What to Know About Using the State Service Mark (Servicemark) Symbol: The Intellectual Property Application Series

In this ‘Intellectual Property Application Series,’ I’ll be discussing state service mark registrations and the proper way to use the service mark symbol inorder to maintain the legal rights state registration provides.  I’ll explain what a service mark is, what a state service mark registration involves, and what to know about proper usage of the service mark symbol to maintain a state registered service mark. This and more will help explain why service marks are an important tool, which protects both businesses and consumers.

Service Marks:

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 Marks:

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. 

Federally Registered Service Marks:

Formally protecting a service mark would involve filing an application to register the mark federally and/or filing an application to register the mark in individual U.S. states. To register the mark federally, a federal application for registration is filed with the United States Patent and Trademark Office (USPTO), where it undergoes service mark prosecution procedures.  Like state and common law rights, federal service mark rights are claimed based on the date the mark was first used in commerce. Federal registration, however, provides a verifiable public record of the mark and its use in commerce. 

The federal service mark prosecution process involves a review of the federal service mark application, to confirm adherence to the government filing requirements. Also during the prosecution process, the mark itself is examined to confirm it qualifies for federal protection, in accordance with strict government rules. Once the examination process is completed and the application is accepted, a formal Certificate of Registration is issued and the service mark is considered protected under federal trademark/service mark laws.

State Registered Service Marks:

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. 

The protections and benefits provided by state registration are in accordance with the individual state’s laws.  The Trademarks Division of the individual Secretary of State’s Offices cannot provide legal advice to customers. They recommend that an attorney be consulted for any questions regarding protecting a mark or infringement upon a mark. Sound legal advice can help ensure you understand and achieve the specific legal goals intended to be gained by filing for protection or taking action to defend a mark. 

State registration and the rights granted by that registration, may be “affected or preempted,” if another individual can prove prior use or registration of the mark. State governed service mark protection is limited to the state in which the mark is used, unless it is used in interstate commerce. Each Secretary of State’s Office provides a public list of trademarks and service marks currently registered with that Secretary of State Office. The Secretary of State’s Office does investigate the possession and distribution of counterfeit goods and the fraudulent use of registered trademarks/service marks. 

State Service Mark Registration Symbol:

State registered marks are not permitted to use the registration symbol (®), which indicates federal, rather than state registration.  It is a violation of federal law to use the (®) federal registration symbol, if a federal service mark Certificate of Registration has not been issued for the mark.  

To signify ownership of a state registered mark, it is appropriate to use the standard symbol “SM” (service mark) or “TM” (trademark), but their use does not confer legal rights.  Legal rights cannot be claimed, because the Secretary of State does not play any role in regulating the use of trademarks/service marks or in prosecuting their misuse, rather the Office is strictly ministerial. 

The protections and benefits provided by state registration are in accordance with the individual state’s laws.  The Trademarks Division of the individual Secretary of State’s Offices cannot provide legal advice to customers. They recommend that an attorney be consulted for any questions regarding protecting a mark or infringement upon a mark. Sound legal advice can help ensure you understand and achieve the specific legal goals intended to be gained by filing for protection or taking action to defend a mark. 

State registration and the rights granted by that registration, may be “affected or preempted,” if another individual can prove prior use or registration of the mark. State governed service mark protection is limited to the state in which the mark is used, unless it is used in interstate commerce. Each Secretary of State’s Office provides a public list of service marks and service marks currently registered with that Secretary of State Office. The Secretary of State’s Office does investigate the possession and distribution of counterfeit goods and the fraudulent use of registered service marks.

Registering a state service mark with an individual Secretary of State’s Office allows a mark protection under state laws.  Proper use of the service mark symbol gives constructive notice to the public that the mark is in use and is protected by that use.  This notice asserts the service mark rights and discourages others from infringing the mark. If alleged infringement is found, the owner of a registered state service mark has the right to bring suit in the relevant state court. 

State Service Marks – An Important Intellectual Property Tool:

State service marks are important in their ability to protect businesses and consumers alike.  They provide a business owner with legal backing to protect the company identity, reputation, and the goodwill associated with its service marks.  While the strongest protection for a service mark is provided through federal registration, state registration still provides a service mark owner important, but limited state rights.   

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 service mark symbol (SM) 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; Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in filing a service mark application or other intellectual property services.