Service Mark Registration: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
A service mark registration is for businesses that provide services, and defends their intellectual property when service mark is registered with the USPTO. 9 min read
Service Mark Registration Overview
Service mark and trademarks are different. A service mark is used for a business that provides services. A trademark is used for a business that provides products. They can both be called marks. Restaurants use service marks because food is a service. Many businesses choose to use both marks.
Service marks can be many things. Common service marks include:
- A business name
Using a service mark is a good way to build your brand.
The Process of Service Mark Registration
If you're considering registering your service mark with the USPTO, there are a few things you need to consider before starting the registration process. You must meet several requirements before your service mark is eligible for registration. If you fail to take these requirements into account, your registration may end up being denied and you may end up missing out on the legal protections that a registered service mark bestows.
First, you must actually provide the services that your mark indicates and you must be the owner of the business.
Second, you must already be using your desired trademark (actual use) or are filing your registration with the intent to use. If you file an actual use application, you will need to detail your services and how you use your service mark. If you're filing an intent-to-use application, your registration will not be finalized until your service mark is in use.
After submitting your application, you should be ready to wait for approval. Having your service mark approved often takes months. Any mark that has been approved after November 16, 1989 will last for ten years. Once the ten-year period has expired, you will need to renew your mark.
If you meet these basic requirements, you are eligible to file for your service mark registration.
Checking Your Originality
The very first step in registering your service mark will be to make sure the mark is not already in use. Because so many service companies are in operation, countless service marks are in existence, which means your desired mark may have already been claimed.
To check the availability of your service mark, you can do a search in the Trademark Electronic Search System (TESS). The TESS provides options to search both words and images, so you can determine if the mark you are planning to use has already been registered.
It's important to remember that the TESS only searches USPTO registered service marks and not those that are international or on the state level.
Filing Your Application
After you've found that your service mark is eligible for registration, you can file a registration application with the USPTO. You can request a paper form directly from the USPTO or you can more easily file your registration online using the Trademark Electronic Application System (TEAS).
When using the TEAS, you can choose either the standard TEAS form or the TEAS Plus form. Although the TEAS Plus application fee is slightly less expensive — $275 versus $325 for the basic TEAS application — the requirements for this application under rule 2.22(a) are very stringent. The regular TEAS form is the better choice for most applicants.
Whether you file online or on a physical application, you need to make sure to include a detailed description of the services you provide, when you began using your service mark, background information about yourself and your business, and your service mark's name.
You also need to be sure to provide the USPTO with a specimen and a drawing of your mark. Both of these items should be based on how your mark will be used. Your specimen needs to be a real-life example of how you will use your service mark. Even if you provide a specimen, you still must provide a drawing. Make sure that your drawing and specimen match. Otherwise, you may be denied approval.
Rules for International Registration
You can register a second mark for use in another country. Overseas marks are handled by the World Intellectual Property Organization (WIPO). However, you would still file your mark with the USPTO.
You are not required to register your mark internationally. It is a good idea, however. Overseas registration gives you added protection. It also helps you grow your business into another country.
To register your mark, you will need to pay fees. Fortunately, these fees are not expensive. The fee range is $225 to $300. Your fee is determined by your services. Each mark that you register requires a new fee. For example, you would pay a fee to register a physical mark and an online mark. An attorney can help you figure out your possible fees.
Send an Example
Before your mark is approved, it must be reviewed. You must send an example of use for review to the USPTO. Do this for every service mark you are registering.
Your example must show your actual services. If it does not, it will be denied. There are many types of mark examples you could provide. These include:
- A picture of your business sign
- Ads you use
- A picture of you using your mark
Be careful to send the right examples. Every example you submit must talk about your services.
Factors that Can Prevent Approval
There are many reasons that your service mark may not be approved. A few of those reason include:
It uses the American flag
It uses a person's picture
It uses someone's last name
It uses material deemed immoral
It copies another service mark
It insults a person, a belief, or a government symbol
If your service mark fails review, you will need to redesign and resubmit.
Waiting for and Receiving Approval
When you have sent your application and specimens to the USPTO, you must now wait for approval. After the USPTO has determined you've met the basic requirements and has filed your application, it will take four months before your registration receives a full examination.
If your mark is approved for registration, the USPTO will publish the mark in its official magazine and will send you a letter notifying you of the publication. The reason for publishing your mark is that it provides an opportunity for your mark to be challenged by any business that may suffer losses because of your service mark. The period to challenge your registration is 30 days.
If no challenge has been issued after the 30-day period, your service mark will be approved.
For applicants who have already been using their service mark, the USPTO will send your certification 12 weeks after approval. On the other hand, if you filed an intent-to-use application, you will receive a notification that you are now allowed to use your mark. Once this notification is received, you will have six months to use your mark and submit a Statement of Use to the USPTO so you can receive your certification.
While you are waiting for your service mark to be approved, you can use the raised ℠ symbol. Once you have received your approval, you will be eligible to use the registered trademark symbol, ®. Upon approval, your certification will be good for a 10-year period.
What if My Service Mark Registration is Denied?
Unfortunately, your service mark registration may be denied. Should your service mark not meet the USPTO guidelines for registration, the organization will send you a letter detailing why your mark was denied and what you can do to rectify the situation. If the changes necessary for approval are minor and easily corrected, you may receive a phone call instead of an official letter.
Once a refusal letter has been sent, you have a period of six months from the mailing date to address any issues and resubmit your service mark. If you allow the six months to expire, your application will be voided and you will have to start the registration process again.
If you attempt to address the reasons for denial and fail to do so, the USPTO will give your registration a total refusal. At this point, you have the right to bring your registration before the Trademark Trial and Appeal Board. The Trademark Trial and Appeal Board will also handle any challenges that arise during the 30-day service mark publication period.
Protect Your Rights Through Registration
Now that you know more about the process of registering a service mark, it's important to examine a few of the reasons that service mark registration is so important.
Primarily, registering your service mark is important because it gives public notice that you are the sole owner of the mark and are the only one entitled to use it.
Being able to prove ownership of your service mark becomes crucial if your mark is ever infringed upon. When you've suffered service mark infringement, registration helps you to file a court claim against the offending party. Also, when you're involved in a service mark infringement lawsuit, having a registered service mark may entitle you to more monetary damages, as well as a more restrictive injunction against the defendant.
Registering your service mark can also be useful for expanding your business into international markets. If your business grows to the point that you're considering offering your services overseas, already possessing a registered service mark in the U.S. can make it easier for you to be approved for an international registration.
Reasons to Consider Service Mark Registration
There are countless reasons why you should consider service mark registration. Most importantly, service mark registration protects your intellectual property. Without registering your service mark, another business can offer the same service as yours, with the same branding, and you would have a very difficult time taking any legal action. However, when you possess your service mark registration, only your business will legally be allowed to use your mark.
Other top reasons to consider a service mark registration can include:
A service mark protects your rights
When you register, you can use the ® symbol
Receiving your service mark registration entitles you to advertise your service mark and grow your business' brand without the fear that another business will be able to profit from your work
Facts to Keep in Mind
Keep these facts in mind for a succesful application. First, use your mark early and often. The business that uses a mark first will be given approval. If another business uses your mark first, your application will fail. The other business will own your mark.
Second, don't wait to use your mark. You can sometimes use it before your registration has been approved. If you wait, another business may use your mark and become the owner. Using a mark protects your ownership.
Avoid These Mistakes
There are many mistakes to avoid when registering a service mark. If you stay clear of the following mistakes, your mark will likely be approved.
First, record your USPTO serial number. This will let you track the status of your case. You can use your number on the Trademark Applications and Registrations Retrieval website to track your registration.
Secondly, make your mark original and unique. Vague marks will not be approved. Xerox is a good example of a original service mark.
Thirdly, use your service mark regularly. Start using your service mark right away once it has been approved. If you stop using your mark for three years, you may lose it. Also, using your service mark makes it easier to resubmit.
Finally, be sure to protect your service mark. Never let another business use your service mark. If you don't defend your service mark, it may be cancelled. This means another business can claim it for itself.
Frequently Asked Questions
- May I register a service mark that is similar to another business' trademark?
Sometimes, yes. If your business is in a different area, then you may be able to register your service mark. Also, you may register a mark if your business is different from the other business.
- May I register a web address?
Yes. You can register your web address at the same time as your service mark. However, you must follow all the registration rules
- What about legal issues?
Legal issues can happen when registering your service mark. If these issues occur, you will receive a letter from the government. These letters are called office action letters. The different types of office action letter include:
- Priority Action: This letter tells you what you need to do for approval. You have six months to respond to this letter. After six months, your mark will be abandoned.
- Office Action: An office action letter tells you your service mark status. It also lets you know why you might be denied.
- Non-Final Office Action: You will get this letter after your mark is examined. It will explain any problems with the review.
- Examiner's Amendment: This letter will be sent if you change your application. It is only a notification.
- Final Office Action Letter: This letters means that your review is completed. Don't respond unless you need to change your mark in some way. You can also respond if you need to appeal a decision.
- Suspension Letter: A suspension letter means your review is suspended. This happens when your application is not finished. No response is required.
Find Legal Help
The process of service mark registration can be lengthy and difficult. If you want to make sure your registration application is completed correctly and will be approved, or if you need assistance in appealing a rejected registration, you should post a job on the UpCounsel marketplace and hire one of the UpCounsel lawyers.
UpCounsel attorneys have the experience necessary to successfully register your service mark, ensuring that you will get the legal protection that registration provides. Additionally, pricing is some of the most competitive that you'll find, making an UpCounsel attorney the cost-effective choice for getting the legal help you need. You can post your job on UpCounsel today.