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Scope of search in trademark law
The scope of a search may vary depending upon: (1) where you intend to use the mark; (2) which industry you are selling your goods or services; (3) how much money you are willing to spend in a search, and (4) your tolerance of the unknown, or legal risks in general. 

Generally speaking, a good search will include identical marks in all industries, and confusingly similar marks within your own industry or industries. To the extent that you have enough money, and you don't tolerate risk well, you should pay for a professional search firm to conduct a nationwide search of all existing and pending state and federal government registrations, and perhaps even Secretary of State filings, which are not part of most firms' "full search" requests. If you have even a remote interest in expanding internationally, then you should also conduct a similar search in any country or continent in which you think you may expand. However, if you are low on funds, and highly risk tolerant, then you must, at a minimum, still search obvious places to find possible prior users of your mark, including, but not limited to, the yellow pages, the Internet, and any industry journals in all the regions of the country in which you plan to conduct business.  

Recent court decisions indicate that failure to conduct a reasonable search may be deemed "bad faith" in an infringement lawsuit, particularly in light of the ease of searching online databases, and especially for larger companies with the means to investigate prior rights.  Furthermore, even if you don't plan to immediately operate in an adjacent territory, you should still conduct a search there because businesses with plans for expansion into your area may, in some cases, have prior rights in your area. (See the doctrine of natural expansion).

Search, Trademark
An investigation conducted in order to determine the availability of a proposed mark.  A search report is typically generated by a professional search firm or law firm containing 50 -100 trademarks that may be related enough to the proposed mark to create a risk of infringement.  The report is then analyzed by an attorney in order to assess the legal strength of the trademark, and to determine whether prior uses of the mark present a risk to the client of incurring infringement liability.

There are several popular misconceptions about trademark searching.  First, it is often said that trademark searching is optional.  While it is true that you may have protection in a mark without searching, it is also true you may be held liable for willful trademark infringement if you fail to search.  

Second, it is commonly believed that searching identical or near-identical marks will suffice.  This is not true, because the standard for infringement is confusingly similar, which encompasses marks that are less related than near-identical.

Finally, some unscrupulous trademark search firms imply that the searching "requirement" includes only federally registered marks.  In fact, recent cases have said that not only are federal and state registrations important to search, but also common law marks, i.e. marks that are not registered.  Incidentally, the reason some search firms propagate this myth is that they are unequipped to handle common law searching, and they don't want to lose business to the larger search firms who have tremendous common law searching capabilities.

Secondary meaning
The requirement in trademark law that certain marks must obtain a level of market awareness or recognition from consumers prior to receiving any protection.  Descriptive marks, as well as those that are primarily construed as surnames or as geographical indicators all require secondary meaning in order to be registered or to invoke court assistance stop infringers.

The type of market awareness required is recognition from in the minds of the relevant consuming public that the mark is used as a brand, and not merely used to describe a product, region, or someone's surname.  For example, "McDonald" was once mostly thought of as a surname.  When this name became widely used to sell burgers, then "McDonald's" has the power to bring to mind a restaurant chain in the minds of consumers.  Once that happened, "McDonald's" acquired a second meaning, aside from its primary meaning as a surname, and as such, became capable of trademark protection.

Only "relevant consumers" are the ones who must have experienced the cognitive shift from viewing the mark as a descriptive term, surname or geographical term, to a brand-identifier.  This includes not only purchasers, but also those who might someday be purchasers of the products bearing the mark in question.  

Secondary meaning is generally acquired only after long-term exposure to the mark as a brand identifier, or else from extensive advertising.  It can be proven by evidence such as a survey of relevant consumers, sales figures, trade literature referring to the mark, large advertising expenditures, or other proof of widespread advertising.  Proof that a mark has been used exclusively for five years is prima facie evidence that the mark has acquired secondary meaning.

Second level domain name
The second level domain is the portion of a domain name that is owned by the domain name registrant.  For example, in the following URL: http://www.etoys.com "etoys" is the second level domain, while "com" is the top level domain.  The combination of a top level and second level domain name is unique.  For example, there can only be one etoys.com, even though there can be multiple etoys second level domains (e.g. etoys.org, etoys.net, etoys.ca, etc.)

Section 2(f) claim
A section 2(f) claim is an argument made to the U.S. Patent and Trademark Office (USPTO) that a mark has become distinctive.  This claim can be made by proving continuous and exclusive use of a mark for five years, or by producing other proof of secondary meaning.

Section 2(f) of the Lanham Act (15 U.S.C. 1052(f)) provides that marks that would otherwise be denied registration, can be registered if they have become distinctive by acquiring secondary meaning.

Section 8 affidavit (Affidavit of Use) .7
A filing with the U.S. Patent and Trademark Office (USPTO) stating that the mark in question is has been in continuous use for five years since the registration was issued. Failure to file this affidavit between the fifth and sixth years after registration will result in an automatic cancellation of the trademark registration. This affidavit can be filed in conjunction with the Section 15 Affidavit to request incontestability status.

Section 15 affidavit (Incontestability Affidavit)
Section 15 allows for the incontestability of a mark if a separate filing is made with the USPTO five years after registration.  The filing must attest to the fact that the mark has been used continuously since registration.  Usually this filing is made in conjunction with the required Affidavit of Use.  Additional filings of the Section 15 Affidavit are not required upon renewal of the mark.

Seizure of counterfeit goods
The U.S. Customs Service is authorized to seize counterfeit goods. However, the owner of the trademark must first record a valid U.S. trademark registration with Customs. For marks which are so recorded, U.S. Customs is authorized to seize the counterfeit goods, and provide notice to the trademark owner of the counterfeits. Destruction after seizure is mandatory unless the trademark owner consents to giving the goods to charity after removing the counterfeit marks from the goods.

Service mark
Simply put, a service mark is a trademark used exclusively for services as opposed to goods.  It is any word, symbol, phrase, picture, color, sound, or packaging scheme used in commerce to identify and distinguish one service provider's services from another service provider's services. 

Notice of a valid service mark is denoted by the use of the "^sm" symbol, whereas the "tm" symbol is reserved for marks selling goods.

Settlement
An agreement reached between parties in a lawsuit or potential lawsuit.

In trademark cases, a settlement may include:  the alleged infringer gradually phasing out the allegedly infringing mark;  the alleged rightful owner of the mark licensing use of the mark to the other party;  both parties agreeing to carve out areas in which they can each use or not use the mark;  a monetary payment;  and any other arrangement within the imagination of the parties.

Shapes, trademark protection of 1.1
Product shapes are capable of trademark protection under the rapidly expanding doctrine of trade dress.  As long as the product shape meets the requirements under trademark law of distinctiveness, and unobjectionable content, and the shape is not a functional feature of the underlying product, it qualifies for trademark protection, and can be registered with the US Trademark Office. 

Examples include the famous Coca-Cola bottle,

and the fish-like shape of a Pepperidge Farm cracker.

Similarity of marks
Similar marks cannot co-exist as trademarks if they are similar in such a way that is likely to cause consumers to be confused as to the source of the products using such marks.  When one mark is deemed "confusingly similar" to another, the the second user of the mark has infringed the first user.  

Slogans, trademark protection of1.1, 2.22
Slogans are capable of trademark protection as long as they  meet the trademark law requirements of use in commerce, distinctiveness, and unobjectionable content.

Since slogans frequently are used as marketing instruments to describe the underlying product or service, they are almost always descriptive, and lack inherent distinctiveness. Once they are used extensively enough in the market place to acquire secondary meaning, they may be registered.

Smells, trademark protection of1.1
Trademark protection exists for smells as long as they  meet the trademark law requirements of use in commerce, distinctiveness, and unobjectionable content, and as long as the particular smell is not a functional feature of the product.

Sounds, trademark protection of 1.1
Trademark protection exists for sounds or musical compositions to the extent that they meet the trademark law requirements of use in commerce, distinctiveness, and unobjectionable content, and provided that the sound is not a functional feature of the product being sold. 

A famous example of a sound trademark is the three notes heard along with the NBC peacock.

Source
In trademark law, a source is the unique manufacturer or service provider from whom a trademark originates.  When a consumer sees a trademark, he/she knows the product bearing that trademark is from the same source as all other products bearing the same mark.  

It is not necessary that the hypothetical consumer knows the actual name of the manufacturer or service provider. All that is necessary is that the consumer knows the products bearing one mark are from one source, while the products bearing another mark are from a different source.  For example, BETTY CROCKER receives trademark protection, even if nobody knew that the source of Betty Crocker products was actually General Mills, Inc., the company that owns the BETTY CROCKER trademark.

The entire purpose of trademark law hinges on the ability of a trademark to identify a unique source.  If one mark is related enough to another mark, in terms of look, sound, meaning, and use, then they no longer function to identify a single source, and thus cease to function as a trademark  For this reason, a trademark is also referred to as a source discriminator, since it serves to help consumers discriminate between brands when making purchasing decisions.

Source discriminator
Another name for a trademark that reflects what a trademark actually does.  See "source" immediately above.

Specimen
Specimens are submitted with a trademark application as proof of actual use of a trademark.  Choosing the right specimens for your application is critical because the Trademark Examining Attorney uses the specimens to decide whether a mark qualifies as trademark, whether the mark is actually "used" in a trademark sense, whether the mark is too similar to other marks that it cannot be registered, whether the drawing page submitted with the application is appropriate given the specimen submitted, and whether the type of goods or services claimed in the application are in fact those that are sold.    Click here for more about specimens.

Standing
The legal term for the right to bring a claim before a judicial or regulatory body. The person bringing the claim must have "a personal interest in the outcome beyond that of the general public."

Standing, requirement in a cancellation action
Standing is a requirement when filing for the cancellation of another party’s mark.  Specifically, the petitioner must believe he or she is damaged by the existence of the registration sought to be canceled. Typically, standing in a cancellation action will exist where there is a likelihood of confusion with petitioner’s mark or when the petitioner’s application was rejected on the basis of the challenged mark’s prior right.

Standing, requirement in an opposition proceeding
Oppositions may be filed by any person who believes that he/she would be damaged by the registration of a mark.  This rule together with the general law of "standing," means that the opposer should have some commercial involvement with the goods or services that are being described by the mark in question.

State versus federal trademarks
State trademarks are typically used exclusively in intra-state commerce, while a federal marks are those used in interstate commerce.  Interstate use of a mark is required in order to register a mark federally.  There is no requirement that state marks be used only in one state. Thus, there can be, and usually is, concurrent protection for a mark under both state and federal law. State and federal trademarks are always common law marks, because no matter where a mark is used, it is protected under the common law the moment it is first used in commerce anywhere in the U.S.. 

Registration of trademarks by the state or federal government provides additional protection beyond what is offered under common law. The benefits of registering a mark federally are far greater than those offered under state registrations. However, the process for registering a mark federally is more extensive, rigorous and time-consuming than it is for state registrations.

Statement of Use
A document that must be filed with the USPTO for all Intent to Use applications, in lieu of an Amendment to Allege Use.   Both the Statement of Use and the Amendment to Allege Use allow the applicant for trademark registration to verify that they have begun using the mark in interstate commerce.  Specifically, the Statement of Use must include a verified statement that: (1) the applicant is the owner of the mark;  (2) the mark is used in commerce; (3) the mark is used on or in connection with the goods or services included on the Notice of Allowance; (4) and a listing of the dates of first use anywhere, the dates of first use in interstate commerce, and the manner or mode in which the mark is used.  Three specimens must accompany the Statement of Use.

Strength, trademark
The legal strength of a mark is measured in two ways;  the mark's distinctiveness and its level of dilution.  Distinctiveness is a measure of the inherent qualities of the mark with relation to the underlying goods or services sold, while dilution  looks at the number of other companies using the same or similar marks.   The more users there are of a mark, the more it is diluted, and thus the less protection that is available for that mark.

In short, distinctiveness measures the degree to which the inherent meaning of a mark correlates with the qualities and nature of the underlying product.  Generally, the more distinctive the mark, the stronger legal protection it receives.  The distinctiveness spectrum consists of marks that are generic, descriptive, suggestive, arbitrary, and coined or fanciful.  Those marks that are suggestive, arbitrary and coined are considered distinctive immediately upon their first use in commerce.  Descriptive marks are not immediately distinctive, but can acquire distinctiveness, and thus legal protection, if they are used or advertised extensively enough in commerce to acquire secondary meaning.

Very often, marks that are strong for marketing purposes are weak legally, and receive narrow protection, or sometimes no protection whatsoever.  Words that describe the qualities or nature of a product benefit from strong marketing potential in the initial marketing stages, because they communicate instantly to customers what the product actually is or does.  For example, "Quick Fix Radiator Mix," tells the customer immediately that this substance fixes radiators quickly. This presumably saves on initial advertising expenses.  It is worth noting, however, that the long term branding potential of a mark is probably enhanced with strong legal rights that allow for greater distinctiveness.

Subjectivity in trademark law
Trademark law is likely to be one of the most subjective areas of the law. The reason for this is that language and communication, which are at the heart of trademarks, depend completely on one's cultural experiences, whether those experiences are shaped by ethnicity, economic class or even the passage of time. For instance, cases decided one way today might have been decided differently 50 years ago, simply because the connotation of words and symbols change through time. 

Because of the inherent subjectivity in trademark law, it is not unusual for a Examining Attorney with the U.S. Patent and Trademark Office, or a federal court judge to have differing views on the legal attributes of a mark. Likewise, a legal opinion given by an attorney regarding the availability of a mark may not agree with the opinion arrived at by another attorney or judge looking at the same material.  Yet, all may have legitimate opinions. For this reason, it may be a good idea to obtain second and third opinions from different attorneys when clearing a mark for use. 

Suggestive trademarks
Suggestive trademarks are those that 'suggest' rather than 'describe' qualities of the underlying goods or services.  Examples of suggestive marks include: ACOUSTIC RESEARCH for stereo loudspeakers, HABITAT for home furnishings, GREYHOUND for bus transportation services, and Q-TIPS for cotton-tipped swabs.

Suggestiveness and descriptiveness are not mutually exclusive.  There must exist some description in almost any suggestion. However, by going beyond "mere description" the law elevates a suggestive term into the valuable category of "inherently distinctive" marks, which receive protection immediately upon their first use in commerce.  Courts have clarified this fine distinction by stating that a mark is suggestive if it requires imagination, thought and perception to determine the nature of goods or services in question.  For instance, it takes an imaginative leap to realize that greyhounds are sleek and fast, and that these traits are connoted in the use of GREYHOUND for a bus line.  By contrast, no imaginative leap is required to figure out that QUICK STOP for a convenience store is meant to connote speedy service, and that such a mark would be classified as descriptive rather than suggestive.

Supplemental Register
The Supplemental Register is a secondary list of registered marks maintained by the USPTO. Marks on the Supplemental Register do not qualify for registration on the Principal Register, and as such, these marks do not receive the many benefits of registration available on the Principal Register. However, registration on the Supplemental Register allows the mark owner to use the ® symbol next to their mark, and also provides notice to potential users of the mark that the mark is already being used. 

Typically, Supplemental Register marks are those that are registered in foreign countries but not yet used in the United States, as well as those that are not descriptive. Once a mark becomes distinctive through extensive use, or has been on the Supplemental Register for five years, the mark owner may petition to have it moved to the Principal Register.

Surnames, trademark protection of
Trademarks consisting of a person's own last name are usually not protected under trademark law unless the mark has acquired secondary meaning through extensive use and/or advertising in commerce.  However, some surnames do not require secondary meaning in order to receive protection. That occurs when the surname also describes some other thing, such as BIRD, KING, or FLOWERS. 

Courts have taken two different approaches in analyzing whether or not a surname has a meaning different enough from a last name so as not to require secondary meaning. One view requires secondary meaning when the mark's primary meaning is as a surname, while the other view requires secondary meaning when the mark's only likely impact is as a surname.  Thus, in some courts, a surname can still receive protection without secondary meaning, if the mark is not perceived primarily as a surname, even if the only true meaning of the word is in fact as a surname. However, even if a surname is rare in the public at large, but the relevant consuming public conceives of the name primarily as a surname, it cannot be protected without secondary meaning.

It is worth noting that a surname can always be registered and protected without proof of secondary meaning, if it is used together with arbitrary or fanciful components.  However, such protection will be weak with respect to the surname component alone, except insofar as that component acquires secondary meaning.

Surveys
Surveys of potential consumers are frequently used in trademark legal battles to prove various aspects of a trademark's legal viability. For example, a survey may be useful to prove that a mark has acquired secondary meaning, that it is not generic, is non-functional, legally strong, or is not likely to confuse consumers with regard to an existing trademark. Surveys can also be used to prove a plaintiff's lost profits, which is evidence that is notoriously difficult to obtain without a survey.

Independent survey firms are used to prevent the appearance of impropriety and bias of the survey data.  According to Phyllis J. Welter, an expert on trademark surveys, use of surveys in trademark litigation has grown from roughly 5.6% in the 1950's to over 12% in the 1980's. Ms. Welter's book, Trademark Surveys, published in 1998 by West Group, is an excellent source of information on how to utilize surveys in trademark litigation.

Symbols, protection of
Trademark law protects any symbol, as long as the symbol meets the requirements of trademarks. Drawings, sometimes referred to as "logos" are non-lingual symbols, and can be registered as design trademarks. However, any word is also a symbol, and can be registered as a lingual mark or a design mark if the trademark incorporates a design or logo in addition to the lingual components.