A service mark is a type of intellectual property law recognized in the United States and many other countries. Like a trademark, a service mark is a word, phrase, symbol or logo that is used to brand, identify, and distinguish a service.
A service mark is similar to a trademark in that a service mark is used to advertise or identify a service rather than a tangible product. Service marks are used to distinguish the services of one business from those of another service provider. Quite often, service marks are in the form of advertising slogans.
In sum, a service mark is a type of trademark, but a service mark is used to brand, identify, and distinguish a service. While trademarks are words, phrases, symbols or logos that are used to brand, identify, and distinguish a product.
Best Ways to Protect Your Service Mark
One of the best ways to protect your service mark from use by competitors is to register your service mark with the United States Patent and Trademark Office (USPTO). Registering your service name or logo with the USPTO is not required by law, but it offers important benefits once your registration is approved. Benefits of USPTO registration include:
- It puts everyone on notice that you as the registrant have ownership rights to the mark.
- Federal registration creates a legal presumption of your ownership throughout the nation. You may be able to register your mark in your state, but you will not be protected in another state.
- Ownership of the service mark gives you the exclusive right to use it. If someone else uses it, the burden of proof is on that party to overcome the presumption of ownership — a very challenging hurdle to overcome.
- Ownership allows you to sue in federal court for trademark infringement.
- Once your mark is approved by the USPTO, you will have an easier time getting trademark or service mark protection in another country.
You can take steps to protect your service mark before it is registered with the USPTO. You should use the symbol SM next to your service mark each time it is used. Once the service mark is registered with the USPTO, use the symbol R to indicate the service mark has been registered.
Registering with the USPTO may seem expensive and time-consuming. However, failing to register it leaves you only with state or common law trademark protection. This protection is weak and limited. If another business then uses your mark, you may not be able to prove that you have a superior ownership right to it.
Another important step is to consult an experienced intellectual property attorney to help you in developing and protecting your service mark. Trying to navigate the intellectual property field without legal support is risky.
How to Register Your Service Mark with the USPTO
1. Conduct a thorough service mark search. You need to do a thorough search to make sure no one else is already using the mark for the same or similar type of services. The service mark you want to use cannot be deceptively similar to a mark already in use. A mark is deceptively similar if it looks or sounds enough like an existing mark that a consumer might be confused about the source of the services.
Your search should start with the USPTO’s online Trademark Electronic Search System, or TESS. Once satisfied that your mark is not already registered, you cannot stop there. You need to also use multiple internet search engines to try to identify existing marks.
2. Submit a completed service mark application to the USPTO. In addition to providing basic information about your business to the USPTO, you will have to identify the type of mark you want to register: a standard character mark, a special character mark, or a sound mark. A standard character mark protects a group of letters or words in any form you choose to display them, while a special character format protects your mark in the exact style and color you specify. In addition, you will need to describe the services your mark is used for. Your service mark protection will only apply to the type of services you identify.
You will also need to provide a picture of your mark that shows what your mark looks like by itself. You will also need to provide a brochure or a sign that shows how you are using your service mark.
3. Submit the application with the applicable filing fees. Make sure you include the correct fees with your application. You can save money by filing your application electronically. You should expect to pay $225-$325 per class of services registered (as of January 2016). Registration application fees submitted by U.S. mail are $375 per class of services.
4. Respond promptly to correspondence from USPTO. If the USPTO requires more information regarding your application, you may receive a letter from them known as an Office Action. You must respond to an Office Action within the deadline noted in the letter, or you risk your application being denied. If your application is denied, you lose your filing fee. Thus it is important to be sure your search was thorough and your application is specific and complete.
Consult an Intellectual Property Attorney at KPPB LAW for More Information
Whether you are in the process of selecting a service mark, trying to register one, or trying to protect one from infringement, contact the intellectual property law attorneys at KPPB LAW. They can help you with the registration process and advise you on the best way to protect your rights in your specific situation.