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can you register a trademark when there is already a service mark on it that's the question I'm answering today I'm Aaron Hall an attorney representing business owners in Minneapolis Minnesota let's imagine that you want to register a trademark with the US Patent and Trademark Office that would give you a federal registered trademark but there's already service mark out there does that pose a problem and if so what do you do about that that's the challenge we're tackling today all right so what is a trademark let's start there a trademark is a name a term a logo a mark whatever it is that is being used in association with selling goods or services now so for example think about the Nike shoe Nike we not you hear Nike you think of the shoe company when you see the swoosh which is the Nike logo you think the Nike shoe company you probably don't think oh is that lightning on the shoe is that a wave no you see the image and you go oh that logo represents a company called Nike they sell shoes same with the word Nike so those are examples of trademarks the swoosh and the word Nike because they show an association between the source our Goods and the source of those goods the company Nike but I also said the source of services so Nike primarily sells goods that's products shoes but you can also do a trademark for services and technically that's called a service mark so a trademark is for goods and products a service mark is for services services like a law firm a laundromat a painter a mechanic a realtor all these things are examples of services so imagine that you want to register a trademark but somebody is already using it for a service the question comes down to two issues trademark infringement and trademark dilution let's talk about trademark infringement first is the term that the mark that you're going to use confusingly similar to what the service company is already using and in the industry they're in so let's take a simple example here let's say it's a real estate company and they're called whitewater real estate and you want to ought you want to have a clothing company called whitewater clothing well those are significantly different I don't think in my mind if you were to ask me I don't think if I heard whitewater as it relates to real estate that I'd be like oh that sounds like whitewater clothing they're probably the same company so that's kind of that's the trademark infringement question are they confusingly similar would a member of the public a reasonable person think that they're somehow similar enough and from the same company the second issue is trademark dilution and it's a very similar analysis but the question is are they confusingly similar enough that although they might not be confused as the same company or the same source would they be consume confuses somehow related for example let's say I wanted to create a company called Mercedes computer company well Mercedes car company I don't think sells computers so you might think hey it's different enough it's a whole different industry it's not confusingly similar you might say that however because Mercedes is a very unique term and a term that is so well known throughout the United States Mercedes at least would have a claim for trademark dilution basically saying look even though nobody thinks your little computer company is related to us a premium car company you're ruining the word Mercedes or you're diluting it you're devaluing that term and so we're suing you for trademark dilution and they Mercedes could sue the Mercedes computer company and claim that Mercedes as it relates to computers is diluting the Mercedes car company brand and they must immediately stop or the computer company must stop using that so the analysis is very similar is it confusingly similar but we have to ask two questions first if it's not so similar the public thinks it's the same company is it so similar that it's somehow diluting or harming the reputation and that the brand and the intellectual property rights of a company that has a registered trademark or has trademark rights so back to the question can you use a mark for your trademark if somebody is already using it for a service or they have a service mark yes you can as long as it's not confusingly similar and it's it's not harming their brand they don't have some big brand that would be big harmed by that no you can't if it is confusingly similar now you might say how do I know if it's confusingly similar and admittedly all the experts will agree there's ambiguity in the law and and that's the nature of this area of law there is no perfect way to have a bright-line answer and go oh yeah that that would that's confusing the similar or that's not in these shades of gray so who decides you might be wondering the finder effect in other words if there's a lawsuit between Mercedes car company and Mercedes computer company and it goes before a judge the judge decides the judge would be sitting as the finder of fact the judge would decide is this confusingly similar now if there's a jury that the jury is the finder effect the jury would decide are the two marks confusingly similar this is a pretty high level if you're interested in more information you can see the link in the description below to my website at aaron hall calm if you'd like more educational videos like this you can subscribe to this channel and please see the disclaimer below I highlight these issues as general education not as a substitute for getting legal advice so it is important to talk to an attorney in your jurisdiction if you have actual legal issues that you're dealing with thanks for joining me here today I'm Aaron Hall I look forward to seeing you on the next video
Thanks for your comment Maryjane Tetley, have a nice day.
- Elizabet Heney, Staff Member
hi everybody this is trademark attorney Josh gurbin welcome to episode 15 of ask a trademark attorney in today's episode the question we're going to answer is what is the difference between a trademark and a service mark the answer is they're pretty much the same thing matter of fact most people always use the word trademark even when referring to service marks and that's really okay there's not a lot wrong with doing so but it's important to know the technical difference so a trademark typically refers to a mark that is for goods so think of a mark that represents shoes clothing sunglasses anything that's a product on the other hand a service mark represents a mark that is for services so think of the name of our restaurant the name of a marketing or advertising agency even the name of a law firm when it's a service being offered and you're protecting the mark or the name of a service then that would be a service mark so the main difference and the reason that people sometimes ask the question about what is the difference between a trademark and a service mark is that before your trademark registers and before you can use that circle are next to your name you can use either the little capital letters TM or SM next to your name and a lot of people just use the TM like I was telling you it's kind of a commonly used thing even for service marks it's really okay but if you want to be technically correct you would use a TM next to your name prior to your trademark being registered if you're selling a product and you would use an SM next to your name prior to your trademark being registered if you're offering a service then once the trademark gets registered everybody just uses the circle dollar so it all ends up at the same place at the end of the day I hope you found this helpful if any further questions please feel free to get in touch with us you can go to gourbin law.com just click on the contact tab you can get right in touch with one of our attorneys thank you so much I'll talk to you next time you
Thanks acidulis7 your participation is very much appreciated
- Elizabet Heney
About the author
I've studied information science at Rosalind Franklin University of Medicine and Science in North Chicago and I am an expert in cognitive archaeology. I usually feel amused. My previous job was crane operator I held this position for 22 years, I love talking about hula hooping and triathlons. Huge fan of Biggie Smalls I practice beach volleyball and collect classic cars.
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