Trademark vs. Service Mark: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
A trademark offers protection for a symbol, logo, phrase, word, design, or name for goods or products and service marks offer similar protection for services 8 min read
2. Why is Trademark vs. Service Mark Important?
3. Reasons to Consider Using Trademark vs. Service Mark
4. Reasons to Consider Not Using Trademark vs. Service Mark
5. What Could Happen When You Don't Do Trademark vs. Service Mark?
6. Common Mistakes
7. Frequently Asked Questions
8. Steps to File
Updated October 28, 2020:
What Is Trademark vs. Service Mark?
A trademark offers legal protection for a symbol, logo, phrase, word, design, or name that represents goods or products. A service mark, or servicemark, offers similar protection for services. If your company sells an item or multiple items, you'd need to trademark the mark used to represent the business. If you have a company that provides a service, focus on the service mark.
Using TM in your mark represents trademark and SM represents service mark. Neither holds any legal significance. The only symbol that has legal weight is the registered symbol, represented by an encircled R.
In order to use the registered symbol, a business or individual must file an application with the United States Patent and Trademark Office (USPTO). Before submitting an application, those involved should carefully review existing service marks and trademarks in the registry. You can perform a search through the Trademark Electronic Search System (TESS).
Tips for Searching for Marks
When you use TESS to look for existing marks, follow a few tips to avoid missing something important. Don't just look for items that are identical to yours. Similar marks are often rejected because they can cause confusion among consumers. Trademark and service mark laws exist to protect consumers as well as businesses. Without a clear mark, a customer may not know what company manufactured a product or provided a service.
Protection under trademark and service mark laws also extends to the owners of the marks. If another company can confuse a customer into purchasing its products, your business will suffer. With legal protection, you can sue the infringer for damages. This includes profits lost during the time that the other company used a similar or identical mark.
The difference between a service mark and a trademark seems pretty straightforward, but the two options do lead to some confusion for business owners. If you offer both goods and services, you may not know which to use. Many businesses that provide services and goods use both trademarks and service marks.
An example of a service mark might apply to a bank. The bank might include a service mark on the unique names of its checking and savings accounts. Some of the more common service marks include McDonald's, which holds a registered mark for its food services, and Walmart, which has a registered mark for its retail services.
Why is Trademark vs. Service Mark Important?
Most consumers and members of the public don't really understand the difference between a trademark and a service mark. But when you look at what the company provides, it becomes clearer. It's important to separate the two classifications of marks because what each represents is different.
You may hear both service marks and trademarks referred to simply as "marks." They do share some similarities, but there are different legal rules that protect each type of mark.
Reasons to Consider Using Trademark vs. Service Mark
The benefit of using the symbols associated with trademarks and service marks is that both inform competitors of your plan to use the mark for your business. If a similar company is considering making a change to its logo, phrase, symbol, design, or word associated with the goods or services, seeing one of these symbols on your mark might reduce the chances of duplication.
But the real legal protection comes when you file an application for a trademark or service mark. Until you do so, you won't have any rights against theft of your mark.
When you do file for a trademark or service mark, consider these important points:
- A trademark or service mark that only contains characters should be submitted in all caps. The legal protection will extend to the characters in lowercase or capital letters.
- A trademark or service mark that contains a design, logo, or symbol should be submitted in the exact form that you plan to use. If you make a change to the mark, you'll have to re-file for a new trademark or service mark.
- You may want to consider submitting several applications at once. When you submit the design in color, only that exact layout has protection under the laws. So if you ever plan to use the design in another color or in black and white, submit a separate application for each option.
Reasons to Consider Not Using Trademark vs. Service Mark
Some businesses don't use the TM or SM symbols because they don't like the way it looks on the mark. These superscript letters might clutter up the text or layout of your design. But when using any of the symbols in print, you can simply use one in the first instance of the mark. Doing so will reduce the clutter and improve the readability of the text.
Another reason that you might choose not to file an application for your trademark or service mark is the cost. The filing fees range between $225 and $600. If your company doesn't have funds available to pay the fee, you can use the TM or SM as a placeholder on your mark. But it's definitely worthwhile to pursue a legal registration of the mark as soon as possible. Completing the trademark or service mark registration process is the only way to fully protect your mark.
What Could Happen When You Don't Do Trademark vs. Service Mark?
Not using the TM or SM symbols on your mark doesn't come with any legal repercussions. These symbols don't hold up in court or protect your mark, aside from offering basic common law trademark rights. Common law rights afford protection to companies that use the mark in regular business practices.
But if someone else has registered an identical or similar mark, the common law trademark rights no longer apply. It's your responsibility to perform a thorough search in the TESS before using any service mark or trademark in any format.
If you don't file for trademark or service mark protection, you could infringe on a trademark if someone else creates a similar mark. Without registering your mark, you don't have any legal rights to it. It also becomes nearly impossible for another person to find out that you've been using the mark under common law trademark rights.
If the other individual chooses to file an application for either a service mark or trademark with a similar or identical mark, you lose the option to do so. It's very difficult to prove that you've been using a mark longer than the other person. This becomes even more complex when the USPTO reviews the filing date on the application since that is the basis for all legal rights to the mark.
It's also important to understand the differences between service marks and trademarks so you file for the correct version. One example of a trademark is Nike, a company that sells apparel and footwear products. An example of a service mark is McDonald's since this company offers food and restaurant services.
Some companies fall under both service mark and trademark categories. An example of this is a shipping company like UPS since it offers both goods and services. You can purchase items like boxes and packing materials in their stores. The company might add TM to marks that relate to the goods, while the marks relating to services might have an SM symbol.
One mistake is not understanding which mark best protects your company and goods or services. While it may not directly affect the legal protection, it's best to apply for a service mark for services and a trademark for goods and products.
It's also risky to put off filing for a trademark or service mark, especially if you're currently using the mark in regular business. You do qualify for common law trademark rights, but if someone else files for trademark protection or already has a trademark for something similar, you will no longer be able to use it. Filing quickly starts the approval process and reduces the chances of losing the opportunity to file for a trademark in the future.
Frequently Asked Questions
- What is the difference between a trademark and a service mark?
A trademark extends legal protection to a symbol, word, phrase, logo, or device used by a company or person that sells goods. A service mark offers the same legal protection to a symbol, word, phrase, logo, or device for a company or person that provides a service.
- What does it mean when a lawyer refers to a "mark" or "marks"?
An attorney might simply refer to the mark or marks registered to a specific company or person. The term refers to either a service mark or a trademark.
Steps to File
- Search all registered trademarks and service marks to make sure yours isn't too similar.
- Fill out and submit the required application through the USPTO. If you want to register multiple versions of your mark, such as in several colors or black and white, you'll need to complete an application for each.
- While you wait for approval on your application, you can track the progress on the Trademark Status and Document Retrieval website, through the USPTO.
If you were filing for registration of your trademark in the Commonwealth of Massachusetts, your company may receive material advantages. All registered marks (trademarks and service marks) are on the Division website, so members of the public are aware of the trademark owner's claim on the mark. Registering your mark in this area of the U.S. also provides you with a filing date, which counts as the date of first use in the state of Massachusetts, helping solidify your claim if you plan to file for a federal trademark.
Registering your trademark in the state will also protect you against infringement through the option to take legal action against those who copy your mark. If a court determines that an infringer acted with knowledge of your mark and its protected status, your company could qualify for additional damages.
In order to file a mark for legal protection in the Commonwealth, you will need to provide the following information about yourself or your business as well as your mark:
- Name and address
- Type of business
- State and date of the organization (if applicable)
- Names of general partners (if applicable)
- If the mark is a trademark or service mark
- A description of the mark
- A description of goods and/or services connected with the mark
- Number and class for each class under which the goods and/or services fall
- How you use the mark in connection with provided goods and/or services
- The date you first used the mark in business
- The date you first used the mark in the Commonwealth
- Whether you have filed an application with the USPTO
- If the answer is yes, include the filing date, serial number, application status, and reason for denial (if applicable)
- An example that shows how you use the mark (cannot exceed 3" x 3" in size)
While the differences between trademarks and service marks aren't widely known, it's important for business owners to understand how they differ. When you clearly see which mark is the best option for your business, you can save time by filing the correct application from the start.
If you need help with filing for a trademark vs. service mark, you can post your question or concern on UpCounsel's marketplace. 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.