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A service mark is similar to a trademark. Indeed, in many respects, they are the same. A trademark is some combination of a word, mark, symbol, group of words, logo, or a design that is used on products, packaging, advertising, and other materials to identify a unique commercial source of goods or products. A trademark also serves to distinguish one commercial source of goods from a different source of the same or similar type of goods. By contrast, as the name implies, a service mark is some combination of a word, mark, symbol, group of words, logo or a design that is used on packaging, advertising and other materials to identify a unique commercial source for services.
There are many similarities between trademarks and service marks. For both types, they must function as unique identifiers to consumers. Both can be registered with the United States Patent & Trademark Office (“USPTO”) and other state and foreign governmental bodies that register trademarks and service marks. The USPTO does not evaluate the legal sufficiency of a trademark differently than a service mark. For example, it is difficult to successfully register a “merely descriptive” trademark such as BLUE WATER OYSTERS. It is similarly difficult to successfully register a “merely descriptive” service mark such as GREAT LAKES DELIVERY. Further, the USPTO does not have a separate application for service marks and there is no separate Register for service marks. In short, in most respects, trademarks and service marks are the same.
That being said, there are some salient differences. By their nature, goods and products are tangible and services are intangible. This means that trademarks can be placed ON the goods and products being sold in commerce, while such is not the case with service marks. This, then, leads to one difference between trademarks and service marks during the registration process. When a business or firm applies for registration, specimens of “use in commerce” must be supplied with the application. Generally, with trademarks, one specimen of use that must be provided is evidence of use ON the product itself. By contrast, such specimens of use are not available for service marks. For service marks, specimens of use are limited to packaging, advertising, signage, websites and the like.
This brings us to another difference in the registration process which involves identification of the international classes of goods/services. When a trademark or service mark is registered, as part of the application, the owner must identify one (or more) of 45 classes of goods/services with which the mark will be used. For example, Class 25 is for trademarks used with various types of clothing and similar products. Classes 1 through 34 are for trademarks related to physical products. Classes 35 through 45 are for service marks. For example, shipping and travel services are grouped under Class 39.
A service mark, defined at 15 U.S.C. § 1127, is any word, name, symbol, device, or any combination thereof used to identify and distinguish the services of one person from the services of others and to indicate the source of those services. The substantive legal standards for service marks and trademarks are virtually identical under the Lanham Act—both are registered with the USPTO, both are subject to the same examination standards, and both can be enforced through federal litigation.
The primary practical difference between trademarks and service marks is the nature of the commercial activity they identify. Trademarks are used in connection with the sale of goods—they appear on products, product labels, and packaging. Service marks identify the source of services—they appear in advertising, on websites, on signage at service locations, and in connection with the rendering of services.
When registering with the USPTO, an applicant must choose whether to file in the goods classes (Classes 1–34) or the services classes (Classes 35–45). Filing in the wrong classification can result in an office action requiring amendment. Some businesses provide both goods and services under the same mark and should file in both applicable goods classes and services classes to achieve full protection.
The specimen of use requirement differs significantly for service marks compared to goods marks. For goods, the mark must appear on the product, its packaging, or a product display (including a website product page with purchase functionality). For services, the mark must be used in the sale or advertising of the services, and the specimen must show the mark in direct connection with the identified services. Acceptable service mark specimens include:
Like trademark registrations, service mark registrations can achieve incontestable status under 15 U.S.C. § 1065 after five consecutive years of continuous use following registration. Incontestability eliminates descriptiveness as a defense against the service mark, providing the owner with a strong presumption of validity in infringement litigation.
The likelihood-of-confusion analysis under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), applies equally to service mark infringement disputes. Courts consider the similarity of the marks, the relatedness of the services, the sophistication of consumers, and evidence of actual confusion. For service marks, the channels of trade factor often focuses on how consumers encounter the service—whether online, in person, through referrals, or through advertising.
Just as trademark owners use ™ to claim unregistered trademark rights, service mark owners may use the ℠ symbol to claim unregistered service mark rights. Both symbols signal active IP claims and may deter infringement before federal registration is obtained. Once the service mark is federally registered, the ® symbol replaces the ℠ symbol. Using ® for an unregistered service mark is a federal violation under 15 U.S.C. § 1111.
The 11 service mark classes in the Nice Classification system—Classes 35 through 45—cover a wide range of commercial services. The most commonly used classes for U.S. service businesses include Class 35 (advertising, business management, and retail store services), Class 36 (financial and insurance services), Class 41 (education and entertainment services), Class 42 (scientific and technology services, including software as a service), and Class 45 (legal services). Many service businesses operate across multiple classes and should consult with trademark counsel to identify all applicable classes before filing.
Contact the trademark attorneys at Revision Legal at 231-714-0100 to register your service mark and protect your brand.
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