While most areas of intellectual property law relate to the protection of the inventions and creations your company has devised and relies upon to generate revenue, trademarks and service marks protect your brand identity and public image. Registering your trademarks and service marks is an important step toward protecting the general perception of your brand.
Difference Between Trademarks and Service Marks
Trademarks and service marks serve very similar purposes and may contain the same elements,so there is often confusion as to which is which and which one your business should register. An experienced trademark and service mark lawyer can help you make that assessment and guide you through the research and registration process.
What is a Trademark?
The U.S. Patent and Trademark Office provides this brief definition of a trademark:
- A trademark is generally 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.
- In simple terms, a trademark allows consumers to recognize that your company is offering the goods they are considering, and to factor the source of goods into purchasing decisions. Exclusivity of trademark is important to a business offering goods for sale for two reasons:
- Owning and controlling your trademark allows you to profit from the good reputation your company has established and the brand loyalty you have built; and
- Avoiding trademark confusion protects you from having your brand image tarnished by other companies creating the misimpression that you are responsible for the goods they produce and/or market
What is a Service Mark?
A service mark offers the same type of protection as a trademark, except that rather than identifying the source of goods, a service mark identifies a business that provides a service or services rather than goods.
Determining Whether You Need a Trademark or Service Mark
Given the brief descriptions above, the choice between a trademark and a service mark may seem obvious. For example, a company that manufactures and sells tires is producing and selling goods, and so employs a trademark. A chain of mechanics’ shops provides services, and so would most appropriately register a service mark.
In reality, however, the analysis is often more complicated. For example, a retail store sells goods, but it is not the goods that are branded. The goods typically come from other sources with their own trademarks. For the retailer, the protected brand image relates to the set-up, the displays, the customer service provided and other service-related elements. So, although Piggly-Wiggly is in the business of selling goods, the company name is a registered service mark.
In some cases, a company may need both a trademark and a service mark.
Registering a Trademark or Service Mark
The process of registering trademarks and service marks is virtually identical. Before commencing the process, it is important that the business consider the mark carefully and answer a few key questions, including:
Is the mark eligible for registration? For example, a word or phrase that is too common or generic cannot be a registered trademark.
Is there a likelihood of confusion with an existing mark? Avoiding confusion among providers of goods and services is a key goal of trademark and service mark protection, so a mark that is too close to or easily confused with an existing mark will likely be rejected.
Likelihood of Confusion
Of course, issues such as “likelihood of confusion” and “similarity” are not necessarily clear cut, and it takes knowledge and experience to be able to make good assessments about the viability of a mark. An experienced intellectual property attorney can be your best source of advice on that issue.
Multi-step Process
Registration is a multi-step process that may take a year or more to complete. First, the application and specimen are reviewed, which may take three to four months. Then, if the examining attorney finds no obstacles to proceeding, the mark will be approved for publication and an opportunity for objections from the public.
Protecting Your Trademark or Service Mark
One important manner in which trademarks and service marks differ from other types of intellectual property is that they must be actively employed and defended. At intervals, you must file a certificate of continued use or of “justified non-use.” And, you must monitor and defend your mark in order to maintain it.
Work With a Legal Professional at KPPB LAW
An experienced trademark and service mark attorney can help you determine which type of registration to pursue, or whether different aspects of your business may require different types of protection. Our firm can help, from the initial analysis of your mark through registration and maintenance. You cannot afford to take chances with this core symbol of your company’s identity. Contact KPPB LAW for more information.
