Patent, Trademark and Copyright Resources

Trademark Terms - C

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• Cancellations
• Cancellation Proceeding
• Certificate of Registration
• Certification Mark

• Collective Mark
• Colorable Imitation
• Commerce
• Common Law Rights

• Community Trademark
• Concurrent Use
• Counterfeit

Cancellations: Cancellations are similar to oppositions, except that they are instituted post-registration. Frequently, an applicant brings a cancellation to remove a registration cited against a pending application based on alleged abandonment, prior use by the applicant, or the mark being descriptive or generic. Actions based on descriptiveness or prior use cannot be brought after a registration becomes incontestable, i.e., after a Section 15 Declaration has been filed. However, even after a registration becomes incontestable, a cancellation based on the mark being generic or abandoned can be filed. Use by the petitioner before the filing date of the registrant, even only local use, will defeat the registration. Standing is required to bring a cancellation, and a filing fee is required.

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Cancellation Proceeding: A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an existing registration of a mark. The proceeding may only be filed after issuance of a registration. A petition for cancellation may be filed by any person who believes that he or she is or will be damaged by the registration of the mark.

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Certificate of Registration: Official document from the USPTO evidencing that a mark has been registered.

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Certification Mark: Any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

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Collective Mark: A trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.

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Colorable Imitation: The term "colorable imitation" includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.

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Commerce: The word "commerce" means all commerce which may lawfully be regulated by Congress. No limitations can be read into this.

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Common Law Rights: Common law trademark and trade names are non-statutory, use-related rights, which result from selling a product under a trademark or providing a service under a service mark. These rights exist even though state and federal trademark laws are now in force. When a trademarked product is sold, when services are performed under a service mark, or when a business is operated under a trade name, the owner or seller acquires rights to prevent others from using the same, or confusingly similar marks or names, for similar goods and services or businesses in the same market territory. Property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily-demonstrated evidence of ownership of a mark.

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Community Trademark: ("CTM"): A trademark registration system that was established April 1, 1996, by the European Union to provide a unified trademark for the entire European Community. Once acquired, the mark covers all 15 countries of the European Union. A CTM registration covers the following countries: Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxemburg, The Netherlands, Portugal, Spain, Sweden and the United Kingdom.

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Concurrent Use: Concurrent use is an inter partes proceeding where several parties are granted registrations for the same mark covering different parts of the country. The proceeding is instituted following publication of a mark for opposition and is conducted before the Board of Appeals. The first user or registrant is entitled to nationwide registration, subject to the second party's use area. These proceedings are much less common than oppositions.

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The Trademark Counterfeiting Act of 1984 provides criminal penalties up to $250,000 and/or five years imprisonment for intentional trafficking or attempted trafficking and knowing use of the counterfeit mark. Corporations can be fined up to $1,000,000. Civil remedies mandate treble damages or profits and attorney fees.

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