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What is a Service Mark and How Can It Be Protected?

Service marks are a type of trademark. In other words, they are trademarks used to market services instead of products or goods. Section 45 of the Trademark Act, 15 U.S.C. §1127 defines a service mark as any word, name, symbol, device or any combination thereof used to indicate the source of the services and to identify and distinguish the services of one party or entity from the services of others. The following criteria has been established to determine what is a proper service pursuant to the Trademark Act: (1) a service must be performed to the order of or for the benefit of, someone other than the applicant; (2) a service must be a real activity; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

If a company is promoting the sale of its own goods, this would not qualify as a service. However, if a company such as an advertising agency promotes the goods of its clients, this would be considered a service under the Trademark Act. The central question is who primarily benefits from the activity for which registration is sought. In connection with the second factor, a system, process, idea, or method is not a service. This means that the mark cannot be used only as a name of a system, process, idea, or method. Lastly, with respect to the third factor, the activity must be one that is central or primary to the business. For example, selling food products at a supermarket is a service, but bagging groceries for customers at a supermarket is not sufficiently distinct from the primary activity and is merely ancillary to the primary service.

Not every term or symbol used in the advertising of services can be registered as a service mark. If a proposed mark only identifies a company name or a trade name, it will not function as a trademark or service mark. It may be clear that the applicant is rendering an appropriate service, but the record of the trademark prosecution must also show that the applicant’s mark is identifying and distinguishing the source of the services. For more on this general principal, see In re Advertising & Marketing Development, Inc. 821 F.2d 614, 2 U.S.P.Q.2d 2010 (Fed. Cir. 1987). A term, symbol, or designation must be able to function as a trademark so consumers will perceive it as identifying the source of the services and not merely identifying or conveying information about the services. In other words, a term that is used only to identify a device, instrument, product sold or used in the performance of a service does not function as a trademark or service mark.

An example of this principal is found in In re Moody’s Investors Service Inc., 13 U.S.P.Q.2d 2043, 1989 WL 274418 (TTAB 1989), where it was held that the term “Aaa” as used on the specimen, identified the applicant’s rating instead of its rating service. Another example is the mark WE MAKE IT, YOU BAKE IT, which was found not to function as a service mark to identify grocery store services and to only identify pizza sold at the store, See In re Niagara Frontier Services, Inc., 221 U.S.P.Q.2d 284, 1983 WL 51843 (TTAB 1983). A term that only identifies a process, style, method, or system used in rendering services is not registrable as a service mark, unless it is also used to identify the source of the services. For additional information on this topic see the Trademark Manual Of Examining Procedure §1301.02(a).

A trademark application may be refused if the Examining Attorney determines based on the specimen (the example of use of the trademark in commerce) submitted that the proposed mark fails to function as a trademark. A service mark specimen needs to show the mark as actually used in the advertising or sale of the services. The example of use must show an association between the trademark and the services. The Examining Attorney will consider any other evidence available in the record to determine if the specimen is acceptable. Submitting a proper specimen is critical to obtaining federal trademark registration. If you or your organization is considering filing for a service mark with the United States Patent and Trademark Office, The Law Offices of Nikki Siesel PLLC would be happy to provide you with a courtesy consultation and assist you with the filing of your trademark application.

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