A service mark is a piece of intellectual property comparable to a trademark. A trademark is a word, image, or phrase that identifies a particular company or product. Trademarks are used in connection with commercial products, whereas service marks identify services offered by businesses.
Service marks can be federally registered just like trademarks. To be registered, the service mark must be distinguishable from other marks and specifically described to link that service with the company. It must also generally identify the services rendered and used by the company “in commerce.”
Since there is generally no product packaging to place a service mark on, they are generally placed on:
- Advertisements
- Service uniforms
- Forms, documents, and receipts
- Company cars, such as delivery or transport vehicles
What Is the Difference Between a Service Mark and a Trademark?
Service marks are trademarks used in the sale of services instead of goods. Otherwise, trademarks and service marks are identical, including how trademarks and service marks can be infringed upon.
What Constitutes a Service Mark?
A service mark is a word, phrase, or device which is more than simply the business name of an enterprise. Mere status as a business name is not enough to qualify as a service mark. The test is the use to which the mark is put; it must do more than identify the enterprise as a business organization- it must identify and distinguish the services rendered.
Can You Register a Service Mark?
There is some question about whether a service mark can be registered when the service mainly encourages the sale of specific goods. As long as the service is legitimate and the effect on the sale of goods is only minor, there is no reason to deny the registration.
What Is Service Mark Infringement?
Service mark infringement occurs when a person or business entity intentionally uses a protected service mark for gain or returns. This can occur in several different ways, including:
- Purposely making a service mark that is intended to confuse the public into believing that the mark is from an existing company due to its similarity to a mark being used by that company
- The actual theft of an existing service mark
- Taking items such as ads, uniforms, or forms that contain service marks and altering them while leaving the mark intact to use them for profitable gain
- Acquiring access to a service mark and then using it for any unauthorized purpose
Service mark infringement regulations are comparable to those for trademark infringement. Specific requirements for proving service mark infringement may hinge on several factors, including:
- The type of services and business involved
- The nature of the relationship between the service mark holder and the defendant
- Whether there is a contract or legal agreement between the parties
- Industry standards and practices for that type of service
Can an Owner Own a Mark as Both a Service Mark and a Trademark?
An owner may own a mark as both if it is used in both ways. For instance, the owner of a radio or television program title can register the title as both a service mark and a trademark even though the use of the mark would be to promote specific goods.
A plaintiff must show that it holds a valid mark entitled to protection under the law and show that the defendant used that mark, or a very similar one, in connection with advertising or selling goods and services without permission. The plaintiff also has to demonstrate that the defendant’s actions are likely to confuse the public regarding the nature of the relationship between the two parties.
What Are the Necessary Elements for Infringement Claims?
These three elements are required for a plaintiff to demonstrate a claim of trademark or service mark infringement:
- Use
- In commerce
- Likelihood of confusion
The use of a trademark by a defendant is critical. While some actions might cause a “likelihood of confusion” or be considered “in commerce,” if the trademark wasn’t utilized, the actions don’t break the law. Using a requirement restricts trademark holders from claiming such rights as controlling language.
Some entities attempt to capitalize on another’s name recognition, but their measures don’t fall under “use” as related to the definition of infringement. For instance, a trademark holder might object to specific product placement in stores or Internet “pop-up” ads, but these uses don’t violate the Lanham Act.
To satisfy the requirement of “in commerce,” the plaintiff has to demonstrate that the defendant’s activities substantially impact interstate commerce. Actions that satisfy this requirement include the following:
- Goods being hauled across state lines from manufacturer to seller that bears the infringing mark
- Advertising being done in more than one state by the plausible infringer
- Advertising on billboards or in newspapers with interstate reach or on television and radio stations with interstate broadcasting
- Shipping products to another state to register a trademark
The priority of a trademark or service mark infringement claim is the likelihood of confusion. This exists when customers who see the allegedly infringing mark would presumably believe that the service or product it represents is associated with a separate source than the one specified. When courts interpret the likelihood of confusion, they apply two different standards, depending on whether the alleged item contends or doesn’t contend with the protected item.
Service marks, comparable to trademarks, are created to shield a business’s profits by making it illegal for other parties to use them without authorization for monetary gain. Being able to establish infringement in court is critical for protecting that service mark and the company’s profits and reputation.
What Are the Remedies for Service Mark Infringement Violations?
Servicemark infringement is a serious legal violation and can lead to strict legal consequences, similar to those for trademark infringement. These potential consequences include a monetary damages award intended to compensate the service mark holder for loss of profits, legal fees, and other costs. Other typical remedies include injunctions and cease/desist orders from the court.
In addition, it is common for criminal charges to be filed against a person for infringement. This can lead to further consequences, such as jail time and additional criminal fines.
Should I Hire a Lawyer for Help with Service Mark Infringement Issues?
Intellectual property issues like service mark infringement or trademark infringement can often be complex and can involve a mix of several legal concepts. You may need to hire a trademark lawyer in your area if you need any legal advice or assistance with infringement laws. Your attorney can provide you with legal research and represent you in court if you need to file a lawsuit. Also, if you have any specific inquiries or concerns, your lawyer can provide advice on the best way to proceed.
Trademarks and service marks are an advanced area of the law. It is not recommended that you try to settle any legal matters involving service mark infringement or trademark infringement without the help of an intellectual property lawyer. Our database of qualified intellectual property attorneys can help you address any issues you may be having, including filing a lawsuit and investigating the responsible party. To take the first steps towards resolving your legal issue, use LegalMatch today.
