ACCEPTABLE USE OF SERVICE MARKS

A service mark is defined as any word, name, symbol or device or any combination thereof used to identify and distinguish the services of one entity from the services of another.  The service mark must function to both identify the services and distinguish the services and to indicate the source of the services.

The Trademark Act does not define what constitutes a service.  The following have evolved as criteria for a service:  (i) the service must be a real activity; (ii) the service must be performed for the benefit of someone other than the applicant (of the service mark); and further, (iii) the activity must be quantitatively different from anything necessarily done in connection with the sale of the applicant’s goods.  (In other words, activities directed to the sale of the applicant’s own goods would not constitute a service.  In addition, warranty repair of the applicant’s own goods would likely not be a service.)

What may be surprising is that a service mark may not merely be the identifier of a process, style, method, system or the like.  A system or process is only a way of doing something, not a service.  (But the “something” may constitute a service?)  The name of the system or process does not become a service mark unless it is also used to identify and distinguish the service.

December 16, 2006