Service marks are used to identify services which are performed by one person for the benefit of a person or persons other than himself or herself, either for pay or otherwise. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.
Definition of a Service Mark
A service mark is any word, name, symbol, device or any combination, used, or intended to be used, in commerce to identify and distinguish the services of one provider from services provided by others and to indicate the source of the services.
Rights in a Service Mark
There are two types of rights in a mark. There is the right to register the mark and there is the right to use the mark. Service mark rights arise from either the actual use of the mark or the filing of a proper application to register a mark in the U.S. Patent and Trademark Office stating that the applicant has a bona fide intention to use the mark in commerce. Federal registration is not required to establish rights in a mark or to begin using a mark.
Use of Service Marks
In general, the first party who either uses a mark in commerce or files an application in the USPTO has the ultimate right to register that mark. The USPTO’s authority is limited to determining the right to register. The right to use a mark can be more complicated to determine, especially when two parties have begun using the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use the mark.
Examples of Service Marks
Better Business Bureau, BBB, BBB AUTO LINE, BBB OnLine, and the BBB torch, BBB OnLine and BBB CARE logos are federally registered service marks owned by the Council of Better Business Bureaus, Inc. These marks may be used, with certain restrictions, by Better Business Bureaus and eligible companies participating in Better Business Bureau programs under a license agreement.
Amazon.com (retail Web site)
Jack in the Box (fast food service)
Kinko’s (photocopying service)
American Civil Liberties Union (legal service)
Blockbuster (video rental service)
CBS’s stylized eye in a circle (television network service)
the FedEx logo (delivery services)
Registration of Service Marks
Marks may be registered with the USPTO and similar agencies throughout the world. In the United States, marks can also be registered within each state and territory, although such registrations are of limited value to businesses engaged in interstate commerce. A state registration normally cannot defeat a federal registration because federal trademark rights supersede state rights. Unregistered marks are protected at “common law” in the United States so that marks need not be registered to be recognized and enforced. However, marks registered with the USPTO have advantages over unregistered marks.
The initial term and renewal term for a trademark or service mark is 10 years. A renewal application cannot be filed until at least six months prior to the expiration of the mark’s registration. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit which must include a specific list of the goods or services set forth in the registration and indicating that the registrant is still using the mark on or in connection with the goods or services listed, a specimen showing how the mark is currently in use with the goods or services identified, and the required filing fee.