Brand owners seeking federal protection for their service marks from the U.S. Patent and Trademark Office ("USPTO") often struggle with how to define their services in the application.
While the Trademark Act defines "goods" straightforwardly as "products," it does not define what constitutes a "service." Products are easily understood because they are visible and generally tangible. On the other hand, the Trademark Act resorts to providing a list of criteria for establishing whether an activity is a service:
- must be a real activity;
- must be performed to the order of, or for the benefit of, someone other than the applicant; and
- the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service.
In general, an applicant will not succeed in registering a service mark that covers a process, system, method, and/or an ancillary service that normally is provided to and expected by customers of the primary service. The USPTO, upon reviewing an identification of services that may be ancillary to the primary service, will look to the mark-services association in the specimens and/or seek additional information from an applicant to determine if the services described constitute activities for the benefit of someone rather than the brand owner, and whether the services are ordinarily expected by and routinely offered to customers as part of the promotion and operation of the core services.
For example, dinner at a restaurant may begin with a call to a restaurant representative who makes the reservation. From arriving at a restaurant to finishing dinner, a customer receives the benefits of the talents and services of the host/hostess, the wait staff, the chef, the bus person, a sommelier, and an entire cast of supporting players in the kitchen. Each and every employee contributes to the total "restaurant" experience, the primary service provided. All of these services are ancillary to the restaurant services because they are ordinarily and routinely provided activities necessary to the organized and smooth operation of the service. Thus, none of these additional services could be covered by a trademark registration for the restaurant services itself.
Accordingly, when considering seeking service marks and/or brand protection, applicants must consider whether the activities described in the identification of services are separable from the business's main purpose. If the business's goal is to manufacturer and sell a product, advertising the product to engender sales would not be a separable activity as contemplated by the Trademark Act. Similarly, if the business is primarily in the hotel industry, concierge services would not be a separable service when the concierge is an employee of the hotel and the services are meant to benefit hotel guests only.
Although it can be tempting to adopt a "kitchen sink" approach to trademark filings, a strategic approach to identifying the covered goods/services can help result in a trademark registration that is both enforceable and can withstand fraud challenges well into the future.