Tuesday, January 27, 2009

What is a Service Mark?

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.”

3) Sufficiently distinct from activities involved in sale of goods or performance of other services.

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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