Service Mark

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Service Mark

A service mark is the same thing as a trademark.  It just identifies that the trademark is being used in relation to services, as opposed to goods.

Service Mark Definition

A service mark is a sort of sub-class of a trademark, which is a brand identifier. Companies that provide services rather than products may specifically refer to their trademark as a service mark.  There is no real difference however when considering trademark rights.  Both service marks and trademarks are meant to help avoid a likelihood of confusion among consumers.  Just like trademarks used in relation to goods, federal registration is not required to have service mark protection, but failure to register your service mark could prove costly.

Over $600 million in damages is awarded annually in trademark and infringement cases.  Failure to register with the USPTO may harm your ability to prevail in the event of an infringement. You’ll also miss out on the following benefits of federal registration:

  • Nationwide protection.
  • A public record that slows or prevents infringement.
  • Establishes prima facie evidence of ownership (i.e. assumed unless disproven).
  • Ability to use the federally registered service mark symbol.

Service marks are often the most valuable asset in many companies portfolios. Providing services rather than goods, however, means your logo, slogan or other designation may not be as recognizable to potential competitors. This is why it’s essential to secure service mark protection through Trademark Registration with the USPTO.

What is a Service Mark?

A service mark designates the source of services.  Service marks act to distinguish the services of one company from another.  The only difference between a trademark and a service mark is that the later is used in relation to services.

Trademark vs Service Mark – What is the difference?

The difference between a trademark and service mark is really somewhat meaningless.  To say the word service mark is only to specify that the trademark you are referencing is used in relation to services rather than goods.   This is often pointless to even clarify because both are protected the exact same way.

Service Mark Registration

Other than the acceptable types of specimens of use, the process of registering a service mark is the same as applying for a trademark.

Service Mark Search

The recommended first step in acquiring any type of trademark rights is to do a trademark search which is highly recommended.  Once this search is complete, the following steps will help you achieve registration.

The basic steps in achieving registration are as follows.

  • Submit an application through the USPTO’s platform.
    • Your application type will depend on several factors.
    • You must determine whether your application will be based on use or intent to use.
  • Wait for examining trademark attorney assignment.
    • This can take up to four months.
    • Your application may be rejected if minimum filing requirements aren’t met.
    • You must deal with any objections raised by the examining attorney or your application will abandon.
  • Your service mark is published in the Official Gazette.
    • This begins a 30-day opposition period.
    • Anyone with a legitimate interest can file a Trademark Opposition.
    • Only three percent of trademark applications make it to the TTAB.
  • Registration typically occurs four months after publication.

The length of this process will be extended if you filed an Intent to Use Trademark application. After the 30-day opposition period, you’ll receive a Notice of Allowance. This begins a six-month period for you to provide evidence of commercial use in filing a statement of use. You can request extensions if you cannot meet this deadline. Once the appropriate specimens are submitted, official registration takes about two months.

Whether you’re submitting a trademark application based on actual use or you need to file a Statement of Use later in the process, you’ll need to show your service mark has been used commercially. Below are a few acceptable specimen examples:

Specimens of use for Services

  • Screenshots of a website offering the services.
  • Photograph of signage where services are provided.
  • Photographs of paper marketing materials (e.g. leaflets, brochures).

Specimens of Use for Goods

  • Photograph of the trademark appearing on the goods.
  • Labels featuring your trademark affixed to a product.
  • Photograph of packaging featuring the trademark.
  • Photograph of sales displays that feature trademark.
  • Screenshots of webpages that sell your product provided it can be added to an online shopping cart.

For a service mark, all evidentiary specimens must show a direct link between the services offered and the applied-for mark. It’s not simply enough to include a photo of your logo from a website. The specimen must also show that your services are being offered directly through the branded site.

Receipt of a registration from the USPTO isn’t your last step. While this protection can last indefinitely, you’ll need to periodically renew the trademark to keep your registration current. Failure to do so will result in trademark abandonment. You must adhere to the following timeline:

  • 5-6 years after registration: File a Section 8 Declaration and Section 15 for incompatibility.
  • Every 9 – 10 years after registration: File Section 8 Declaration and Section 9 renewal.

If you miss one of these deadlines and your registration will become abandoned and you will need to go through the registration process again. Your trademark may also be abandoned if third parties can show it hasn’t been in use.  Three years of non-use is presumptive abandonment. Maintaining commercial use and timely submission of renewals is essential to maintaining your rights.

Service Mark Example

The below are some examples of service marks.

  • Hawaiian Airlines℠
  • Google℠
  • FedEx℠
  • Facebook℠

Each of these examples fall under brands that primarily offer services.

Service Mark Symbol

If you have yet to register your service mark with the USPTO, you’re only eligible to use a common law trademark sign. If your company provides services rather than goods, this symbol consists of the letters SM – typically in superscript (℠).  If you provide only goods or a combination of goods and services, you can use the common law trademark symbol. This consists of the letters TM – typically in superscript (™).

Once you’re approved by the USPTO, there’s no differentiation between the symbol used for a trademark for goods and a trademark for services.  Every example of a brand name, slogan or other registerable trademark can have the federal registered trademark symbol which is stylized as an encircled letter “R” (®). This (®). The sign can only be used once registration has been granted.  Using the registered trademark sign prior to this can result in legal penalties and the inability to register your trademark.

Contact Us

If you have a question about protecting a trademark in relation to services, please feel free to contact us.

 

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