What Is a Service Mark and How Can It Be Protected

Service Marks and How to Register Them

There are several types of trademarks that differ in their requirements and the rights they afford their owners. A service mark is one of these types, and instead of physical goods or products, it identifies services. This type of mark is usually used on the advertisements of the company, the uniforms of its employees, its vehicles, etc., and not on any “concrete product”.

The Legal Definition of a Service Mark

A service mark is defined by Section 45 of the Trademark Act, 15 U.S.C. §1127. Any word, symbol, name, tool, or any combination of these that is used for the identification of the source of a service and the differentiation of the services rendered by one entity from those provided by another can be considered a service mark.

Requirements of a Service Mark

A service mark must fulfil certain requirements to be considered for registration. The most important ones are as follows.

1. It must be apparent that the company is offering an appropriate service. For example, in the legal case of Moody’s Investors Service Incorporation fought in 1989, the term “Aaa” did not indicate the rating service provided by the applicant but the rating of the applicant’s company. Another example is seen in re Niagara Frontier Services, Inc. in 1983, where it was made clear that the mark “We make it, you bake it” was not an appropriate service mark for the services provided by a grocery store because it only identified the pizza sold there.

2. A service mark must also identify the source of services. Not all symbols associated with the promotion of services make for appropriate service marks. A mark that only represents a style or method, or identifies only a company or trade name, cannot be registered as a service mark. It must identify and distinguish the source of services as well. A term that is used for the identification of a device or product sold in the carrying out of a service does not qualify as a service mark either. To learn more about this principle, refer to the Trademark Manual of Examining Procedure §1301.02(a).

What Kind of Services Can Have a Registered Mark?

According to the Lanham Act, any activity that meets the following requirements may be considered a proper service whose mark can be registered.

1. Although intangible, a service must be a real activity. Therefore, a system, concept, or method does not qualify as a service.

2. A service must not be of benefit to the applicant alone. It must be provided to the order of an entity other than the applicant. For example, in the case of a cellphone manufacturer, advertising its own products does not count as a service as it benefits only the company itself.

3. If the applicant is already involved in the sale of goods or the performance of services, the new service must be markedly different from the already provided goods and services or anything done in association with them. For example, if a restaurant offers home-delivery, it cannot be considered a separate service under the Trademark Act because it is merely supplementary to the primary service of providing food. The former activity is not a sufficiently independent of and distinct from the latter.

Submitting a Trademark Application for a Service Mark

A mark specimen must show the service mark as it is used in practice for the representation of the services in advertisements and promotions. It must exemplify the actual use of the mark and show the relationship between the mark and the services provided by the company. The examining attorneys will observe any evidence provided by you and that which is present in the record and then arrive at a conclusion about whether or not your specimen is admissible. If he or she finds that the mark you have proposed fails to serve as a trademark, the examining attorney reserves the right to reject your application.

Presenting a proper specimen along with the trademark application is a crucial part of the trademark prosecution procedure. It would be wise to hire an experienced counsel early on to make the process easy for yourself. If you are thinking about filing an application at the USPTO, do consider contacting the office of Trademark Counsels. You will be offered a courtesy consultation and guided further about the details of the application process.