Special thanks to Alexa Gorman, one of our summer 2021 interns, for her assistance and co-authorship of this article.
Trademarks vs. Service Marks
Trademarks and service marks are two types of intellectual property protection that businesses may use to represent their products or services. People often refer to trademarks and service marks interchangeably because they are so closely related. They essentially serve the same purpose in that they both distinguish the company’s goods and/or services from those of another company, but they differ in that a trademark represents a business product, while a service mark represents a service. Both are equally important to helping a business owners secure their intellectual property rights to company or brand names that add value to their companies.
The United States Patent and Trademark Office (USPTO) defines a trademark as “a word, phrase, symbol, or design or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” 15 U.S.C. § 1127 requires that the applicant to demonstrate that the mark is either being used by a person, or that a person has applied to register the mark with a bona fide intention to use the mark in commerce. A federally registered trademark is denoted by the ™ symbol.
A service mark is a type of trademark that represents a particular service. According to the USPTO, a service mark is essentially the same as a trademark. The same trademark rules found in 15 U.S.C. § 1127 apply. The only difference is that a service mark identifies and distinguishes the source of a service rather than goods. A federally registered service mark is denoted by the ℠ symbol.
Can I Register the Same Mark as Both a Trademark and a Service Mark?
Yes, you can register the same mark as both a trademark and a service mark. Whether you should register your company’s mark as a trademark, service mark, or both depends on the nature of your business. If your business only sells products, then a trademark is appropriate. If your business is services-based, then you will need to register a service mark. If your business involves a combination of both products and services, you may need to register both a trademark and a service mark. Starbucks is an example of a company that has registered its name as both a trademark and as a service mark because its business involves a combination of products and services. The Starbucks name refers to the service provided by the baristas who prepare coffee for customers while simultaneously referring to the brand name listed on the labels of its packaged products.
If you are interested in registering a trademark and/or service mark with the USPTO, one of our Lynchburg, Virginia trademark attorneys can help you determine which types of registrations are best for your business as well as guide you through the registration process. Working with an experienced intellectual property lawyer will improve your chances of a successful registration.
If you’re looking to register your service mark or trademark (or you’re not sure which one you need), call Darkhorse Attorneys today to schedule your initial consultation.
