While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.
For the most part determining if you’re offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel is technically a trademark while tax preparation is a service there H&R Block is technically a service mark. There are plenty of companies that have both. Nike, for one, offers a line of branded goods as well as retail store services.
Where folks get confused when it comes to service marks is mistaking ideas or concepts for services. Let’s take a look at the USPTO’s criteria for determining what is or isn’t a service mark.
1) Service must be a real activity.
The best way to explain this is to explain what is not considered to be a real activity – ideas, concepts, recipes, systems, processes, methods.
2) An activity must be primarily for the benefit of someone other than the applicant.
Who benefits from the activity/service? If it’s yourself or your company, you’re not offering a service in the technical sense of the word. If it’s for others, you are.
“While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.”
This sounds complicated but it’s really not at all. Basically, whatever service is filed for must be distinctive from the primary activity. “For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.”
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