In this ‘Intellectual Property Application Series,’ I’ll be discussing federal service mark registrations and the proper way to use the registration symbol in order to maintain the legal rights federal registration provides. I’ll explain what a service mark is, what a federal service mark registration involves, and what to know about proper usage of the registration symbol to maintain a federally registered service mark. This and more will help explain why federal service marks are an important tool, which protects both businesses and consumers.
A service mark is a type of intellectual property that uniquely distinguishes and identifies the source of a service. Like trademarks, service marks assert one’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, in the market. Importantly, service marks and trademarks also convey an indication of the uniform quality expected of the services it identifies. This is also known as the “good will” of the service mark. In general, service marks are secured by a company to advertise and distinguish their services from those offered by other companies.
The word “trademark” is generally used as an umbrella term to include both trademarks and service marks. More specifically, service marks protect those marks that indicate the source of a service, rather than the source of a good. The protections provided, under either a service mark or trademark, vary slightly. This is because they are specific to the classes of services/goods they protect. State rights extend to both trademarks and service marks.
The word “trademark” is also generally used as an umbrella term to include both commonly protected and formally protected trademarks/service marks. The protections provided by a service mark, and the obligations to maintain those protections, vary based on the type of service mark rights governing the mark.
Common Law Service Mark:
Common law service mark rights can be claimed as soon as a mark is officially used in commerce, to market a service. There is no formal application or review process to obtain common law trademark/service mark rights. Instead, the first individual to use a mark in commerce is awarded the common law rights to the mark. Appropriately, since common law rights are the easiest to claim, they provide the most limited of the service mark protections available and can be difficult to enforce. In contrast, federal and state service mark registrations provide a verifiable public record of the mark and its use in commerce.
State Service Mark:
To obtain registration in a specific state, an official Application for Registration of a Trademark or Service Mark, must be submitted to the relevant state trademark office, generally a Secretary of State’s Office. The application must meet the filing requirements of the state trademark office and strict filing procedures must be followed. These requirements and procedures vary based on the state trademark office in question. The service mark itself must meet the statutory requirements for registrations, governed by the Secretary of State’s Office with which registration is sought.
For example, to qualify for state registration and protection, the mark must be in current use in commerce. Unlike federal registrations, no option is provided for filing an application with only an intention to use the mark. To demonstrate current use of a service mark, the Secretary of State’s Office requires the submission of formal specimens with examples of the mark in use. An individual specimen is required for each class of goods claimed in the Application for Registration.
Federal Service Mark:
A service mark can be formally registered federally to obtain protections provided under U.S. federal service mark laws. To obtain federal registration, an official Application for Federal Registration of a Service Mark is filed with the United States Patent and Trademark Office (USPTO). The application must meet the USPTO’s requirements and strict filing procedures must be followed.
The mark itself must also meet the USPTO’s statutory requirements for registration. The Trademarks Division of the USPTO cannot provide legal advice to customers. It is recommended that you consult an attorney for assistance completing applications for federal registration. After a period of examination and successful prosecution, the USPTO will issue a Federal Service Mark Registration Certificate.
Only marks in current use in interstate commerce can be granted federal registration and protection. If a mark is not currently being used to market products/services, but there is a true intention to do so, the USPTO does provide the option of filing an intent-to-use based application. This option allows for an earlier application filing date and potential priority over competing marks, which could be crucial in a legal conflict over the service mark.
The USPTO provides further options for protecting a service mark under federal laws, by offering two registration options. If a service mark is in current use, but does not qualify for full federal protection, the USPTO may issue a Federal Registration Certificate under the Supplemental Register. Registration on either the Principal or Supplemental Registers allows a mark protection under federal laws and allows the owner of the mark to use the registration symbol (®) to indicate this protection. This symbol gives constructive notice to the public that the mark is in use. It also discourages others from infringing the mark. If infringement is found, the registrant has the right to bring suit in federal court.
Protections provided solely under the Principal Trademark Register include the presumption of ownership in the entire U.S. This ownership includes the exclusive right to use the mark nationwide in connection with the services listed in the service mark registration. To the extent that a trademark is related to goods, the Principal register grants the right to request U.S. Customs officials to bar importation of infringing trademarked goods.
Federal Service Mark Registration Symbol:
To protect and maintain the rights provided under federal registration, the registered mark and its use must be properly managed by the service mark owner. This would include ensuring the proper display of the service mark to assert the associated service mark rights to the public.
A federally registered service mark must be displayed and used in accordance with the rules governing trademarks/service marks. When displaying a service mark in type, it should be followed by the appropriate symbol ((R) for a federally registered service mark, SM for an unregistered Service mark and TM for an unregistered Trademark.)
Federal registration with the USPTO allows a mark protection under federal laws. The owner of the mark is given the right to use the registration symbol (®) to indicate this protection. The federal registration symbol must only be used after a federal Certificate of Registration has been issued. Proper use of a service mark in the process of federal registration would include displaying the mark with the standard service mark symbol, “SM”. Inappropriate use of the federal registration symbol is a violation of federal law. As such, if the federal registration symbol is used while the federal application for the mark is still pending, it could be grounds for refusing to register the mark.
The registration symbol also gives constructive notice to the public that the mark is in use and federally protected. In doing this, the symbol asserts the service mark rights and discourages others from infringing the mark. If alleged infringement is found, the owner of a federal service mark has the right to bring suit in federal court.
Note of Caution- Fraudulent Solicitations:
A service mark owner should be weary of solicitations sent by a third-party, offering their services in exchange for a fee. Third parties use public information, available on the USPTO from the service mark application or registration, to send solicitations via mail, email, or text. While some solicitations are sent by legitimate sources, others are merely fraudulent. The most malicious notices are sent with the intent to deceive and defraud unsuspecting service mark applicants and registrants. To help identify service mark solicitors, the USPTO has included a list of potentially misleading notices.
Federal Service Marks – An Important Intellectual Property Tool:
Federal service marks are important in their ability to protect businesses and consumers alike. They provide a business owner the legal backing to protect their identity, reputation, and the goodwill associated with a company and its service marks. While common law and state service mark rights provide important, but limited protection, the strongest protection for a service mark is provided through federal registration.
The rules that govern service marks enable businesses to compete efficiently and fairly. Government trademark/service mark rules establish a standardized system for businesses competing in the market. Government guidelines for addressing service mark disputes are also integral to the success of the service mark system.
In addition, the laws governing service marks help protect consumers from deceit by counterfeit or by fraudulent companies. Service marks do this by signifying the goodwill and identity of a company. Consumers depend on service marks conveying the goodwill of a company, as this establishes an expected level of quality and/or trust. The proper use of the federal service mark symbol ((SM) for unregistered marks and (®) for federally registered marks) is the best way to communicate to consumers that a legitimate service mark is in use and protected. If businesses could not prove and protect their reputation via service marks, it could be consumers that pay the greatest price.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. Thrive IP® patent attorneys are located in Charleston, SC; Greenville, SC; and Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in filing a federal service mark application or other intellectual property services.