Trademarks with respect to services, “service marks,” CAN be registered with the US Patent & Trademark Office (“USPTO”). Generally, the same rules apply. For example, the proposed service mark must be used in interstate commerce, must be unique and not already be used by another business, and must identify a commercial source for the service. However, there are some specific unique requirements for registering a service mark. In summary, these are:
- The service at issue must be an actual activity
- The service being performed must be primarily for the benefit of others — that is, NOT primarily for the benefit of the service mark applicant
- The service performed must be qualitatively different from services necessarily and typically performed in connection with the sale of the applicant’s goods or services
- The service mark must be related to the service not the typical subject of the service — this is particularly relevant when advertising and promotional services are at issue
This issue of whether the service primarily benefits others is particularly tricky from a legal standpoint. Here is a brief discussion.
What is “primarily for the benefit of others?”
There are two components to the question of whether a service is performed primarily for the benefit of others. First, there is the question of what constitutes “others.” The service being performed cannot essentially be for the service mark applicant or a subpart thereof. Thus, if a large company has an internal department that makes deliveries between job sites, that delivery service is for the benefit of the company. All the departments and subdivisions of a company are included in the legal definition of the company. So, an attempted service mark registration for those delivery services would be denied.
A more complicated issue involves shareholders. An illustrative case is In re Canadian Pacific Ltd., 754 F. 2d 992 (Court of Appeals, Federal Circuit 1985). In that case, the applicant attempted to register several service marks with respect to the Company’s “Shareholder Dividend Reinvestment and Share Purchase Plan” (the “Plan”). The Plan was a service available only to registered holders of common shares of the Company. Among other activities, the service involved helping shareholders with reinvesting their cash dividends and making optional cash payments to buy new shares. The USPTO denied registration of the service marks, and the Court of Appeals affirmed, because the service was NOT provided primarily for the benefit of third parties and members of the public. Under various legal principles, shareholders can be deemed to BE the company. Thus, a company providing services to its own shareholders is the company providing services to itself. Since the services were not primarily for the benefit of others, the registration of the service marks was properly rejected.
By contrast, registering a service mark for services related to retirement plans offered to employees is acceptable because employees are legally distinct from their employers and are a subset of the “public.” See American International Reinsurance Co. v. Airco, Inc., 570 F.2d 941 (CCPA 1978).
The other component concerns who is the primary beneficiary of the service. In a recent decision, the USPTO denied a registration for a service mark to the California Highway Patrol related to recruitment activities. See In re California Highway Patrol, Application No. 88796327 (TTAB 2021).
In general, the rule is that if the trademark applicant performs an activity primarily for the benefit of others, the fact that the applicant also derives an incidental benefit is not fatal to registration. By contrast, if the applicant receives the primary benefit, but others receive an incidental benefit, registration will be properly denied. That was the result in the California Highway Patrol case since recruitment services primarily benefited the applicant with the public receiving only an incidental benefit (of becoming more aware that the applicant had job openings). The registration was also properly rejected because employee recruitment activities are “routine activities performed by any law enforcement agency or other business.” That is, such services are not qualitatively different from services performed by a business as part of its normal and customary operations.
For more information, contact Revision Legal at 231-714-0100. Our litigation team has deep experience in trademark law, internet law, and patent law.