What is a Service Mark?
Under US trademark law, a service mark is a type of trademark and is a form of intellectual property. Under Intellectual Property (IP) law, a service mark (or trademark) is a word, name, phrase, symbol, logo, other designation, or combination that indicates the source of services (or goods) that are used in commerce to identify and distinguish the mark owner’s services (or products) from the services (or products) of other companies.
What is the difference between a Service Mark and a trademark?
Service marks and trademarks are both regulated by the United States Patent and Trademark Office and both marks offer the same sort of protection, except that trademarks are associated with products and goods for sale while service marks are associated with services. In many cases, the distinction between products and services may be blurry. For example, in pizza delivery, a customer is paying both for the pizza and for the delivery. Because trademarks and service marks may be closely related, many companies choose to protect their marks both as trademarks and as service marks.
How do I create and protect a Service Mark?
In US trademark law, section 45 of the Lanham Act lays out some pre-requisites to register a service mark (or a trademark). In order to be protectable, a service mark (or trademark) must be in use in commerce to identify services (or goods), it must be distinctive, and it must be non-functional.
The “in use” requirement
While a mark must generally be “in use” to qualify for protection, the Trademark Office does allow for registration before a mark is actually used, such as when an application is based on foreign rights. In these circumstances, there are strict guidelines that require the mark to actually be used within a fixed timeframe.
A distinctive mark is arbitrary or fanciful and does not describe the service (or product). For example, one could not trademark the term “apple” in relation to the sale of apples, but one could trademark the term in relation to the sale of computers. The more descriptive a mark is, on the other hand, the more difficult it is to protect.
If a distinctive feature of a service (or product) is functional, it may be patented, but it may not be protected by a service mark (or a trademark). For example, a company patented a unique arrangement of two springs visible in their product. When their patent ran out, they tried to trademark the two-spring design saying it was in use, and distinguished their products from those of their competitors. The Supreme Court ruled that in order to protectable, a mark must not be functional.
Choosing the Right Protection: What is the difference between TM, SM, and ®?
TM and SM stand for “Trademark” and “Service Mark” respectively. These symbols may be placed next to a trademark and a service mark before the mark is registered. ® is used for both registered trademarks and registered service marks. Use of ® before a mark is registered may preclude registration.
What are the steps to getting a Service Mark Registration?
Under US trademark law, the process to register trademarks and service marks is basically the same. The registration process consists of four steps.
First, conduct a search
Service mark protection may not be obtained if a confusingly similar mark is already in use by a company offering a similar service.
Second, complete a service mark application
A properly completed service mark application will contain the name and address of the mark’s owner, an email address, and a designation of the type of mark that is being registered. A mark may be a standard character mark, a special character mark, or another more specialized mark.
Third, submit the service mark application
As of February 2020, the Patent and Trademark Office charges $225 – $275 per class of services to file a service mark application. If the application is rejected, the filing fee is not refunded.
Fourth, respond promptly to correspondence from the Trademark Office
If the Trademark Office finds that the mark is too similar to another mark or if there are other problems or mistakes in the service mark or trademark application, then the Office may issue an “Office Action.” Failure to respond in a timely fashion to an Office Action (usually within a strict six-month deadline) will result in the abandonment of the application. Therefore, to ensure that an application is filled out and filed correctly, it is advisable to use an experienced trademark attorney. It should be noted that US patent law is very different from US trademark law, so there are many intellectual property lawyers that are experienced in patent prosecution, trade secrets, and copyright law, that may not have experience in obtaining registered trademarks. Find an experienced trademark attorney.
Protecting or Selling Your Service Mark
Once a service mark is registered, the owner must actively police and defend the mark from potential infringers. Failure to police the mark may result in a forfeiture of service or trademark protection. Similarly, indiscriminate licensing may result in a loss of service or trademark protection. Experienced intellectual property attorneys can help you in protecting your service mark or trademark and in protecting other intellectual property such as copyright, registration, trademark registration, trade secret, and patent protections. Learn more about TraskBritt IP attorneys and their specialties.
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