Registering a Service Mark at the USPTO
A service mark is a trademark that brands services. Often practitioners, use the term "trademark" to refer to both trademarks and service marks. For general information on service marks, see our web page entitled, What Is A Service Mark And How Can It Be Protected? To be considered a service, an activity must be primarily for the benefit of someone other than the applicant. For example, a company that forms a personnel department to employ workers for itself is simply fostering the conduct of its own business, conversely a company whose business is to recruit workers for other companies is performing recruitment or employment agency services. An applicant applying for a service mark at the United States Patent & Trademark Office ("USPTO") must ensure that the services are benefitting a third party and are independent from any action in furtherance of the sale of the applicant's own goods.
Here are some common examples of services that may be registered at the USPTO if they are properly identified in the application. A warranty that is offered for goods and charged separately may constitute a service. When an applicant offers a warranty on its own goods or services, the identification must include the word "extended" to indicate the warranty is different from the one normally provided in conjunction with the sale of the applicant's goods or services. If the applicant is offering a warranty on third-party goods or services the identification in the trademark application must indicate this fact.
Another example is that typically the publication of one's own periodical is not a service because it primarily benefits the applicant. However, providing advertising space in one's own periodical may be a registrable service if the advertising activities are separate from the publishing activities. In other words, rendering a service that is normally expected or is routine in connection with the sale of one's own goods will not be a registrable service at the USPTO.
In a recent case, see In re Florists' Transworld Delievery, Inc., Serial No. 85164876 (May 11, 2016), the Board held that the applicant's service identified as “creating an on-line community for registered users to participate, in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products, and gifts” was not supported by the specimen. The applicant submitted a page from its TWITTER® account that did not show use of the mark with the identified services. The applicant didn't create an online community, but rather was using TWITTER's already created online community and the applicant did not control the social media platform. This is an example where the identified service was not sufficiently distinct from activities involved in the provision of goods and services. For more details pertaining to this case, see our blog post entitled, Is A Twitter Account A Separate Registrable Service For Trademark Registration?
A more complex situation may arise if a company uses software to perform a service. This can lead to the question of whether the company is performing a service that is registrable. In today's world a user or customer may go to a company's website and access its software to conduct business. Even though the software is performing the business function, the company may still be able to register the service. See In re JobDiva, Inc., 1122 (Fed. Cir. 2016) [precedential], where the Federal Court vacated the Board's decision and remanded the matter. The Federal Circuit Court held that the Board incorrectly requested that JobDiva prove it placed clients in jobs independent of the activity performed through the software. The Court pointed out that software may be used by companies to provide services. The critical inquiry is whether users or consumers would perceive JobDiva's mark as identifying job placement and recruitment services. In a case such as this, it is necessary to review all the information in the record to understand how the mark is used and how potential consumers will perceive it. In a service mark review, specimens of record are incredibly important in determining if the term functions as a service mark. If you have questions regarding use sufficient to support federal trademark registration, please feel free to contact our firm for a courtesy consultation.