Trademarks are phrases, words, logos, or other symbols that are used to identify products, the sources of the products, and the manufacturers or merchants of the products. Trademarks are used so that one product and the product’s manufacturer can be distinguished from others.
Before registering a trademark, an individual should conduct a trademark search in order to determine whether another entity or business is already using the name they want to use. An individual would not want to create brochures, run ads, and purchase other items based on a specific business name they created, only to later be forced to change the name of their business.
There are different types of trademarks, including:
- Service marks: Service marks promote a certain type of service instead of promoting a product;
- Trade dress: A product is sometimes known for its special packaging, referred to as its trade dress;
- Collective marks: Collective marks are words, symbols, or phrases that are used to identify a group, organization, or association, as well as the services, products, or members of the group; and
- Certification marks: A certification mark is a symbol or name that is used to guarantee the quality of other services or products.
What Is the Difference Between a Service Mark and a Trademark?
A service mark is a trademark that is used in the sale of services instead of the sale of goods. Aside from this, trademarks and service marks are identical in all respects, including how trademarks and service marks may be infringed upon, which will be further discussed below.
What Constitutes a Service Mark?
Service marks are phrases, words, or devices that are more than just the business name of a company. They are comparable to trademarks, as noted above.
A trademark is used in connection with commercial products. In contrast, a service mark is used to identify services offered by a business. The test to determine if something is a service mark is it must do more than just identify the enterprise as a business organization.
The service mark must identify and distinguish the services that are rendered. Just like a trademark, a service mark can be federally registered.
In order to be registered, the service mark has to be distinguishable from other marks and must be specifically described to link the service with the company. In addition, it must generally identify the services that are rendered and used by the company in commerce.
Because there is, in general, no product packaging to place service marks on, examples of services marks include being placed on:
- Service uniforms;
- Forms, documents, and receipts;
- Company cars, such as delivery or transport vehicles.
Can You Register a Service Mark?
There may always be a question of whether a service mark can be registered when that service is primarily promoting the sale of specific goods. So long as the service is a legitimate service and the effect on the sale of goods is only a minor one, there would be no reason to refuse registration.
What Is Service Mark Infringement?
Service mark infringement occurs when a business entity or an individual intentionally uses a protected service mark in order to obtain gain or returns. This may arise in different ways, including:
- Purposely creating a service mark that is intended to confuse the public so that they believe that the service mark is from an existing company due to its similarity to a mark that is being used by that company;
- The actual theft of a service mark that already exists;
- Taking items, for example, forms, uniforms, or ads that contain service marks and altering the item while leaving the service mark intact in order to use them for profitable gain;
- Obtaining access to a service mark and then using that mark for an unauthorized purpose.
Service mark infringement regulations are comparable to the regulations for trademark infringement. There are some specific requirements for proving service mark infringement that may be based on several factors, including:
- The type of services and business involved;
- The nature of the relationship between the defendant and the service mark holder;
- Whether there is a contract or legal agreement between the parties; and
- Industry practices and standards for the type of service.
What Is Registering a Trademark?
Trademark registration or service mark registration should be done with the United States Patent and Trademark Office (USPTO). After a trademark is registered, the founder of that trademark will be protected against other individuals who want to duplicate or copy the trademark.
Additionally, official registration puts the rest of the country on notice that the trademark has been discovered and registered. In order for a founder to register their trademark with the USPTO, they have to intend to use the trademark on services or products that are used nationally and affect commerce and trade.
Trademarks will not be registered with the USPTO if they are:
- Identical or similar to an already existing trademark or related goods/service.
- On the list of prohibited or reserved names.
- Too descriptive and does not qualify for protection.
Once a trademark is approved by the USPTO, it will be registered for ten years. Six years into the ten year period, the owner must file a form stating that the trademark is still being used. If this is not done, the trademark may lapse.
What Is Trademark Infringement or Dilution?
Federal laws provide protections for trademarks if they are used without permission. Trademarks are protected from both infringement and dilution.
Trademark infringement occurs when the same or similar trademark is used for a similar good or service. Trademark dilution occurs when a well-established trademark is used for a different service and tarnishes the existing good name through its use or weakens the association between the trademark and the services.
Can an Owner Own a Mark as Both a Service Mark and a Trademark?
An owner may own a mark as both a service mark and a trademark if it is used in both ways. For example, an owner of a radio or television program title may register the title as both a service mark and a trademark even though the use of the mark would be for the promotion of specific goods.
What Are the Remedies for Service Mark Infringement Violations?
Service mark infringement is a serious legal violation that may lead to several legal consequences similar to those for trademark infringement. Potential consequences may include a monetary damages award that is intended to compensate a service mark owner for the loss of their profits, their legal fees, as well as other costs.
There are also other remedies that may be applicable, such as injunctions or cease-and-desist orders from the court. Additionally, criminal charges may be filed against an individual for infringement.
If they are convicted, they may face additional consequences, including jail time and criminal fines.
Should I Consult a Lawyer About My Trademark Issue?
If you have any issues, questions, or concerns related to trademarks, it is important to consult with a trademark lawyer. The regulations and deadlines for trademark registration are strict and detailed.
Your lawyer can assist you with meeting all of the details and fulfilling all of the trademark requirements. In addition, your attorney will be able to conduct research to ensure that no other parties are using or diluting the trademark without your permission.
Also, if you have a future issue involving trademark infringement or dilution, your lawyer can help you with the difficult and strict procedural requirements for litigation.