THE DIFFERENCE BETWEEN TRADEMARKS AND SERVICE MARKS

Both trademarks and service marks are used in commerce. A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark (or servicemark) is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term "trademark" is often used generally to refer collectively to both trademarks and service marks.  

Symbols

The symbol TM may be used with an unregistered trademark, e.g., MarkTM, while the symbol SM may be used with an unregistered service mark, e.g., MarkSM.  The symbol ® is used with both registered trademarks and registered service marks, e.g., Mark®.

Use in Commerce

For the United States Patent and Trademark Office (USPTO) to register a mark, that mark must be in use in commerce.  What qualifies as use in commerce differs between trademarks and service marks.  For goods, a trademark is used in commerce when it is placed on the goods themselves or their containers; or the displays associated with the goods; or on the tags or labels affixed to the goods; and the goods are sold or transported in commerce.[1] For services, a service mark will be considered to be used in commerce when it is used or displayed in the sale or advertising of the services and the services are rendered in commerce or the person rendering the services in more than one state or a state and a foreign country in engaged in commerce in connection with the services.[2]

Specimens

To register a trademark or service mark, the USPTO requires that a specimen be submitted to the USPTO, and that the specimen must show the mark as used in commerce.   Requirements differ between trademarks and service marks.  A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods.[3]    A photocopy or other reproduction of a specimen of the mark as used on or in connection with the goods is acceptable.[4]

A service-mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application.[5]   Whatever type of service mark specimen is submitted, it must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials.[6]

The specimen must also show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services.[7]  Thus, while page(s) from an Internet site may be used as a specimen, the page(s) must establish some association between the mark and the services being advertised.

Whether your business sells goods, services, or both, Toikka Law Group stands ready to assist you with your selection and registration of your marks.

Copyright © 2017 Richard S. Toikka. All rights reserved.

 

 

 

 

[1] See Trademark Manual of Examining Procedure (TMEP), § 901.01.  If the nature of the goods makes such placement impracticable, then the trademark may be placed on documents associated with the goods or their sale.

[2] Id.

[3] 37 C.F.R. §2.56(b)(1).

[4] 37 C.F.R. §2.56(c).

[5] 37 C.F.R. §2.56(b)(2).  "[B]ecause by its very nature a service mark can be used in a wide variety of ways, the types of specimens which may be submitted as evidence of use are varied." In re Metriplex, Inc., 23 USPQ2d 1315, 1316 (TTAB 1992).

[6] TMEP, § 1301.04 (emphasis in original).

[7] TMEP, § 1301.04(f)(ii);  In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) ("A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage.");