A service mark identifies and distinguishes the source of a service, while a trademark identifies and distinguishes the source of a product (tangible good). Both are governed by the Lanham Act (15 U.S.C. §1051 et seq.) and registered through the United States Patent and Trademark Office (USPTO). The primary legal difference is what the mark applies to: a trademark protects goods such as clothing, electronics, or beverages, while a service mark protects services such as consulting, streaming, shipping, or legal representation. Both marks receive identical legal protection under federal law, including the exclusive right to use the mark in interstate commerce, the right to sue for infringement in federal court, and access to the ® registration symbol upon approval. An intellectual property attorney helps businesses determine the correct mark type and navigate the USPTO registration process.
| Feature | Trademark (™ / ®) | Service Mark (℠ / ®) |
| What It Protects | Goods (tangible products) | Services (intangible offerings) |
| Governing Federal Law | Lanham Act, 15 U.S.C. §1051 et seq. | Lanham Act, 15 U.S.C. §1051 et seq. (same statute) |
| Registration Agency | U.S. Patent and Trademark Office (USPTO) | U.S. Patent and Trademark Office (USPTO) |
| Unregistered Symbol | ™ (TM) | ℠ (SM) |
| Registered Symbol | ® (same for both upon registration) | ® (same for both upon registration) |
| Filing Basis | Use in commerce (1(a)) or intent to use (1(b)) | Use in commerce (1(a)) or intent to use (1(b)) |
| Duration | Indefinite, with renewal every 10 years, and continued use | Indefinite, with renewal every 10 years, and continued use |
| Common Examples | Nike (footwear), Coca-Cola (beverages), Apple (electronics) | FedEx (shipping), Hilton (hospitality), Spotify (streaming) |
| Infringement Standard | Likelihood of confusion test | Likelihood of confusion test (identical standard) |
What Is a Trademark Under the Lanham Act?
A trademark is any word, name, symbol, device, or combination thereof used by a person to identify and distinguish goods from those manufactured or sold by others and to indicate the source of the goods. This definition is established in Section 45 of the Lanham Act (15 U.S.C. §1127). Trademarks apply specifically to tangible products sold in commerce. Examples include brand names (Nike, Apple, Coca-Cola), logos (the Nike Swoosh, the Apple silhouette), slogans (“Just Do It”), and product packaging elements that function as trade dress. A trademark must be distinctive to receive legal protection.
The USPTO evaluates distinctiveness on a spectrum from generic (unprotectable) to fanciful (strongest protection), with intermediate categories: descriptive (protectable only with acquired secondary meaning), suggestive (inherently distinctive), and arbitrary (inherently distinctive). Registration on the Principal Register of the USPTO provides the trademark owner with a presumption of nationwide validity, constructive notice to all parties of the registrant’s claim, the right to use the ® symbol, and the ability to record the registration with U.S. Customs and Border Protection (CBP) to block importation of infringing goods.
What Is a Service Mark and How Does It Differ from a Trademark?
A service mark is any word, name, symbol, device, or combination thereof used to identify and distinguish the services of one provider from the services of others and to indicate the source of the services. The Lanham Act defines a service mark in Section 45 (15 U.S.C. §1127) using language parallel to the trademark definition, with the sole distinction being that a service mark applies to services rather than goods. Examples of service marks include FedEx (package delivery and logistics), Hilton (hotel and hospitality services), Spotify (music streaming), Uber (transportation services), and Deloitte (consulting and professional services).
The legal difference is functional: if the mark identifies a tangible product the customer takes away, it is a trademark; if the mark identifies an activity performed for the benefit of others, it is a service mark. Both receive identical legal protection under the Lanham Act, are registered through the same USPTO application process, and are enforced under the same likelihood-of-confusion standard in federal court. In the entertainment and media industry, many companies hold both trademarks (for physical merchandise and media products) and service marks (for streaming, performance, and production services) under the same brand name.
How to Register a Service Mark or Trademark with the USPTO
The registration process for both trademarks and service marks follows the same procedure through the USPTO’s Trademark Electronic Application System (TEAS). The applicant files either a use-based application under Section 1(a) of the Lanham Act (if the mark is already in use in interstate commerce) or an intent to use application under Section 1(b) (if the applicant has a bona fide intention to use the mark in the future). The application must include a clear representation of the mark, identification of the goods or services associated with the mark classified according to the Nice Classification system (an international classification of 45 classes, with Classes 1 through 34 covering goods and Classes 35 through 45 covering services), a specimen showing the mark as used in commerce, and payment of the filing fee ($250 for a TEAS Plus application or $350 for a TEAS Standard application per class as of 2024).
After filing, a USPTO examining attorney reviews the application for compliance with statutory requirements and searches for conflicting marks. If approved, the mark is published in the Official Gazette for a 30-day opposition period during which third parties may challenge the registration before the Trademark Trial and Appeal Board (TTAB). An intellectual property attorney can conduct a comprehensive clearance search before filing to reduce the risk of office actions or oppositions.
Understanding the ™, ℠, and ® Symbols
The ™ (trademark) symbol indicates that the owner claims rights to a mark used in connection with goods, even if the mark has not been registered with the USPTO. The ℠ (service mark) symbol serves the same purpose for marks used in connection with services. Neither symbol requires federal registration. The ® (registered) symbol may only be used after the USPTO has issued a federal registration certificate. Using the ® symbol on an unregistered mark constitutes a false claim of federal registration. It can result in the loss of the right to recover profits and damages in an infringement action under 15 U.S.C. §1111. Once a service mark or trademark is registered on the Principal Register, the owner should use the ® symbol to provide constructive notice to potential infringers and strengthen enforcement rights.
Legal Protection and Infringement Enforcement
Both trademarks and service marks are enforced under the same federal infringement standard: the likelihood-of-confusion test. Courts evaluate multiple factors to determine whether a junior user’s mark is likely to cause consumer confusion as to the source of goods or services. The most widely used framework is the multifactor test established by the relevant circuit court, such as the Polaroid factors (Second Circuit), the Sleekcraft factors (Ninth Circuit), or the Digits of Confusion (Fifth Circuit, applicable in Texas). Key factors include the similarity of the marks in appearance, sound, and meaning; the relatedness of the goods or services; the strength of the senior mark; evidence of actual confusion; the junior user’s intent; and the marketing channels used.
Remedies for trademark or service mark infringement under the Lanham Act include injunctive relief (15 U.S.C. §1116), recovery of the infringer’s profits, actual damages, and costs (15 U.S.C. §1117), destruction of infringing materials (15 U.S.C. §1118), and, in exceptional cases, recovery of attorney’s fees. Willful use of a counterfeit mark can also trigger criminal penalties under 18 U.S.C. §2320. Federal registration is not required to bring an infringement claim, but it provides significant evidentiary and procedural advantages, including the presumption of validity and nationwide constructive notice.
Common Law Rights vs Federal Registration
Common law trademark and service mark rights arise automatically from the actual use of a mark in commerce, without any registration requirement. However, common law rights are limited to the geographic area where the mark is actually used and known. Federal registration on the USPTO Principal Register extends protection nationwide, provides constructive notice to all potential users nationwide, and creates a legal presumption of validity.
The registrant is the owner, enables recording with U.S. Customs and Border Protection to block counterfeit imports, and serves as a basis for filing trademark applications in foreign countries under the Paris Convention and Madrid Protocol. For businesses operating across state lines or planning to expand, federal registration provides substantially stronger protection than common law rights alone. This is particularly relevant for Austin- and Nashville-based businesses in the technology, entertainment, and media sectors that serve national and international markets.
Trademark and Service Mark Renewal and Maintenance Requirements
Federal trademark and service mark registrations can last indefinitely, but only if the owner complies with mandatory maintenance filings. Between the 5th and 6th year after registration, the owner must file a Section 8 Declaration of Continued Use (or Excusable Nonuse) demonstrating that the mark is still in use in commerce. Between the 9th and 10th year, and every 10 years thereafter, the owner must file a combined Section 8 Declaration and Section 9 Renewal Application with the required fee. Failure to file these maintenance documents on time results in cancellation of the registration. The owner may also file a Section 15 Declaration of Incontestability between the 5th and 6th year, which provides conclusive evidence of the registrant’s exclusive right to use the mark, significantly strengthening enforcement and making the registration immune to certain challenges.
Protect Your Brand with the Right Mark and Proper Registration
Whether your business offers products, services, or both, the right trademark or service mark strategy protects your brand identity, prevents consumer confusion, and builds long-term equity. Choosing the wrong classification, filing an incomplete application, or missing a maintenance deadline can weaken your rights or result in the forfeiture of your registration.
Schedule a consultation with The Adcox Firm today. Our intellectual property attorneys in Austin, Nashville, Midland, Round Rock, Franklin, Lubbock, and Odessa handle trademark and service mark clearance searches, USPTO registration, enforcement actions, opposition and cancellation proceedings, and licensing agreements for businesses across the technology, entertainment, energy, and corporate sectors.
Frequently Asked Questions
1. Is a service mark the same as a trademark legally?
A service mark and a trademark receive identical legal protection under the Lanham Act, but they apply to different categories. Trademarks protect goods, and service marks protect services. The registration process, fees, enforcement standards, renewal requirements, and available remedies are the same for both. The distinction is functional, not legal.
2. How do I register a service mark with the USPTO?
Register a service mark by filing an application through the USPTO’s TEAS system, selecting the appropriate service class under the Nice Classification (Classes 35 through 45), submitting a specimen showing the mark in use, and paying the filing fee ($250 for TEAS Plus or $350 for TEAS Standard per class). An examining attorney reviews the application before publication.
3. How long does a trademark or service mark registration last?
A trademark or service mark registration can last indefinitely if the owner files a Section 8 Declaration of Continued Use between years 5 and 6, and a combined Section 8 and Section 9 Renewal between years 9 and 10, then every 10 years thereafter. Failure to file these maintenance documents results in cancellation of the registration.
4. What is the likelihood of confusion test for trademark infringement?
The likelihood of confusion test is the legal standard courts use to determine trademark and service mark infringement. Courts evaluate factors including the similarity of the marks, relatedness of the goods or services, strength of the senior mark, evidence of actual confusion, and the junior user’s intent. In Texas, the Fifth Circuit applies the Digits of Confusion multifactor test.
5. Do I need federal registration, or are common law rights enough?
Common law rights provide protection only in the geographic area where the mark is actually used and known. Federal registration extends protection nationwide, provides constructive notice, creates a legal presumption of validity, enables U.S. Customs enforcement against counterfeit imports, and supports international filing. Businesses operating across state lines should pursue federal registration.
6. Can a business have both a trademark and a service mark?
Yes, many businesses hold both trademarks and service marks under the same brand name. A company selling physical products registers a trademark for those goods, and if it also offers services, it registers a service mark for those services. For example, a technology company may hold a trademark for its hardware products and a service mark for its cloud computing services.