How to File for a Service Mark
A service mark identifies the source of a service, rather than a physical product (which requires a trademark). Service marks normally appear in the communications and advertising of the service, rather than on a physical package, and the benefit of the service is not available until customers access it. Protecting use of a service mark is an often overlooked but critical step to protect your commercial identity and revenue potential.
Both trademark and service mark protection are administered by the United States Patent and Trademark Office (USPTO), with authority granted by the Trademark Act of 1946 and amended periodically. There are two types of protection: the right to register the mark and the right to use it.
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Things You'll Need
- Corporate information
- Service mark visuals
- Usage search results
- Electronic application form
Instructions
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Establish the right to use a given mark (which usually includes both a name and a visual element) by using it. Generally, the first entity to do so is considered the owner of the mark. While this “common usage” may include communicating it in promotional materials and general advertising, the initial legal basis is often established by simply running a legal newspaper notice in a verified-circulation medium. This is not, however, a filed service mark application; it merely establishes legal use of the name and the mark. At this point, it is legally acceptable to signal ownership of the mark by adding an upper case “SM” in superscript position. Use of the federally approved registration symbol ("R") is reserved for those services for which federal application has been completed.
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Apply for service mark registration in one of three ways. If you have already used the mark in commerce, you can complete a “use-in-commerce” application based on that use. If the service (or the entity wishing to use it) is new, the filing application will be based on “intent-to-use” the mark in federally regulated commerce (meaning trade within the U.S. or between the U.S. and other countries).
Entities that do business only locally or within the boundaries of a state (for instance, a local truck farm that runs farmers' market with a small radius of customers) do not meet the federal definition of “commerce” and need only state approval of their service marks to protect their businesses. A foreign business doing commerce in the United States under international agreements may also file with the U.S. government, using the registration information on file with their own country.
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Protect your ownership. Knowing that you and you alone are using your service name and service mark is critical. Although it is not necessary to do a search to submit a service mark application to the PTO, you can save yourself time and worry by doing an initial Internet search (including the PTO trademark library) before applying. A formal search by a trademark attorney is included in the service mark filing fees, and you will be notified of possible conflicts. Once federal ownership of your mark is granted, it will be up to you to keep watch that it is not infringed upon by business competitors.
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Read through the specific process for the type of filing you need before beginning the filing application. Assemble the necessary corporate information and service mark visuals (PDFs, JPEGs or GIFs are fine) before you begin so you can focus on filing out the form itself. If you're filing a “use-in-commerce,” including an electronic copy of your corporate annual report is a solid proof of usage.
You can access extensive information about the process from the United States Patent and Trademark Office home page. The Federal Trademark Electronic Application System (TEAS) provides all necessary electronic forms and a convenient filing portal. If you're filing only a state application, the Small Business FindLaw Web site provides convenient links to state-specific information.
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Be patient. Service mark approval time frames vary depending upon which type of application you have submitted. A “use-in-commerce” application may take 10 to 12 months, while a new service mark with no apparent conflicts can be completed in 12 months or fewer. A new service mark that appears to be in conflict with another service mark can take two years or more.
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Pay attention to service mark renewals. After navigating the service mark process, losing your protection due to inattention would be unfortunate. The initial service mark protection time frame is 10 years. This can be renewed, but it is up to you to understand renewal time requirements, because the PTO does not send out renewal notices!
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Tips & Warnings
Try to complete your application page in one sitting and within an hour, because the TEAS forms will time out after 60 minutes, risking the loss of all your hard work!
References
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