Trademark vs. Service Mark
Simply put, trademarks are for goods while service marks are for services. When discussing either, it is common to use the term "trademark", even when discussing a service use, because the handling of either is interchangeable by both the USPTO and all 50 Secretary of State Offices.
The USPTO says that a "service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms 'trademark' and 'mark' are often used to refer to both trademarks and service marks."
Let's look at each term in more detail
Trademark:
The USPTO's definition: trademark "protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods."
If your name and/or logo appear on the tangible goods that you're selling, you'd be filing for a trademark. For instance, let's say you want to protect the name of your clothing line. As long as the name appears on the hang tag, label or the packaging the clothes come in, that would suffice as proof of you using the name in connection with a clothing line. And therefore, you'd file for a trademark.
If the name appears only on the front of the shirt, that's ornamental use and therefore not eligible for trademark protection.
Service Mark:
The USPTO's definition: service mark is "a word, name, symbol or device that is to indicate the source of the services and to distinguish them from the services of others."
If you're selling services in connection with a name and/or logo, you'd be filing for a service mark. TradeMark Express is our service mark that we use in connection with our trademark research & application services.
For example, you are opening a restaurant using a specific name. The name as it appears on any signage, menus, advertising, etc., would suffice as proof of your use in connection with your services.
11 comments:
I am an officer of a local (Pittsburgh) non profit legal orginazation. We hold monthly education meetings for the lawyers in our groupthat we refer to as "lunch n learns." We got a letter from some company in Texas that does Employee training stating that they have a service mark on the phrase Lunch n Learn. They insist we cease and desist from the use of the term or in the alternative pay them a $750 yearly licensing fee. This feels like a shake down to me. Can they enforce this generic service mark in PA against a non profit legal orginazation?
Hi Paul,
Thanks for your question & for reading my blog!
Determining if marks infringe can be tricky and each situation varies from another.
The general rules to keep in mind are:
1) Are the names similar in Sound, Appearance or Meaning?
2) Are the industries the same or similar to one another?
3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?
4) Do the trade areas cross? What about the advertising routes -- are the products/services advertised in common places?
Here's what the USPTO has to say about this matter:
"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
the similarity of the marks;
and the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."
I'd suggest speaking to a trademark attorney about your next step. If you'd like a referral, please email me at dc@tmexpress.com
Also, if you have any other questions, please let me know!
Thanks!
This is very helpful. I have a friend who runs a small non-profit that builds recreational facilities for communities. They have no "products" to speak of. So, I'm assuming if they want to protect their logo and name they should apply for a servicemark rather than a trademark. Am I correct?
Alan
Hi Alan,
That's correct, a service mark would be filed. The process is the same however -- comprehensive research is still needed & if clear, an application is submitted to the USPTO for a Federal trademark. Your friend can also still use the TM symbol since that's most often recognized. If you have any other questions and/or you'd like me to dedicate a post to a subject, please let me know. Thanks for reading!
Shannon: thank you. This is great.
You indicate research is needed prior to applying. The results, I presume, are submitted with the application.
Also, I understand the TM and SM usage represents a self-made (i.e., not "approved" or "liscensed") claim and if sustainable protects the user within the state or possibly region and Federal registration establishes the claim and broadens that to nationwide. Once registration has been approved they would use the circled R to indicate that. Is that correct?
Thanks again.
Alan
Hi Alan,
Actually the USPTO does not require proof that applicants have done their due diligence. However, they do assume that in filing the mark you've made sure that the name is legally available.
And yes, that's correct. The ™ or SM symbol is to be used for marks that either have a pending trademark application OR for marks that are simply claiming the rights to the mark.
The ® symbol is to be used for marks that have a Federally registered trademark.
Thanks Alan! Keep those questions coming :)
-- Shannon
Interestingly, this company in Texas, called Employee Development Systems had physical address and conducts seminars in Colorado where the law firm that sends out these letters is located.
The term Lunch and Learn has been used for decades by educational organizations. The letters have gone to organizations as various as the state of Oklahoma Cooperative Extension services, colleges, universities, non-profits, etc. The term is used by literally dozens if not hundreds of organizations.
The same company has also acquired service marks for the terms e-educate and "powerful choices." It's kind of like trademarking "investment strategies" or "management style."
The letters sent out ask for fees ranging from $500 to $1000. It seems like a shakedown to me, too.
Shannon: Me again. I'm back on this issue regarding a small non-profit, service oriented group. In your last answer to me you said "...The ™ or SM symbol is to be used for marks that either have a pending trademark application OR for marks that are simply claiming the rights to the mark." I assume that what you mean by "claiming rights" means it really acts as some sort of notice to the public that you have a claim to the mark and will take some action to defend it - but that is really the extent of it's value. Iss that correct? Also, I have read somewhere that such a "claim" is likely geographically limited. Is that also correct? Finally, how expensive is it to apply for a TM?
Thanks again.
Alan
Hi Alan,
Good to hear from you again!
You're absolutely correct on both points -- the TM simply serves as a notice to others that (1) you're claiming the rights to the mark and (2) you'll take the steps to protect it. And you're also correct that those with first-use or common-law rights are limited to their geographic trade area.
Obtaining a trademark is a two-step process - the comprehensive research and then the filing. Please feel free to check out our services here: http://www.tmexpress.com/services.php#BestDeal If ordering, be sure to mention this blog & you'll get $25 off. The USPTO charges a registration fee of $325 per classification.
Let me know if you have any other questions. Thank you for reading & your questions!
-- Shannon
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