In this ‘Intellectual Property Application Series,’ I’ll be discussing federally registered service marks and the proper way to use the mark 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 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.
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 Registered 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.
Federally Registered Service Mark:
A service mark can be formally registered federally to obtain protections provided under U.S. federal trademark/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.
Proper use of a service mark in the process of registration would include displaying the mark with the standard service mark symbol, “SM”. Until the service mark is formally registered and the USPTO has issued a Registration Certificate, a service mark owner cannot legally use the standard federal trademark/service mark registration symbol, “®”.
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.
Owner Responsibilities and Obligations to Maintain Service Mark Rights:
Proper use of a service mark preserves the rights provided under the Lanham Act and the opportunity to file suit. A federal service mark registration comes with responsibilities and obligations for the service mark owner, in order to maintain those rights. If the service mark is not properly monitored and protected by an owner, the rights to the mark can be put at risk or lost completely.
Market Surveillance and Federally Registered Service Mark Enforcement:
Owners of service emarks, whether registered or unregistered, should conduct routine market surveillance to ensure that others are not using, misusing or damaging the mark. Market surveillance includes, for example, routinely searching the marketplace for generic use of the mark and counterfeit services.
Routine market surveillance is a good proactive step for protecting service mark rights. There are search firms which specialize in service mark monitoring and report any confusingly similar or identical marks they find. Once informed of an alleged infringement, the owner of the service mark could possibly send a cease and desist letter to assert their rights. Should initial efforts to stop infringement not succeed, a federal service mark owner can file suit in federal court.
Surveillance for a service mark’s use in the public market could help detect potentially damaging use of a mark. Generic use of a service mark weakens and damages the mark over time. If the general public begins using and associating a service mark as indicating the service itself, rather than the source of the service, the service mark becomes generic and can no longer be federally registered or protected under federal service mark laws. Early indications of public generic use of a service mark could provide the advantage needed to curb any trends towards misuse.
Further efforts to guard your mark could include monitoring the USPTO’s publication of new marks for opposition. Such monitoring can be conducted with automatic, software-enabled alerts. Thrive IP® can assist in setting up any market surveillance or USPTO-monitoring programs.
The USPTO makes a public publication of each potential service mark during the examination and prosecution stage of the registration process. This publication stage lasts for 30-days and gives the public the opportunity to file a formal notice with the USPTO, opposing the registration of the potential service mark. In order to properly protect the rights to a federally registered service mark, the owner of the service mark should take action to enforce those rights.
To the extent your registration is applicable to a trademark related to goods, you may also record your mark with the U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security. The CBP will watch imported goods for counterfeits illegally using your mark. Recording your mark with the CBP requires a government fee for each class of goods listed in the registration.
Proper Display of a Federally Registered Service Mark:
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 ® 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. 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.
When the service mark is referred to in speech, the common name of the product or the word “brand” should be included. This is to proactively prevent the public use of a service mark, in place of the common name, to describe a service it advertises. Similarly, the use of a service mark as a noun or a verb can have dire consequences, as was the case for the once registered Jacuzzi and Google marks. Use of a service mark as a noun leads to confusion between the trade name and the business name and weakens the mark.
The main distinction is, service marks must be presented and used as proper adjectives. As discussed previously, if the public begins using and associating a service mark as indicating the services themselves, rather than the source of the service, this is generic use of a service mark. Once a service mark is considered generic, it can no longer be federally registered or protected under federal trademark/service mark laws.
Managing Use of Federally Registered Service Mark:
To protect and maintain the rights provided under federal registration, the use of the registered mark must also be properly managed. Among other things, proper management of a service mark would include ensuring the registered mark is used in connection with the services listed in the federal service mark Registration Certificate. Proper use is also necessary to formally maintain the service mark through the required renewal procedures.
When an application to federally register a service mark is filed with the USPTO, the application includes a description of the potential service mark and an indication of the services the owner wishes to offer under that mark. The USPTO has categorized the list of potential services which can be claimed by a potential service mark, into numbered classes. The class descriptions include 34 goods categories and 11 services categories, making a total of 45 different classes. Identifying service marks by class helps to distinguish confusingly similar marks that are used to provide different classes of goods/services, among other things.
Classes identify a service mark’s use in commerce. Specifically, the use of a mark identifies it and the mark’s class identifies its use. Each class is simply a broad description of how the use of a mark is intended. A literal description of the mark and its use(s) are also required and must be more limited than the broad class identification.
Once a service mark passes the examination and prosecution phase, the USPTO issues a formal Registration Certificate. This certificate certifies that the service mark is registered in relation to the classes of services listed on the certificate. To maintain the rights offered by the federal registration of a service mark, the mark must be used in relation to the specific class(es) represented on the official Registration Certificate.
A third party may file a request for cancellation of a registered service mark if the mark has not been used in relation to the registered goods and/or services in the last five years. Accordingly, a service mark owner must also ensure that a federally registered service mark is in use for the registered services as detailed on the federal Registration Certificate, so that it does not become vulnerable to cancellation due to non-use.
Proof of Use in Commerce to Prepare for Federal Service Mark Renewal:
Proof of the continued use of a service mark is also a necessity to maintain federal protections. In order to maintain a federal service mark registration on the Principal Register of the U.S. Patent and Trademark Office, it is necessary to file a Section 8 Declaration between the fifth-sixth years from the date of registration. Section 8 of the Trademark Laws requires a showing of continued use of a mark by the owner of the registration, for each of the classes claimed on the Registration Certificate.
An optional Section 15 Affidavit of Incontestability may be filed only after a mark has been in continuous use in commerce for at least five consecutive years, subsequent to the date of registration. A Section 15 Affidavit may be filed within one year following a 5-year period of continuous use of a mark in commerce. No additional grace period is given. For both the Section 8 Declaration and optional Section 15 Affidavit, formal specimens with examples of the continued use of a mark in connection with the classes identified in the registration, are required.
Further maintenance is required to extend the service mark protections past the initial 10-year service mark term. Between every 9th and 10th year period, calculated from the service mark registration date, a Declaration of Continued Use Under Section 8 and an Application for Renewal under Section 9 must be filed. Again, this renewal must be accompanied by a specimen of the mark as used in commerce, for each class claimed at the time of registration.
Service Mark License – Maintaining Proper Use:
In addition to their ability to advertise and distinguish a company’s services from another, service marks also convey a company’s “goodwill.” The goodwill a service mark conveys is an indication of the uniform quality expected of the services identified by the service mark. To preserve the strength of a service mark and its rights, the mark should be protected from being used in association with inferior, low-quality products/services.
When leasing a service mark, it is important to explicitly state liability obligations and establish the responsibilities of leasing the service mark. In a service mark license agreement, the owner is expected to control the quality of the services, as well as the appearance of the licensed service mark.
Service mark owners are obligated to ensure license provisions are adhered to. To enable this, a licensor has permission to monitor the licensee’s use of the mark. These proactive measures are an important step in protecting a mark and the goodwill associated with it, so that it does not become susceptible to losing the rights it protects. If it is believed that a service mark licensee is not abiding by the terms of the service mark license, the service mark owner has the right to take action to protect their mark. Not acting to protect the mark could result in loss of rights to the mark.
Federally Registered Service Mark – 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 we can assist with other intellectual property services.