BUL 2561 - Chapter 03 & 04

United States Patent Office (USTPO)

Federal Agency within the U.S. Department of Commerce charged with registering trademarks and granting patents.

Trademark Dilution Revision Act (TDRA)

Law passed by Congress in 2006 to overturn the holding of the U.S. Supreme Court in Mosley v. V Secret Catalogue, Inc. which required plaintiffs to establish proof of "actual dilution." Now a plaintiff needs to only establish a "likelihood of dilution."

Anticybesquatting Protection Act (ACPA)

A 1999 federal law authorizing a trademark owner to obtain a federal court order transferring ownership of a domain name from a cybersquatter to the trademark owner.

Business Method Patent

A U.S. patent that describes and claims a series of process steps that, as a whole, constitute a method of doing business.

Unclean Hands

A defense often raised in infringement actions; an assertion that the plaintiff's own wrongful conduct precludes recovery and relief.

Trade Name

A name used to identify a company or business.

Patentee

A patent gives to the patentee or holder of the patent the right to exclude others from making, using, offering for sale, or selling the patented invention.

Design Patent

A patent granted for a new, original, and ornamental design for an article of manufacture; a patent that protects a product's appearance or non functional aspects.

Utility Patent

A patent granted for one of the following types of inventions: a process, a machine, a manufacture, or a composition of matter (such as a new chemical). Utility patents are the most commonly issued patents.

Patent

A patent is an intellectual property right granted by the U.S. Government 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 limited time in exchange for public disclosure of the invention when the patent is granted.

Patent Agent

A specialized legal professional-not necessarily a licensed lawyer-who prepares and prosecutes patent applications before the Patent and Trademark Office. Patent agents must be licensed by the Patent and Trademark Office.

Likelihood of Confusion Test

A test for trademark infringement, based on probability that a substantial number of ordinarily prudent buyers will be misled or confused about the source of the product.

Service Mark

A word, logo, phrase, or device used to indicate the source, quality, and ownership of a service.

Trademark Trial and Appeal Board (TTAB)

An administrative board within the USPTO that hears and decides adversary proceedings between two parties, namely, oppositions (party opposes a mark after publication in the OG) and cancellations (party seeks to cancel an existing registration).

Interference

An administrative proceeding in the USPTO to determine who is entitled to the patent when two or more applicants have claim the same invention, or when an application interferes with an existing patent.

U.S. Court of Appeals for the Federal Circuit

An intermediate-level appellate court with jurisdiction to hear appeals in patent cases and some administrative agencies.

Madrid Protocol

An international agreement that provides for an international trademark registration system.

Laches

An unreasonably delay in asserting one's rights that causes prejudice or harm to another; a common defense asserted in intellectual property infringement actions.

Markman Hearing

In patent cases, a hearing at which the court receives evidence and arguments concerning the construction to be given to terms in a patent claim issue.

Prior Art

In patent cases, knowledge that is publicly known, used by others, or available on the date of invention to a person of ordinary skill in an art, including what would be obvious from that knowledge.

Internet Corporation for Assigned Names and Numbers (ICANN)

Non-profit corporation that oversees domain names.

Principal Register

Publication maintained by the USPTO, that lists distinctive marks approved for federal trademark registration.

Trademark Electronic Search System (TESS)

The USPTO's inline search engine allows visitors to search the USPTO's database of registered trademarks and prior pending applications.

Trademark Electronic Application System (TEAS)

The USPTO's system for electronic filing of trademark documents, including applications for trademarks.

Uniform Domain Name Dispute Resolution Policy (UDRP)

The dispute resolution policy adopted by ICANN.

Lanham Act

The federal statue, found in Title 15 United States Code, that governs the law of trademarks. Also called the United States Trademark Act.

Patent Prosecution

The process of applying for a patent through the U.S. Patent and Trademark Office and negotiating with the patent examiner.

Board of Patent Appeals and Interferences

The quasi-judicial body in the U.S. Patent and Trademark Office that hears (1)appeals from patent applicants whose claims have been rejected by a patent examiner, and (2) interference contests between two or more applicants trying to patent the same invention.

Official Gazette for Trademarks (OG)

The weekly publication of the USPTO of trademarks for purposes of opposition that contains bibliographic information and a representative drawing for each mark published, along with a list of cancelled and renewed trademarks.

Domain Name

The words and characters that website owners designate for their registered internet addresses.

Dilution

Unauthorized acts that tend to blur the distinctiveness of a famous mark or to tarnish it.