TM vs SM | Trademark versus Service Mark

The thing about intellectual property classifications is that sometimes the difference between them is very subtle. Even so, that subtly is important. Many people don’t understand what makes trademarks distinct from service marks. Grasping the complexity between a trademark (TM) and a service mark (SM) is crucial if you want to know how intellectual property works! The main point is that a TM applies to goods, while a SM applies to services only. 

If you purchase a Ford pickup truck, like a Ranger model, that vehicle model is protected by the Ford trademark – because it’s a product. Whereas, the New Vehicle Limited Warranty for that vehicle’s maintenance falls under the definition of a service. As such, the warranty’s intellectual property protection is distinguished by a service mark. 

Slogans, Symbols, Phrases, Designs, Words… TM vs SM

Whether a trademark or service mark, these types of intellectual property come in the form of slogans, symbols, phrases, designs, and/or words. In this manner, TM and SM are quite alike! If the trademark or service mark isn’t registered with the United States Patent and Trademark Office (USPTO), the protection is definitely limited. If registered, the TM or SM has the most available legal protection and permits the owner of the mark to use the ® symbol! 

When making a decision to register goods or services with the USPTO, applicants ought to file for the appropriate registration. The wrong type of registration, such a TM for a service or a SM for goods, could lead the USPTO to reject the application. You’ll also want to anticipate any future opposition against your mark that may arise. Anyone who opposes a mark can refer to the original mistake in registration to strengthen their case. Which is not good! 

Any business owner who intends to legitimately sell a product or service in the United States or internationally should very seriously look into registration. Sure, you’re legally allowed to use unregistered marks for goods or services, but that makes your business vulnerable! Why’s that? If you’re not the first one to file for the mark’s registration, a competitor may do so instead. Then, that business might achieve USPTO registration in your area. And after that, you might actually lose your right to use that mark any further. 

USPTO Registration is the Ultimate Intellectual Property Protection

In the registration process, you’ll have to thoroughly define what type of goods or services you offer. Regardless of whether you are already using the mark in commerce or intend to, you should commence the process as soon as possible. USPTO registration does come with filing fees and applicants will need to field any questions asked by the examining attorney. Knowing how to reply to the USPTO if and/or when there’s an inquiry or denial is key. With registration of the mark in hand, you’ll then have the most protection of your goods or services that you can get! Check out our previous article on Trademark Classes to better understand how you should approach registering your products or services. 

To elaborate, a service is an intangible thing that is designed to benefit a consumer. Recall our earlier example of the vehicle warranty. A company like Ford would want to protect that warranty offering with a service mark because it’s not a physical product. 

What Are the Benefits of Service Marks?

The benefits of getting a service mark are plentiful. Your business can protect its intellectual property from competitors who wish to take your ideas. USPTO registration serves to identify the service you’re selling. That means it’s no longer part of the public domain. Therefore, if the mark’s protection is violated, you can take legal action to remedy the infringement. That gives businesses the option to seek monetary compensation for any damages incurred due to that infringement. This happens more often that you might want to believe! 

When you have a service mark, your business is also provided with the foundation to establish its brand identity. You’ll be able to clearly and successfully communicate to consumers just exactly what the brand represents in terms of the service and quality. If consumers are able to identify the mark, they’ll come to trust the brand, which ultimately grows your business. 

With application approval by the USPTO, the owner of a service mark can then use the official registered trademark symbol. The service mark’s protection can potentially last forever, so long as you renew the mark every 10 years. 

Searching TESS & Obtaining USPTO Approval

To increase your chances for registration approval, just like with trademarks, be sure to conduct an exhaustive search of existing service marks. The Trademark Electronic Search System (TESS) is a great resource! Yes, you should check out marks that are the same as yours. But not just that! You’ll want to factor in the likelihood of confusion. So also look at similar marks to the one you’re using. The USPTO rejects lots of applications for marks that are similar to existing ones because they are likely to cause consumer confusion. Ideally, the customer should see your mark and automatically identify it with your service. 

Some businesses will offer goods and services, not just goods or just services. If that applies to you, perhaps you might not know whether to apply for a trademark or service mark. In fact, plenty of business owners submit applications for both trademarks and service marks. It all depends on your unique offerings! 

Want to know more about how to file a trademark or service mark? Contact our team at Stockman & Poropat, PLLC today for a free consultation! We are a top intellectual property law firm that knows how to navigate the complex intricacies of USPTO registration. If you’re not sure whether you should file for a trademark or service mark, we can help!

Up next we will be discussing Cybersquatting.