Trademark Glossary Entries (R Through S)
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R

R-Trademark (also known as "registered trademark,"®," "trademark-R," "encircled-R," or "circle-R")
This is a symbol that literally means "this symbol is a federally registered trademark"   In order to lawfully use the
® symbol next to your mark, you must be currently registered on either the Principle or Supplemental Registers maintained by the U.S. Patent and Trademark Office (USPTO). Intentional use of the circle-R on a non-registered mark may jeopardize future registerability status with the USPTO, and may be used against you in court as evidence of bad faith intent.  Learn more about symbols such as the trademark-R and how they should be used.

Reasonable reliance on licensee19.7 19.8
Recording assignments
Recording of an assignment with the U.S. Patent and Trademark Office (USPTO) is not mandatory, but is generally a good idea, so as not to invite the argument that inadvertent abandonment occurred, and to provide accurate notice enabling courts to award treble damages and costs. Only assignments of registered marks can recorded. The assignor or assignee may submit the recordation, which should include the USPTO cover sheet, assignment document, and the $100 fee.
Recording registration with U.S. Customs
Recording a trademark allows U.S. Customs to interdict the importation of counterfeit goods, goods with infringing marks, and gray-market goods. The government fee for recordation is $190, and the process involves providing the appropriate information on corporate stationary to: Intellectual Property Rights Branch, U.S. Customs Service, 1301 Constitution Avenue, N.W., Franklin Court, Washington, D.C. 20229. For more information on how to record, see the INTA publication entitled, Practitioner's Guide to the Recordation of Trademarks with Customs in the U.S. and the E.E.C., edited by June Gardner Kolbert and David Allen Latham. You may order this publication directly from the INTA at http://www.inta.org/publindx.htm#country2ed
Register, Principal
This is the primary registry of trademarks maintained by the
U.S. Patent and Trademark Office (USPTO). In order to qualify for registration on the Principal Register, a trademark must be distinctive and currently in use. Trademarks that qualify for Principal Register registration receive the all the benefits of registration, whereas those registered on the Supplemental Register do not.
Register, Supplemental
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 Principle 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 it is already being used. Typically, Supplemental Register marks are those that are registered in foreign countries but not yet used in the United States, and 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 removed to the Principal Register.
Registration
A registration is a grant of rights by the government in a given trademark. Registrations are granted by the Federal government, as well as most state governments. An application for registration requires providing data in the following categories: dates of use, description of goods or services, designation of class, drawing of mark, identification of applicant, specimens, and verification and execution.

Rejection by the Trademark Examiner
An initial refusal to register a mark made by the U.S. Patent and Trademark Office (USPTO) Examining Attorney. Marks may be rejected for several reasons, including that the mark is likely to cause confusion with other marks, is not distinctive, is generic or forbidden, or for inadequacies of the application itself such as a description of goods that is too vague, or specimens that don't demonstrate use for the claimed goods or services. If the mark is rejected, the Examining Attorney will send an office action to the trademark owner or their attorney. The owner or attorney then have the opportunity to respond within six months, or the application is automatically canceled.
Remedies for infringement
Depending on one's perspective, a remedy may either be the penalty applied when found liable for infringement or dilution of a trademark, or the relief that the trademark owner may obtain under such circumstances. Remedies available include:
injunctive relief to stop use of the mark, monetary relief, a bar on importation, cancellation of trademark registration, criminal indictment, a declaratory judgment, or other equitable relief as the court may see fit.
Reserving a name (Name reservation)
Registering the name of a business with the state in order to reserve that name for the business owner. Most states will reserve a name that is not an exact duplicate of an existing name, with no attention given to confusingly similar names. For this reason, it is not sufficient to search a state’s database of existing business names to determine whether or not there is a preexisting trademark right.
Response
A reply from a trademark applicant to the U.S. Patent and Trademark Office (USPTO) after the USPTO has sent the applicant an initial refusal of registration (
office action). A response is due after six months of receiving the office action, or else the application will be deemed abandoned.
Reverse confusion 1.14, 7.26
Unlike typical consumer confusion in which the second (junior) user of a mark "cashes in" on the goodwill generated by the first (senior) user of that same mark, reverse confusion occurs when the second user becomes better known than the first user. Thus, the first user looses the opportunity to control its own reputation and goodwill. Consumers may even disrespect the first user assuming the second user is the original, while the first user is merely a copycat. The first user is virtually always the prevailing party in any trademark litigation.
Reverse Domain Name Hijacking
This occurs when corporations intimidate people or companies out of their domain names under the guise of trademark ownership, even though the particular use of a domain name does not constitute trademark infringement, dilution, or unfair competition in any manner. Some trademark legal scholars have speculated that this reverse domain hijacking may be met with cancellation of the company's mark under the doctrine of trademark misuse.
Right of priority
The right to exclude all other confusingly similar uses of a mark based on having been the first to use that mark.

S

Scope of search in trademark law
The scope of the search, including the territory in which you conduct the search and the industries within which you search, is dependent 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. 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 the Internet, the yellow pages, and any industry journals in all the regions of the country you plan to conduct business, since recent court decisions indicate that failure to conduct a reasonable search may be treated as willful infringement. 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 will have rights prior to yours in some cases. (See the doctrine of natural expansion).
Search 3.4-7
An investigation conducted in order to determine the availability of a proposed mark, to identify potential challengers to a mark already in use, or to discover potential infringers of a mark in use.
Secondary meaning
An awareness on the part of the relevant consuming public that a mark identifies a particular good or service, and is not limited to its common, or primary, meaning. Secondary meaning is generally acquired only after exposure to the term as a brand identifier after extensive advertising. Descriptive marks and surnames must acquire secondary meaning in order to become registered or to be protected as a trademark.
Second level domain name
The second level domain is the portion of a domain name that is made up by the domain name owner. For example, in the following URL: http://www.pliam.com "pliam" is the second level domain, while "com" is the top level domain.
Section 2(f) claim
A claim made to the U.S. Patent and Trademark Office (USPTO) that the mark being applied for has distinctiveness by virtue of long and continuous use and/or because of widespread use and promotion, i.e. that the mark has acquired secondary meaning.
Section 8 affidavit (affidavit of use) .7
A required filing with the U.S. Patent and Trademark Office (USPTO) stating that the mark is 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. The Affidavit of Use is 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 following five years of continuous use of the mark after registration. Incontestability status is not automatic, but occurs upon a filing with
with the U.S. Patent and Trademark Office (USPTO), a filing made in conjunction with the required Affidavit of Use which is required between the fifth and sixth years after registration. Future renewals do not require additional filings of the Section 15 Affidavit.
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 give the goods to charity after removing the counterfeit marks from the goods.

Service mark
The same thing as a trademark except that the term
pertains only to words, symbols, phrases etc., used in commerce to identify and distinguish services as opposed to identifying goods. NOTE: The term "trademark" is frequently used interchangeably to mean a mark for either goods alone or both goods and services.
Settlement
Agreement reached between litigating or potentially litigating parties to a dispute. Common examples in trademark cases include gradual name change, licensing, limitations on use, or a monetary payment.

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 shape meets the requirements of a trademark and is not a functional feature of the underlying product. Examples include the famous Coca-Cola bottle, and the round Honeywell thermostat.
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. Click here for more on consumer confusion and trademark infringement.
Slogans, trademark protection of1.1, 2.22
Slogans are capable of trademark protection as long as they meet the requirements of a trademark. However, 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 to the extent that they meet the requirements of a trademark.
Sounds, trademark protection of 1.1
Trademark protection exists for any sounds or musical compositions to the extent that such music meets the requirements of a trademark. A famous example are the three notes heard along with the NBC peacock.
Source
The manufacturer or service provider who provides a good or service. The function of trademarks is to allow consumers to identify the source of products or services so they can avoid the brands dislike and buy the ones they like. 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 can discriminate between brands.
Source discriminator
Another name for a trademark that reflects the primary function and requirement of a trademark; namely, to identify the source of goods or services to consumers in order that they can discriminate between one brands when making purchasing decisions.
Specimen
Items that serve as evidence for actual use of a mark. The U.S. Patent and Trademark Office requires of all trademark applicants to submit three specimens of the trademark as it is
used in commerce. For Intent to Use applications, the specimens are not required until filing an Amendment to Allege Use or Statement of Use. All three specimens may be the same, but they can also be different. For multi-class applications, you must submit separate sets of three specimens for each class, however they may be the same as those submitted for the other classes as long as the specimens reflect use in each class. Acceptable specimens for services include items such as advertisements, brochures, billboards, direct mail pieces or menus. Letterhead and Business cards can be used as specimens for services, but only if they reflect what service the business provides, otherwise the name on the card or stationary is merely being used as a trade name, and not a trademark. For example, a business card for QWIK J'S GARAGE that has the tag line, "We're 'Qwik' for a reason," would be unacceptable. However the same card with the tag line, "Fixing all American Autos & Trucks," is perfectly acceptable because it describes the service provided. Similarly, letterhead must either in a tag line or in the text of the letter itself describe the services offered. Unacceptable specimens for services include price lists and packaging lists. Businesses selling goods cannot rely on letterhead or business cards, but must instead submit a specimen that shows the mark affixed to the goods themselves, such as can be seen in a photograph, as long as the photo can clearly show the mark itself. Unacceptable specimens for goods include: price lists, catalogs, trade directories, publicity releases, invoices, internal memos or other company documents, instruction sheets, letterhead, business cards, bags or boxes to temporarily carry or ship merchandise, such as a grocery bag, or any other item that does not directly show the mark affixed to the goods. For example, while a photograph of a company label stuck onto the goods is acceptable, that same label if sent as the specimen itself would be unacceptable. Photocopies are permitted as long as they meet all the other requirements.
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 an cancellation action
To file for the cancellation of another party’s mark, 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 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 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 trademark
State trademarks are typically used exclusively in intra-state commerce, while a federal mark must be used in interstate commerce in order to be registered. However, 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 based on 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 as of the moment of first use. However, registration of trademarks by the state or federal government provide 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
An additional filing required of Intent to Use applicants which essentially verifies that their mark is now being used. Specifically, the Statement of Use must include a verified statement that the applicant is the owner of the mark, that the mark is in use in commerce, that the mark is used on or in connection with the goods or services included on the Notice of Allowance, and a listing of the dates of first use, and first use in commerce, and the manner or mode in which the mark is used. Three specimens must accompany the Statement of Use.
Strength of mark
Strength of a mark can be measured on two different levels; marketing strength and legal strength. Words that describe very closely the underlying good or service they represent have strong marketing potential, since such marks immediately communicate to customers what the product actually is or does. An example is "Quick Fix Radiator Mix." This tells the customer immediately that it is a substance that fixes radiators quickly. The problem with using descriptive marks such as these is that they are weak from a legal perspective. The legal strength of a mark is generally measured by its distinctiveness, not its descriptiveness. In fact, distinctiveness and descriptiveness. are almost two ends on the same spectrum. Generally speaking, the more distinctive the mark, the stronger is the legal protection available for that mark, but the less ability the mark has to communicate with the consumer. Distinctive marks are those that are coined or fanciful (made up), or suggestive (suggesting qualities of the underlying products, without plainly describing them).
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 avoid marks that an attorney say are even potentially troublesome, since another attorney may conclude the mark is too risky to even consider. This aspect of trademark law is probably less understood than it should be, and business owners who are not risk tolerant may be well advised to routinely seek second opinions whenever the availability of marks is the least bit questionable.
Suggestive terms
Suggestive trademarks suggest rather than describe qualities of the underlying good or service. "Suggestive" and "descriptive" are not mutually exclusive, since there must be 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." Courts have clarified this fine distinction by stating a mark is suggestive if it requires imagination, thought and perception to determine the nature of goods or services in question. 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.
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 Principle 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 it is already being used. Typically, Supplemental Register marks are those that are registered in foreign countries but not yet used in the United States, and 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 removed to the Principal Register.
Surnames, trademark protection of
Trademarks consisting of a person's own last name are generally not protected under trademark law unless the mark has acquired secondary meaning. In some instances, a name may 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. If the name does not describe some other thing, it can still receive protection without secondary meaning if the mark is not perceived 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 primarily conceives of the name as a surname, it cannot be protected without secondary meaning. Furthermore, when a surname is used in conjunction with arbitrary or fanciful components, then the mark can be registered and protected under trademark law without proof of secondary meaning. However, such protection will be weak with respect to the surname component alone.
Surveys
Research conducted by an independent firm and used to support arguments before the US Patent and Trademark Office or civil courts when trying to prove various aspects of trademark viability. For example, a survey may be useful to prove that a mark has acquired secondary meaning, is not generic, is not functional, is legally strong, or is not likely to confuse consumers with regard to an existing trademark. Surveys can also be used to prove plaintiff's lost profits, which is evidence that is notoriously difficult to obtain without a survey. According to Phyllis J. Welter, an expert on trademark surveys, the discussion 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
Trademarks can be any symbol as long as the symbol meets the
requirements of trademarks. Logos are symbols that are not lingual marks, and they must 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.

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