Key Takeaways

  • Service mark infringement occurs when another party uses a registered or common law service mark without authorization in a way that may confuse consumers about the source of services.
  • To establish infringement, a plaintiff must prove ownership of a valid service mark, unauthorized use by another party, and a likelihood of confusion among consumers.
  • Remedies for infringement can include injunctions, damages, and in severe cases, recovery of profits or attorney fees.
  • Common law service marks offer limited regional protection compared to federally registered marks.
  • Preventing infringement involves consistent mark use, federal registration, and active monitoring of unauthorized use.

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.

Common Law vs. Registered Service Marks

Service marks can exist under both common law and federal registration through the U.S. Patent and Trademark Office (USPTO). A common law service mark arises automatically through continuous use in commerce to identify and distinguish a service, even without federal registration. However, protection under common law is limited to the specific geographic area where the mark is used.

By contrast, registered service marks offer nationwide protection under the Lanham Act. Federal registration provides key advantages such as:

  • Legal presumption of ownership and exclusive rights nationwide
  • Ability to use the ® symbol
  • Access to federal courts for enforcement
  • Potential recovery of statutory damages and attorney’s fees

While common law marks can still be enforced, federal registration strengthens an owner’s position in court and simplifies the process of proving infringement.

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. 

Steps to Take When You Suspect Service Mark Infringement

When you discover potential service mark infringement, swift and strategic action is crucial. Steps typically include:

  1. Gather Evidence: Document instances of unauthorized use, including screenshots, advertisements, or promotional materials.
  2. Confirm Ownership: Verify that your service mark is active and properly registered or protected by common law rights.
  3. Assess Confusion: Determine if the public could reasonably mistake the infringer’s services as coming from your business.
  4. Contact the Infringer: Often, a cease and desist letter from an attorney can resolve the matter without litigation.
  5. Negotiate a Settlement: Some cases can be resolved through licensing or coexistence agreements.
  6. File a Lawsuit if Necessary: If informal resolution fails, a lawsuit can seek injunctions, monetary damages, and in some cases, punitive damages.

Early consultation with an intellectual property attorney can ensure proper evaluation of your claim and minimize business disruption.

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.

Remedies and Penalties for Service Mark Infringement

If a court determines that service mark infringement occurred, several remedies may be available under the Lanham Act and state laws:

  • Injunctions: Courts may prohibit the infringer from further using the mark.
  • Monetary Damages: The plaintiff may recover compensation for lost profits, reputational harm, or unjust enrichment.
  • Disgorgement of Profits: Courts may require the infringer to surrender profits made through unauthorized use.
  • Destruction of Infringing Materials: Any infringing promotional or digital materials can be ordered destroyed.
  • Attorney’s Fees: In exceptional cases involving willful infringement, the court may order the defendant to pay legal fees.

In cases involving cybersquatting, mark owners may also recover domain names that use or imitate their service marks to mislead consumers.

Preventing Service Mark Infringement

Preventing infringement begins with proactive brand management. To protect your service mark:

  • Register your mark federally with the USPTO for nationwide rights.
  • Monitor online and marketplace use of similar marks through watch services or automated alerts.
  • Maintain consistent branding across all platforms to strengthen consumer recognition.
  • Renew your registration every 10 years to maintain continuous protection.
  • Act promptly when unauthorized use is detected—delays can weaken claims of confusion or damages.

Regular legal reviews and enforcement actions help preserve your service mark’s distinctiveness and long-term value.

Frequently Asked Questions

  1. What is the difference between a trademark and a service mark?
    A trademark identifies products, while a service mark identifies services. Both provide similar legal protections against unauthorized use.
  2. Can I sue someone for using my service mark without registration?
    Yes, if you’ve established common law rights through consistent use, you may still sue within the region where the mark is recognized.
  3. What happens if I ignore service mark infringement?
    Failure to enforce your rights can weaken your mark’s distinctiveness and potentially lead to loss of exclusive rights.
  4. How long does a service mark last?
    A federally registered service mark lasts 10 years and can be renewed indefinitely with continued use.
  5. Do I need an attorney to handle service mark infringement?
    While not required, having an attorney ensures proper evidence collection, cease-and-desist communication, and legal representation if litigation becomes necessary.

If you need help with understanding service mark 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.