This article is written by Gaurangi Kapoor, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.
Table of Contents
Introduction
A service mark is any sign, mark, symbol, word, or design or a combination of any two or more of these, indicating the services of a company or any entity making it distinguishable from the services of any other entity. A service mark is used by a business that offers service(s) and many businesses use both trademarks and service marks. For instance, Amazon, which provides services as an online retailer and sells goods like the Kindle e-reader (UPCounsel). But to distinguish between a service mark and a trademark becomes confusing when the former are bundled with the latter as many service providing companies might also have products which they have trademarked.
Similar to Amazon, McDonald’s is a service providing company but it also has products such as The Big Mac which is a registered trademark (Murray). Additionally, a service mark not only distinguishes the service of the entity from another but also implies certain qualities of the services such as its goodwill and vision (Free trademark search). A service mark is usually a brand identifier used by franchisees and companies engaged in providing services to avail protection and enjoy rights provided by registration of the service mark. Other examples of service marks are Hawaiian Airlines, Google, FedEx etc.
Service marks- recognition
The difficulties largely are faced by internet services providing companies which intent to register their domain names because the rule for registration of a domain name is a first-come-first-serve basis and most of the time, registrations of well-known marks are owned by mala fide users who do not intend to use the mark nor are the service providers of the company but register the mark to later sell the domain name to the rightful owner for a big amount.
In India, in the earlier Trade and Merchandise Marks Act 1958, registration of marks was not extended to services and trademarks were used only in connection with goods. The Trade Marks Act 1999 introduced registration of marks for services as well. The Act follows the Nice Classification of Goods and Services and provides 11 classes for services from Class 35 to Class 45 under the Trade Marks Rules of 2002.
A “service mark” is not independently defined in the Trade Marks Act 1999 of India, rather is included in the definition of a trade mark under Section 2(zb), which “includes a mark capable of being represented graphically and which is capable of distinguishing the services of one person from those of other, and a mark that is used for the purpose of indicating a connection between the services and the person who has the right to use that mark.” The Act, nevertheless, defines “service” under clause (z) of Section 2, as “service of any description” and includes services pertaining to business or commercial interests. Services include catering, telecommunication, insurance, advertisements, hospitality, medical services, lodging, amusement, entertainment, business administration and management services etc.
Role of the USPTO
While the USPTO, requires the service mark to be in use in commerce meaning it should be used or displayed in sale or advertising of the services. It is different from a trademark wherein, the use of commerce would be indicated by use of the mark upon goods or packaging, displays associated with the goods or tags or labels affixed to the goods etc (Toikka).
Therefore, to register a service mark at the USPTO, specimens of advertisements or sales using the mark should be submitted. The specimen should also establish a direct association between the mark and the services. Companies that use both trademarks as well as service marks are McDonald’s and Starbucks. They provide services as well as goods. Sometimes distinct sounds may also be registered for a service mark, an illustration would be the tri-tone of the NBC network or the tone of Netflix. Other registered sound marks as service marks include the lion’s roar for MGM and “You’ve got mail” for AOL (UPCounsel).
Registration of service marks in India and USA
An applicant interested in registering a service mark should identify the location of his or her service-providing company and fill the form TM-1 including all the relevant documents- a soft copy of the service mark in jpeg format, registration fee, details about the applicant’s company and its business, information of the Trade Marks Agent/Lawyer, Power of Attorney, information about the service mark along with the class and subclasses in which the company aims to provide services and register its service mark, date of use of service mark or proposal to use, and other relevant documents.
The Trademark Registry upon receipt of the application, examines the contents of the service marks, verifying the uploaded documents and publishes the application in the Indian Trade Marks Journal for a three month period. If there is no objection found, the service mark receives approval for final registration. However, the Trade Marks Registrar could object to the application, if it finds any grounds for refusal under Section 9 or 11 of the Act to which it expects a reply and upon satisfaction of the reply and evidence, the service mark might get approval for registration. Third parties having similar or identical service marks and or similar or identical classes of services shall raise objections after the service mark is published in the Trade Mark Journal within four months from such advertisement. The Registrar serves such a copy of notice to the applicant for reply within two months from receipt of copy of notice of opposition. Evidence shall also be filed by each party within the prescribed time allotted by the Registrar.
After a service mark receives registration from the Trade Marks Registry, the service-providing company can use the ® – symbol, to intimate the registration of the service mark of the company. A service mark, similar to a trademark, receives recognition and protection for a period of ten years from the date of registration (Haskins). The service mark can also be renewed for another ten year period if the service mark is renewed within the duration of the ten-year period of protection it is enjoying. The entity/body corporate has to file Form TM-12 along with the renewal fee for renewal of the trademark (Haskins).
Service marks similar to trademarks are protected under the Lanham Act, state laws and rules regarding registration and infringement. A service which is done for the benefit of a third party qualifies as “services” for registration of a service mark under the Lanham Act.
Service marks can be registered under the United States Patent and Trademark Office (“USPTO”). The examiner reviews the application for registration of the service mark and may refuse the registration of the service mark if it is likely to cause confusion with a registered mark or application, is descriptive in nature and has not gained any secondary meaning, is a surname, or immoral or scandalous (Justia). It is crucial to note that an entity or individual might seek registration of the service mark in a particular state and therefore, such registration will not provide protection beyond the territory of the state. For nationwide protection, one has to register the service mark at USPTO which creates a public record of the mark and allows the owner of the service mark to sue in the federal court for trademark infringement (Haskins).
Conclusion
In India marks were not registered for services under the Trade Marks and Merchandise Act 1958. It was only after the repeal of the Trade Marks and Merchandise Act and enforcement of the Trade Marks Act 1999 that marks were registered for services under the Nice Classification of Goods and Services, for classes 35 to 45. A service mark, unlike a trade mark, is used for advertisements of the services provided by the body corporate whereas, a trademark is applied on packaging and products. A body corporate can have both a trademark and service mark for its business. An unregistered service mark and an application under registration, may use the symbol ‘SM’ while a registered service mark shall use the ® – the registered symbol. The procedure for registration of a service mark is similar to the registration process of the trademark in India as well as in the United States of America. Service marks can also be registered as sound marks such as MGM’s lion roar. Otherwise, there is not much literature available, independently for service marks since a service mark legally is a subcategory of a trademark.
References
- Free trademark search. “How to Register a Service Mark in India.” Free Trademark Search, 2020, http://www.freetrademarksearch.co.in/how-to-register-service-mark-in-india.php. Accessed 8 April 2021.
- Haskins, Jane. “How to register a service mark.” Legal Zoom, 2017, https://www.legalzoom.com/articles/how-to-register-a-service-mark. Accessed 9 April 2021.
- Justia. “Service Marks.” Justia, 2018, https://www.justia.com/intellectual-property/trademarks/categories-of-marks/service-marks/#:~:text=Like%20a%20trademark%2C%20a%20service,and%20Trademark%20Office%20(USPTO).&text=Service%20marks%20are%20not%20automatically,USPTO%20will%20review%20the%20appl. Accessed 8 April 2021.
- Murray, Jean. “Trademarks and Service Marks- What’s the Difference?” The balance small business, 2019, https://www.thebalancesmb.com/trademarks-and-service-marks-397829#:~:text=A%20service%20mark%20is%20the,or%20without%20a%20distinctive%20logo. Accessed 8 April 2021.
- Toikka, Richard S. “The Difference between Trademarks and Service Marks.” Toikka Law Group LLP, 2018, http://www.toikkalawgroup.com/blog/the-difference-between-trademarks-and-service-marks#:~:text=A%20trademark%20is%20a%20word,a%20service%20rather%20than%20goods. Accessed 9 April 2021.
- UPCounsel. “Service Mark Example: Everything You Need to Know.” UPCounsel, 2020, https://www.upcounsel.com/service-mark-example. Accessed 8 April 2021.
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