Clients often call me to register a trademark for their business. However, sometimes they need a “service mark” instead of a trademark.
Definition of a service mark
Technically speaking, a “service mark” or “servicemark” is a word, phrase, symbol or logo that is used to brand, identify and distinguish a service. This is in contrast to a trademark, which is a word, phrase, symbol or logo that is used to brand, identify and distinguish a product.
So in plain English, you would need a “service mark” if your business provides a service. If instead you make or sell a product, then you would need a trademark instead.
Related: Check out our full article on trademarks vs. service marks
Examples of service marks
Let’s explore some examples: If you provide restaurant services or retail store services, then you would want to get a service mark for your business. “MCDONALD’S” is a registered service mark for restaurant services, and “WALMART” is a registered service mark for retail store services.
In contrast, if you sold a line of jewelry products or clothing products, then you would want to get a trademark for your product line. “TIFFANY” is a registered trademark for a line of jewelry products, and “NIKE” is a registered trademark for a line of footwear and clothing products.
The confusion about the two types of marks likely stems from the fact that the word “trademark” is often used to refer to both trademarks and service marks. However, it should be emphasized that the process for getting a trademark registered is the same process for getting a service mark registered. Additionally, the fees for getting a trademark are the same as those for getting a service mark.
The service mark symbol
There is also a lot of confusion about use of the trademark and service mark symbols. Whenever a trademark or service mark is federally registered with the United States Patent & Trademark Office, the owner of the trademark may use the “registered trademark” symbol, which is the letter “R” within a circle, or ®.
However, if the trademark or service mark is not federally registered, then the appropriate symbol for a trademark would be the superscript “TM” symbol or ™, whereas the appropriate symbol for a service mark would be the superscript “SM” symbol or ℠. In other words, if you are providing a product under a particular name or logo, then you may use the ™ symbol after the name or logo to signify that you are claiming trademark rights to that name or logo. However, if you are providing a service instead of a product, then you may use the ℠ symbol after your name or logo to signify that you are claiming service mark rights to the name or logo in question.
Related: Read more about the trademark symbols
Proof of use in commerce for service marks
One other major difference between trademarks and service marks is in the standards for proving “use in commerce” with the Trademark Office. When you file a trademark or service mark application with the Trademark Office, the Trademark Office will eventually require that you submit proof that you’re actually using the mark in commerce. The appropriate proof of “use in commerce” is different when dealing with trademarks and service marks.
In the case of trademarks, the appropriate “proof of use” would be a picture that shows use of the mark on the product labels, product packaging materials, product tags, or on displays associated with the product at the point of purchase. For instance, if you are selling clothing products, then an appropriate proof of use would be a picture that shows the mark on the clothing hang-tags or on the clothing labels.
However, in the case of service marks, you cannot really take a picture of a service, and there are no labels or hang-tags used for services. So how can you prove to the Trademark Office that you’re actually using the mark in connection with your service? In most cases, the appropriate proof of use for a service mark would be an advertisement or a website that shows the mark and that references the kinds of services that you provide under that mark.
For instance, if you were providing restaurant services, then you could submit an advertisement for your restaurant that appears in a local newspaper, or you could submit screenshots of your restaurant’s website. Basically, any advertisement or promotional material that connects your mark to your services could be acceptable to the Trademark Office to prove “use in commerce.”
Service marks must be distinctive
One last thing that should be noted about service marks is that, much like trademarks, service marks must be distinctive in order to be registered with the Trademark Office.
What does it mean for a service mark to be “distinctive”? A service mark is deemed to be distinctive when it does not merely describe an aspect or feature of the service being provided.
For example, let’s say you wanted to open a restaurant, and you decided upon the name “THE BURGER GRILL”. This name would not be distinctive because the term “BURGER” merely describes the type of food that you will be serving at your restaurant (i.e., burgers), and the term “GRILL” describes the way the food will be prepared (i.e., it will be grilled). Accordingly, because the entire name merely describes the features of the restaurant, you would likely have a very hard time getting this service mark approved by the Trademark Office.
However, if you instead chose the name “BOO-BOO BURGER GRILL”, then that would have a good chance of approval because the term “BOO-BOO” does not describe anything about your restaurant services, and therefore the mark would be considered “distinctive.”
Wrapping up
Hopefully, this article has gone a long way to answering the question of which type of mark you need. Here at the Law Office of Xavier Morales, we provide both trademark and service mark registration services to clients nationwide. If you are interested in registering a service mark for your service business, then contact us today at 1-866-618-2517 .
