What is Service Mark Infringement?

Service mark infringement is the act of using another entity's service mark to profit from it. Similar to trademarks, service marks identify a service instead of a product. Federal law and California law protect service marks. 

Advantages of having registered service marks or trademarks include the following: 

  • Entities may use the “®” symbol to identify their service. 
  • Their marks have protection for 10 years under the Lanham Act (and are subject to renewal).
  • They have the right to sue for infringement in federal court, with the added advantage of having their attorney's fees paid if they win.
  • Registrants have the right to seek remedies under laws covering cybersquatting.
  • They have proof that the mark is valid and has been in continuous commerce use.

Service mark infringement is what happens when an entity or person purposely uses another's protected mark to make a profit or financial gain. They may commit service mark infringement in the following ways: 

  • They actually steal the existing mark. 
  • They intentionally design a service mark that's very similar to an existing one in order to confuse the public.
  • They take forms, uniforms, ads, or other items with an existing service mark and alter them but leave the mark intact and use the items for profitable gain.
  • They use an accessed service mark for any unauthorized purposes.

Requirements for Proving Infringement

There are specific requirements to meet to prove that service mark infringement occurred, and they depend on the following: 

  • The type of business and services involved
  • Whether or not there's a legal agreement or contract between the two parties
  • The nature of the relationship between the defending party and the service mark holder
  • The industry practices and standards for that particular service

A plaintiff must show that it holds a valid mark that's entitled to protection under the law and show that the defendant used that mark, or a very similar one, in connection with advertising or selling goods and services without permission. The plaintiff also has to show that the defendant's actions are likely to confuse the public as to the nature of the relationship between the two parties. 

Essential Elements for Infringement Claims

These three elements are necessary for a plaintiff to establish a claim of trademark or service mark infringement:

  • Use
  • In commerce 
  • Likelihood of confusion

The use of a trademark by a defendant is key. While some activities might cause a “likelihood of confusion” or be “in commerce,” if the trademark wasn't used, the activities don't violate the law. Making use a requirement serves to limit trademark holders from asserting such rights as controlling language.

Some entities try to capitalize on another's name recognition, but their actions don't fall under use as related to the definition of infringement. For example, a trademark holder might object to certain product placement in stores or Internet "pop-up" ads, but these uses don't actually violate the Lanham Act.

To meet the requirement of “in commerce," the plaintiff has to show that the defendant's activities have a substantial impact on interstate commerce. Activities that meet this requirement include the following: 

  • Goods being moved across state lines from manufacturer to seller that bear the infringing mark
  • Advertising being done in more than one state by the alleged infringer 
  • Advertising on billboards or in newspapers with interstate reach or on television and radio stations with interstate broadcasting 
  • Sending products to another state in order to register a trademark

The focus of a trademark or service mark infringement claim is the likelihood of confusion. This exists when consumers who see the allegedly infringing mark would likely think that the service or product it represents is associated with a different source than the one identified. When courts analyze the likelihood of confusion, they apply two different standards, which depend on whether the alleged item competes or doesn't compete with the protected item.

Service marks, similar to trademarks, are designed to protect a business's profits by making it illegal for other parties to use them without permission for financial gain. Being able to prove infringement in court is key for protecting that service mark as well as the company's profits and reputation.

If you need help with understanding service mark or trademark infringement, 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.