Trademarks and service marks are words, phrases, sounds or symbols that identify your business and distinguish it from other businesses. If you use your mark for products that you sell, it's a trademark. If you use it for services that you provide, it's a service mark. Sometimes people use the word “trademark" to refer to both trademarks and service marks.
How do you know if you're providing products or services? Services are things that you do for other people, such as preparing tax returns or giving golf lessons. Products are items that you sell, such as tax preparation software or golf clubs.
Why Register a Service Mark?
Service Marks receive common law trademark protection if you use them in your business. But this protection is weak and doesn't usually extend beyond your immediate geographic area. If another business then uses your mark, it can be hard to prove that you have a superior right to use it.
Many states offer service mark registration, but state registration will not protect you if an out-of-state business begins using your mark.
Registration with the United States Patent and Trademark Office (USPTO) gives you nationwide service mark protection, creates a public record of your mark, allows you to sue in federal court for trademark infringement, and can make it easier to obtain trademark protection in another country.
The steps required for registering a service mark are specified below; because of the details involved, it may be wise to consider using a third-party registration service.
Steps to Service Mark Registration
Step 1: Conduct a Service Mark Search
You can't register a service mark if someone else is already using a deceptively similar mark for the same type of services. A mark is deceptively similar if it looks or sounds like an existing mark, so that a consumer might be confused about the source of the services.
The USPTO has an online Trademark Electronic Search System, or TESS, that is used to search for similar service marks. LegalZoom's comprehensive trademark search includes options that can search federal, state, common law and international databases and identify potential conflicts.
Step 2: Complete the Service Mark Application
To fill out the service mark application, you'll need this information:
- The name of the service mark's owner and an address for correspondence.
- The type of mark you are registering: a standard character mark, a special character mark, or a sound mark. A standard character mark protects a group of letters or words in any form you choose to display them, while a special character format protects your mark in the exact style and color you specify.
- The type of services your mark is used for. You'll only have service mark protection for the type of services you identify.
- A picture and specimen of your mark. A picture shows what your mark looks like by itself. You'll also need a specimen, such as a brochure or a sign, that shows how you are using your service mark.
Step 3: Submit the Service Mark Application and Pay the Filing Fee
If you submit your application electronically, you'll pay $225-$325 per class of services registered (as of January 2016). Mail registrations are more expensive, at $375 per class of services.
Step 4: Respond Promptly to Correspondence from the Trademark Office
Your application will be assigned to an examining attorney at the USPTO. If there are questions or problems, you may receive a letter known as an Office Action. It's important to respond to an Office Action within the deadline contained in the letter. If you don't, your application could be denied.
To register a trademark or service mark, it's important to conduct a thorough trademark search and submit a complete and accurate application. If your application is denied, you won't get your filing fee back.
If you're ready to register a trademark or service mark, LegalZoom can help. Get started by answering a few questions. We'll work with you to assemble your trademark application and conduct a trademark search. Then, we'll file your completed application with the USPTO.