark filing.

Important Terms generally used while doing Trademark Filing

International Class – It is a kind of designation provided in all federal trademark applications to identify the kinds of goods or services for which a particular mark will be used. As an applicant, it is important for individuals, companies, and corporations to use this information in their trademark search strategies to determine if their mark is available to use or not. The application fee for a federal registration includes registration for only one international class. A good search strategy is to broaden the scope of the search for those classes in which the proposed mark may potentially belong.

Benelux Convention- This is an international treaty governing the trademark laws of Belgium, the Netherlands, and Luxembourg. The name Benelux is formed from joining the first two or three letters of each country’s name – Belgium Netherlands Luxembourg and was signed in 1962 and was followed by a common registration system. 

Blackout period- The period in which an Intent to Use trademark applicant is prohibited from filing an Amendment to Allege Use or a Statement of Use. This period begins once the mark is published in the Official Gazette, and continues until the Trademark Office issues a Notice of Allowance.

Cease and desist letter- A cease and desist letter is a document sent to an individual or business to halt a purportedly illegal activity (“cease”) and not take it up again later (“desist”). The letter may warn that if the recipient does not discontinue specified conduct, or take certain actions, by deadlines set in the letter, that party may be sued. When issued by a public authority, a cease and desist letter, being “a warning of impending judicial enforcement”, is most appropriately called a “cease and desist order”

Common law- This is one of the most significant laws that is being used in the United States trademark domain. Unlike statutory laws, it originates from court decisions and refined through prior court precedents. As per common law, a trademark can be deemed valid as long as the user has the proof of using it in any form of commerce. It is not mandatory to get it registered with the appropriate authority. trademark filing

Distinctiveness- The ability of a mark to allow the relevant consuming public to discriminate the source of a product or service. Distinctiveness is a prerequisite to trademark registration on the Principal Register. Fanciful, arbitrary, and suggestive marks are inherently distinctive, while descriptive marks are not distinctive unless used extensively enough to develop a certain level of market awareness, called secondary meaning. trademark filing

Distinctiveness requirement- The requirement by the USPTO that all marks listed on the Principal Register must be distinctive. Marks that are not distinctive may still be federally registered, but are only listed on the Supplemental Register, and do not have many of the benefits of registration on the Principal Register. Courts also required to ensure that a mark is distinctive in order for it to have any protection under the common law.

Simply, by knowing all these terms your trademark filing would be a sheer joy and an applicant could choose better terms for their businesses without bothering much about infringement related worries.

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