Key Takeaways

  • A service mark search helps ensure your chosen service mark is not already in use and avoids costly legal disputes.
  • Service marks protect services, not goods, and can be registered at the state, federal, or international level.
  • Conducting a thorough search requires checking the USPTO Trademark Electronic Search System (TESS), state databases, common law sources, and even international registries.
  • Proper classification of your service using the USPTO’s Acceptable Identification of Goods and Services Manual is crucial to avoid rejection.
  • A comprehensive clearance search includes variations in spelling, sound, translations, and related industries to identify potential conflicts.
  • Professional legal guidance can help interpret results and reduce risks during the application process.

A registered service mark search refers to a search a business owner conducts to determine whether the service mark he or she intends to register is already taken. A service mark serves the same purpose as a trademark, but it applies to a service instead of a product or an identity. Performing a registered service mark search is a necessary step in the process of registering a service mark. While it is a relatively easy task, you may want to use certain search tactics to get better results.

What Is a Service Mark?

A service mark is a subset of a trademark. It is the same kind of tool as a trademark, but it distinguishes a company's service from that of another company.

A service mark often comes in the form of a slogan. For instance, the service mark of a plumbing company may be “The Leak Fixers,” regardless of whether it has a distinctive logo. Another example is McDonald's. Is the fast-food giant considered a product or a service? As a business organization, McDonald's is a service. However, within the service it provides, it has many trademarked products, such as the Big Mac®.

The United States Patent and Trademark Office (USPTO) defines a service mark as a certain kind of trademark that instead of identifying a tangible product, identifies a service or an intangible activity that one person performs for the benefit of another person in exchange for pay or something else.

Why a Service Mark Search Matters

Performing a service mark search is essential because registration does not automatically guarantee protection if another similar mark already exists. A conflicting mark can result in your application being denied or, worse, legal action after your brand is established. Courts often evaluate whether consumers are likely to be confused between marks, which makes even minor similarities risky. By conducting a thorough search before investing in branding, you reduce the chance of costly rebranding or infringement disputes.

Registering a Service Mark

A service mark is also similar to a trademark in that it does not have to be registered. Just using it is enough to establish common law rights. Nonetheless, having a registered service mark can be beneficial in the event litigation arises. In most states, there are requirements for the registration of service marks.

If your service mark is registered with your state, you may prohibit other people from manufacturing, displaying, using, or selling counterfeits or imitations of the mark. Before you register a service mark, you should perform a search to ensure another person or a company is not already using the mark. If your service mark is not registered, you can use the raised service mark symbol ℠.

Federal vs. State Service Mark Registration

While state registration provides limited protection within that state, federal registration with the USPTO offers nationwide rights and stronger enforcement power. Federal registration also enables you to use the ® symbol, provides access to federal courts for enforcement, and establishes a presumption of ownership across the U.S. However, state registrations may be faster and less expensive, making them useful for small, local businesses. Many businesses pursue both to ensure layered protection.

Process of Registering a Service Mark

Search the registered service mark records. Before you start the registration process, you need to use the Trademark Electronic Search System (TESS) to find out whether another entity is already using your service mark.

  1. File online — If your service is still available for registration, you can use the Trademark Electronic Application System (TEAS) to file your application online.
  2. Register internationally — You can also use the TEAS system to register your service mark internationally.
  3. Pay the registration fee — The fee for registering a trademark or a service mark is between $225 and $300.
  4. Include a specimen — Your registration must include a mark specimen, which is an example of your service mark in use.
  5. Wait for a response — The USPTO will determine whether your service mark meets their guidelines and will then inform you whether it is approved or rejected.

Importance of Correct Classification

When filing your application, the USPTO requires you to identify your service within one of its international classes. This step is critical because the classification determines the scope of your protection. The Acceptable Identification of Goods and Services Manual (ID Manual) is a tool that applicants use to properly describe their services. Choosing the wrong class can delay your application or result in rejection. For example, a marketing consultancy must register in the appropriate consulting service class rather than a class meant for tangible goods.

How to Conduct a Service Mark Search

First, you need to define the class you wish to register for. This can be done using the Trademark Class Search tool. Just enter your service, and the tool will show you which class or classes it belongs to. After determining the class, you can use the online trademark database to conduct a service mark search.

Steps for a Comprehensive Clearance Search

A basic USPTO search is only the first step. To reduce legal risks, a comprehensive clearance search should include:

  • Federal USPTO TESS database – to check for identical or confusingly similar marks.
  • State trademark databases – as rights can exist at the state level even without federal registration.
  • Common law sources – such as business directories, domain name databases, and social media to uncover unregistered but legally protected marks.
  • International registries – important if you plan to expand abroad.

Including phonetic equivalents, spelling variations, translations, and similar-sounding names in your search helps uncover marks that could still trigger conflicts.

Tips for Conducting a Service Mark Search

When you are searching, it is recommended that you try different combinations of your service mark. For instance, if you are searching for AMAZON, try searching for HAMAZON, AMASON, or similar word patterns and spellings.

Avoid looking for services that are identical to yours. If your service mark is too similar to another registered mark, it will most likely be rejected because it can cause consumers to be confused. Without a clear service mark, consumers may not be able to tell which company is providing the service.

If you are providing both services and products, you may be unsure whether you should use service marks or trademarks. Many businesses that offer services and products use both service marks and trademarks, so you can do the same as well.

When to Seek Professional Help

While free tools like TESS and state registries are useful, interpreting results can be complex. Marks do not have to be identical to conflict; similarities in sound, appearance, or meaning can lead to rejection. Attorneys or specialized search firms can conduct more sophisticated searches, including foreign-language equivalents and industry-specific conflicts. Engaging professional help is especially important if your service mark is a cornerstone of your business identity.

Frequently Asked Questions

  1. What is the difference between a service mark and a trademark?
    A service mark protects services, while a trademark protects goods. Both function to identify the source of what is offered and prevent consumer confusion.
  2. Do I need to register my service mark to use it?
    No, you gain common law rights by using it in commerce, but registration provides stronger legal protection and nationwide rights.
  3. How long does it take to register a service mark?
    Federal registration typically takes 8–12 months, though delays can occur if the USPTO issues office actions or requests clarification.
  4. Can two businesses have similar service marks?
    Yes, if they operate in completely different industries and are unlikely to cause consumer confusion. However, similar marks in related fields will often be rejected.
  5. Should I hire an attorney for a service mark search?
    It’s not required, but highly recommended. Attorneys can conduct comprehensive searches, interpret potential risks, and guide you through registration effectively.

If you need help conducting a registered service mark search, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.