Service marks have the same purpose as trademarks, but they are used to identify and distinguish the source of services, not goods. Like trademarks, they are protected under the Lanham Act and state laws, and similar rules related to registration and infringement apply to both. The same mark can be both a trademark and service mark, unless the services are too closely related to the sale of trademarked goods. In general, an SM symbol may follow the service mark, in place of the TM symbol.
“Services” that qualify for service marks under the Lanham Act are activities offered by someone for the benefit of a third party that are qualitatively different from what is done in connection with the sale of goods or performance of other services. The service mark applies to services rendered to other people, not services that are performed for the benefit of the performer. If an activity is ancillary to the trademark applicant’s core business, it is not considered a service, and use of the mark in connection with that activity is not deemed a service mark use.
For example, marketing would be considered a service if it is performed for someone else’s benefit. It is not, however, a service if it is performed in-house for a manufacturer of soda pop. The marketing services of the manufacturer, used to market the soda, would not be enough to support service mark rights in the United States.
Additionally, the service that is connected to the mark must be distinct from a trademark applicant’s other activities or goods. This means that if the soda pop manufacturer also runs a soda fountain, the trademark for the soda pop may not be considered a service mark if the soda fountain is not considered sufficiently separate from the manufacturer’s principal business activity of manufacturing soda pop.
Service Mark Registration
If you want to bring a service mark infringement suit in federal court, you will need to register a service mark first. Rights related to unregistered service marks can be pursued in state and local courts.
Like a trademark, a service mark can be registered with the United States Patent and Trademark Office (USPTO). Some states also have their own registration systems under state trademark law. Service marks are not automatically approved by the USPTO, and they must go through an examination process.
Upon application for a service mark, an examiner at the USPTO will review the application. Some common reasons that an examiner refuses registration may include:
The mark is likely to cause confusion with a mark in a prior application or registration;
The mark is descriptive and has not gained a secondary meaning;
The mark is a surname; or
The mark is immoral or scandalous.
If you own the rights to a service mark, you can sue others for service mark infringement if you can show that there is a likelihood of confusion as to the source of those services. In determining the likelihood of confusion in a federal case, the court will consider the strength of the mark, the similarity of the mark, evidence of actual confusion, the proximity of the services, the similarity of marketing channels used, the defendant’s intent, and the degree of caution of a typical consumer. While the use of an identical mark for the same service would clearly be infringement, many cases are not so clear-cut.