TMEP 1301.02: What Is a Service Mark?

October 2017 Edition of the TMEP

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1301.02    What Is a Service Mark?

Not every word, combination of words, or other designation used in the performance or advertising of services is registrable as a service mark.  To function as a service mark, the asserted mark must be used in a way that identifies and distinguishes the source of the services recited in the application.  Even if it is clear that the applicant is rendering a service ( see TMEP §§1301.01 et seq.), the record must show that the asserted mark actually identifies and distinguishes the source of the service recited in the application. In re Adver. & Mktg. Dev. Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987) (stationery specimen showed use of THE NOW GENERATION as a mark for applicant's advertising or promotional services as well as to identify a licensed advertising campaign, where the recited services were specified in a byline appearing immediately beneath the mark).

The fact that the proposed mark appears in an advertisement or brochure in which the services are advertised does not in itself show use as a mark.  The record must show that there is a direct association between the mark and the service. See In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identifies only a process does not function as a service mark, even where services are advertised in the same specimen brochure in which the name of the process is used); In re Graystone Consulting Assocs., 115 USPQ2d 2035 (TTAB 2015) (finding specimen did not show a direct association between the mark WALK-IN SHOPPER and the identified business training consultancy services, but instead showed the mark being used to identify a particular type of customer that is the focus of the consulting services); In re Duratech Indus. Inc., 13 USPQ2d 2052 (TTAB 1989) (term used on bumper sticker with no reference to the services does not function as a mark); Peopleware Sys., Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985) (term PEOPLEWARE used within a byline on calling card specimen does not constitute service mark usage of that term, even if specimen elsewhere shows that applicant provides the recited services); In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979) (proposed mark used only to identify a liquefaction process in brochure advertising the services does not function as a mark, because there is no direct association between the mark and the offering of services). See TMEP §1301.04(b).

The question of whether a designation functions as a mark that identifies and distinguishes the recited services is determined by examining the specimen(s) and any other evidence in the record that shows how the designation is used. In re Morganroth, 208 USPQ 284 (TTAB 1980); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977).  It is the perception of the ordinary customer that determines whether the asserted mark functions as a service mark, not the applicant’s intent, hope, or expectation that it do so.  In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960).  Factors that the examining attorney should consider in determining whether the asserted mark functions as a service mark include whether the wording claimed as a mark is physically separate from textual matter, whether a term is displayed in capital letters or enclosed in quotation marks, and the manner in which a term is used in relation to other material on the specimen.

While a service mark does not have to be displayed in any particular size or degree of prominence, it must be used in a way that makes a commercial impression separate and apart from the other elements of the advertising matter or other material upon which it is used, such that the designation will be recognized by prospective purchasers as a source identifier. In re C.R. Anthony Co., 3 USPQ2d 1894 (TTAB 1987); In re Post Props., Inc., 227 USPQ 334 (TTAB 1985).  The proposed mark must not blend so well with other matter on specimen that it is difficult or impossible to discern what the mark is. In re McDonald's Corp., 229 USPQ 555 (TTAB 1985); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982); In re Republic of Austria Spanische Reitschule, supra; Ex parte Nat’l Geographic Soc'y, 83 USPQ 260 (Comm’r Pats. 1949).  On the other hand, the fact that the proposed mark is prominently displayed does not in and of itself make it registrable, if it is not used in a manner that would be perceived by consumers as an indicator of source. In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984).  The important question is not how readily a mark will be noticed but whether, when noticed, it will be understood as identifying and indicating the origin of the services.  In re Singer Mfg. Co., 255 F.2d 939, 118 USPQ 310 (C.C.P.A. 1958).

The presence of the "SM" symbol is not dispositive of the issue of whether matter sought to be registered is used as a service mark. In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983).

See TMEP §1301.02(a) for further information about matter that does not function as a service mark, TMEP §§1301.01 et seq. regarding what constitutes a service, and TMEP §§1301.04 et seq. regarding service mark specimens.