Key Takeaways

  • A service mark identifies the source of a service rather than a product.
  • Common examples include brand names for restaurants, streaming services, or airlines.
  • Unlike trademarks, service marks are not placed directly on physical goods.
  • Service marks can include words, slogans, sounds, or designs.
  • Proper use and registration of a service mark provide stronger legal protection.
  • Federal registration is not required but offers nationwide benefits under the Lanham Act.
  • Misuse or non-use of a service mark can result in abandonment or rejection during registration.

Overview

A service mark is a designation that indicates the provider of a service or services.

Service marks and trademarks both identify the providers of goods or services. Many people confuse the two because they are closely related.

A trademark is used to designate a company's products. A service mark is used to designate a company that provides services. Services are only legally considered services if they are performed for others. Reference 15 U.S.C. § 1127 for more information.

What is a Service Mark?

A service mark distinguishes your services from those provided by another company. This mark can take many forms, including a logo, a phrase, a tune, or a symbol.

Two of the most recognizable companies in the world are McDonald's and Nike. Nike offers a wide range of products such as shoes and clothing. Its Nike swoosh is a trademark, not a service mark, because it's located on physical products. The name "McDonald's" is a service mark because it represents services provided.

If you wish to register a trademark or service mark, you can submit an application with the United States Patent and Trademark Office (USPTO). When your registration is approved, you may legally mark your product or service with the registered trademark symbol, ®. Using this symbol without registration is illegal. Registration is not required, although it's recommended.

If you don't want to go through the registration process, you can still claim your rights to the symbol or logo. To do this, simply add the service mark or trademark symbol. The trademark symbol is ™, and the service mark symbol is ℠. 

Key Differences Between Trademarks and Service Marks

While both service marks and trademarks are types of intellectual property that protect brand identifiers, they serve different functions:

  • Trademarks protect logos, names, and symbols linked to tangible products.
  • Service marks protect the same types of identifiers but apply to intangible services.

For example:

  • A logo used on a clothing line is a trademark.
  • A logo used by a consulting firm or airline is a service mark.

Despite the differences, both marks are governed by the same rules under the Lanham Act and are registered through the USPTO.

The Importance of a Service Mark

Service marks are important because they protect your intellectual property. This is more like a thought or idea than a physical object. If you don't use a service mark symbol or register your mark, another business can use your idea. Without protection, you may not be able to do anything about it.

Before using a service mark, you should understand the laws you must follow. First, any service mark is subject to the Unfair Competition Law. This law protects both businesses and consumers.

Service mark infringement is handled at both state and federal levels. The Lanham Act is the federal law that covers service mark infringement. State laws largely depend on the state where your business operates. Many states have enacted laws that protect intellectual property similarly to federal methods. Other states may bring lawsuits under common law.

Benefits of Registering a Service Mark

Registering your service mark with the USPTO can offer numerous advantages, including:

  • Nationwide legal protection rather than protection limited to your geographic region.
  • Exclusive rights to use the mark in connection with your services.
  • Legal presumption of ownership, which simplifies enforcing rights in court.
  • Ability to bring lawsuits in federal court for infringement.
  • Deterrence of others who may consider using a similar mark.
  • Access to U.S. Customs and Border Protection assistance in stopping counterfeit services at the border.

Reasons You Might Not Use a Service Mark

There are two main reasons you might consider not using a service mark. First, if your business only offers products, you should focus more on product trademarks. Second, your service mark application could be denied. A few possible causes of rejection include:

  • Your service mark is too similar to that of another business.
  • Your mark is obscene or provocative and violates public morality laws.
  • Your mark contains a governmental symbol that might be featured on a flag or an official seal.
  • Your mark incorporates a location-based term that may not be used solely by your company.
  • Your mark does not refer to a service that you provide.

Despite possible drawbacks, using a service mark is a good way to protect your legal rights.

Reasons to Consider Using a Service Mark

If you want to protect your business, you should consider using a service mark. After your mark has been established, other businesses are not allowed to use similar marks. A company that tries to deceive the public by using a competitor's service mark commits service mark infringement.

You should be aware of the issues that complicate these cases. The other business must have used a deceptive service mark in the same physical area as your business. Also, it must provide a similar service. If a business uses a similar service mark but provides a dissimilar service in a different location, courts may be lenient.

If you believe your business has been a victim of service mark infringement, you have two legal remedies available. The first is injunctive relief. If granted, the court orders the other business to stop using your service mark. This establishes your right to the mark. The second legal remedy is monetary damages to compensate your business for any financial damage sustained because of the infringement.

You can pursue either or both courses with an attorney's help. You can also sue for a much higher amount of damages if you have a registered service mark. The best reason to register your service mark is to guarantee legal protection against infringement.

Service Mark Examples

Businesses typically use both service marks and trademarks. "McDonald's" is a service mark, as it signifies the chain's services. On the other hand, McDonald's signature golden arches are considered a trademark, as they are used to brand-specific products. Google also uses both service marks and trademarks.

Imagine that you own a restaurant. The name of your restaurant would be your service mark because it establishes the services you offer. But if your restaurant has a signature dish, you would apply for a trademark because the dish itself is a product. 

Types of Service Marks

Service marks come in many forms, including:

  • Word marks: Names of service providers (e.g., FedEx).
  • Slogans: Phrases that define a brand’s service offering (e.g., “The Happiest Place on Earth”).
  • Logos: Visual designs identifying the business.
  • Sounds: Audio cues that distinguish a brand (e.g., Intel’s chime).
  • Design elements: Stylized fonts or icons used in advertisements or branding.

These types must be distinctive and clearly identify the source of a service to qualify for registration.

Common Service Mark Mistakes

The most common mistake a business can make is using its service mark incorrectly. A service mark is meant to be a representation of your business and its services. This is why most service marks are the actual name of a business, such as Walmart or FedEx. If you use your service mark incorrectly, you may lose the rights to it.

You can also lose your service mark by not using it. If you've failed to employ it for three years in a row, this is seen as abandoning the mark. It can then be canceled. Protect your intellectual property by using your service mark correctly.

Another mistake is not making your mark unique or distinctive. If your service mark is too general, it likely will not be approved for registration. And if your mark is similar to that of another company, you may find yourself in legal trouble. Make sure your service mark stands out and clearly indicates the services your business offers.

Distinctiveness and Service Mark Strength

The distinctiveness of a service mark plays a key role in determining whether it qualifies for protection. Marks are categorized as follows:

  • Generic: Common terms (e.g., “Coffee Shop”) — not protectable.
  • Descriptive: Directly describe a service (e.g., “Fast Plumbing”) — usually not protectable unless they gain secondary meaning.
  • Suggestive: Hint at the nature of the service without describing it (e.g., “Greyhound” for bus travel) — protectable.
  • Arbitrary or Fanciful: Unrelated to the service or entirely invented (e.g., “Google”) — strongest protection.

Choosing a more distinctive mark enhances the chances of registration and reduces the risk of legal disputes.

Registering Your Service Mark

Although not legally required, registering your service mark is a good idea. The registration process is fairly straightforward. You'll need to learn whether your state has specific rules for registration. North Dakota, for example, doesn't require a business to register a service mark. However, you may still register through the Secretary of State. After your mark has been registered in North Dakota, it has full legal protection. You can sue any business that has infringed on your service mark.

If you've chosen a design for your service mark, you must do a search to make sure it's available for use. The USPTO provides a Trademark Electronic Search System (TESS) to search registered service/trademarks by word or design. If your desired design is available, you can register it with the USPTO. Make sure to use the ℠ symbol until your registration has been approved. After approval, you may use the registered service mark symbol, ®. Read the USPTO's Protecting Your Trademark publication for details.

How to Maintain and Enforce Your Service Mark

After registering your service mark, ongoing maintenance is critical. Key responsibilities include:

  • Continued Use: If you stop using the mark in commerce for three years, it may be considered abandoned.
  • Monitoring: Regularly monitor for potential infringements and send cease-and-desist letters when necessary.
  • Timely Renewals: File required maintenance documents, such as:
    • Declaration of Use (Section 8) between the 5th and 6th year.
    • Renewal Application (Section 9) every 10 years.
    • Combined Section 8 & 15 declaration for incontestability after 5 years of continuous use.

Failing to comply with these requirements can result in cancellation of your service mark registration.

Protect Your Service Mark with Legal Help

In addition to making sure your desired service mark is available, you need to carefully fill out all registration forms. You also must submit any required fees.

Registering a service mark can be intimidating. Fortunately, getting advice and help for registering your service mark is simple and stress-free when you connect with an attorney through UpCounsel.

Frequently Asked Questions

  1. What’s the difference between a service mark and a trademark?
    A service mark identifies the provider of a service, while a trademark identifies the source of a physical product.
  2. Do I have to register a service mark?
    No, but registration with the USPTO provides stronger legal protection and nationwide enforcement rights.
  3. What symbols can I use with my service mark?
    Use ℠ for unregistered service marks and ® for registered ones. Never use ® unless your mark is officially registered.
  4. Can a service mark be a sound or design?
    Yes, service marks can include distinctive sounds, logos, or even colors, as long as they clearly identify the source of the service.
  5. What happens if someone infringes on my service mark?
    You can pursue legal remedies, including cease-and-desist letters, injunctive relief, and monetary damages—especially if your mark is registered.

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