Wednesday, January 28, 2009

What is NOT a Service Mark?
Now that we’ve determined what a service mark is, let’s get into more detail about what a service mark is not.

There are 5 examples the USPTO provides and it’s my guess that these are often filed for accidentally. I know at TradeMark Express we’ve received questions about all 5 of these “services.”


1) Contests and Promotional Activities


Now you’d think that contests and promotions are obviously services, right? It is a real activity and is done for the benefit of others. But it fails the 3rd test in that it’s not necessarily distinct from the primary services. Contests and promotions are typically just tools of advertising. There is an exception which is that if the contest or promotion goes “above and beyond what is normally expected of a manufacturer in the relevant industry.”

For example, “clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing.”


2) Warranty or Guarantee of Repair


These activities are merely ancillary to the primary service of repair, auto sales, etc. Again, there’s an exception to this rule. “A warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.”


3) Publishing One’s Own Periodical


Now if you are publishing other parties’ periodicals that is considered to be a service. “Providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.”


4) Soliciting Investors

Offering shares and publishing reports for shareholders are not separate services as these are routine corporate activities. Now investing funds for others is definitely a registrable service.

5) Informational Services Ancillary to the Sale of Goods


Providing information, instructions, details, etc. about your goods, the purpose of your goods, how to use your goods, etc. is not considered to be a separate service.

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