The recognition of service marks as protectable marks-Indian Law & U.S Experience

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Service marks are a type of trademark. In other words, they are trademarks used to market services instead of products or goods. Section 45 of the Trademark Act, 15 U.S.C. §1127 defines a service mark as any word, name, symbol, device or any combination thereof used to indicate the source of the services and to identify and distinguish the services of one party or entity from the services of others. The following criteria has been established to determine what a proper service pursuant to the Trademark Act is:

(1) A service must be performed to the order of or for the benefit of, someone other than the applicant;

(2) A service must be a real activity; and

(3) 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.

The Service Marks are the distinguishing and distinct marks that are used exclusively by service providers and all companies offering diverse services to public in general, for doing business in their respective fields prominently. These service marks give a distinguished brad image and reputation to their services, at regional, provincial, national, or international market. Some examples of such services are - advertising, catering and hospitality, telecommunication, scientific and technological services, education and training, insurance services, business administration and management services, financial services, medical services, etc. These service marks are categorized under the trademark classes starting from Class 35 to Class 45. Our discerning and innovative law firm extends all-round services for service mark registration, in India, and countries all around the world, at national and international levels. Exclusive information about service mark registration India, is offered in the section below separately. At international level, we support service mark registration under the globally recognized trademark regulations nurtured by the TRIPS Agreement, Madrid Protocol, Berne and Paris Convention, and the European Community Trademark (CTM).

Introduction

The service marks are used by the company which provide various kinds of consumer base services to the public at large .If a company is promoting the sale of its own goods, this would not qualify as a service. However, if a company such as an advertising agency promotes the goods of its clients, this would be considered a service under the Trademark Act. The central question is who primarily benefits from the activity for which registration is sought. In connection withthe second factor, a system, process, idea, or method is not a service. This means that the mark cannot be used only as a name of a system, process, idea, or method. Lastly, with respect to the third factor, the activity must be one that is central or primary to the business. For example, selling food products at a supermarket is a service, but bagging groceries for customers at a supermarket is not sufficiently distinct from the primary activity and is merely ancillary to the primary service.

Not every term or symbol used in the advertising of services can be registered as a service mark. If a proposed mark only identifies a company name or a trade name, it will not function as a trademark or service mark. It may be clear that the applicant is rendering an appropriate service, but the record of the trademark prosecution must also show that the applicant’s mark is identifying and distinguishing the source of the services. For more on this general principal, see In re Advertising & Marketing Development, Inc. 821 F.2d 614, 2 U.S.P.Q.2d 2010 (Fed. Cir. 1987). A term, symbol, or designation must be able to function as a trademark so consumers will perceive it as identifying the source of the services and not merely identifying or conveying information about the services. In other words, a term that is used only to identify a device, instrument, product sold or used in the performance of a service does not function as a trademark or service mark. An example of this principal is found in In re Moody’s Investors Service Inc., 13 U.S.P.Q.2d 2043, 1989 WL 274418 (TTAB 1989), where it was held that the term “Aaa” as used on the specimen, identified the applicant’s rating instead of its rating service. Another example is the mark WE MAKE IT, YOU BAKE IT, which was found not to function as a service mark to identify grocery store services and to only identify pizza sold at the store, See In re Niagara Frontier Services, Inc., 221 U.S.P.Q.2d 284, 1983 WL 51843 (TTAB 1983). A term that only identifies a process, style, method, or system used in rendering services is not registrable as a service mark, unless it is also used to identify the source of the services. For additional information on this topic see the Trademark Manual Of Examining Procedure §1301.02(a). A trademark application may be refused if the Examining Attorney determines based on the specimen (the example of use of the trademark in commerce) submitted that the proposed mark fails to function as a trademark. A service mark specimen needs to show the mark as actually used in the advertising or sale of the services. The example of use must show an association between the trademark and the services. The Examining Attorney will consider any other evidence available in the record to determine if the specimen is acceptable. Submitting a proper specimen is critical to obtaining federal trademark registration. If you or your organization is considering filing for a service mark with the United States Patent and Trademark Office,

History

In trademark treatises it is usually reported that blacksmiths who made swords in the Roman Empire are thought of as being the first users of trademarks. Other notable trademarks that have been used for a long time include Löwenbräu, which claims use of its lion mark since 1383.The first trademark legislation was passed by the Parliament of England under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold.

The first modern trademark laws emerged in the late 19th century. In France the first comprehensive trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark Act". In Britain, the Merchandise Marks Act 1862 made it a criminal offense to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. In 1875, the Trade Marks Registration Act was passed which allowed formal registration of trade marks at the UK Patent Office for the first time. Registration was considered to comprise prima facie evidence of ownership of a trade mark and registration of marks began on 1 January 1876. The 1875 Act defined a registered trade mark as 'a device, or mark, or name of an individual or firm printed in some particular and distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'.

In the United States, Congress first attempted to establish a federal trademark regime in 1870. This statute purported to be an exercise of Congress' Copyright Clause powers. However, the Supreme Court struck down the 1870 statute in the Trade-Mark Cases later on in the decade. In 1881, Congress passed a new trademark act, this time pursuant to its Commerce Clause powers. Congress revised the Trademark Act in 1905. The Lanham Act of 1946 updated the law and has served, with several amendments, as the primary federal law on trademarks. The Trade Marks Act 1938 in the United Kingdom set up the first registration system based on the “intent-to-use” principle. The Act also established an application publishing procedure and expanded the rights of the trademark holder to include the barring of trademark use even in cases where confusion remained unlikely. This Act served as a model for similar legislation elsewhere.

Common Law (Global Platform)

The Madrid system (officially the Madrid system for the international registration of marks) is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. Its legal basis is the multilateral treaty Madrid Agreement Concerning the International Registration of Marks of 1981, as well as the Protocol Relating to the Madrid Agreement (1989).The Madrid system provides a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create a unified registration, as in the case of the European Union trade mark system; rather, it creates a bundle of national rights through an international registration able to be administered centrally. Madrid provides a mechanism for obtaining trademark protection in many countries around the world which is more effective than seeking protection separately in each individual country or jurisdiction of interest. The Madrid Protocol system provides for the international registration of trade marks by way of one application that can cover more than one country. The opportunity of having a single registration to cover a wide range of countries gives advantages, both in terms of portfolio management and cost savings, as opposed to a portfolio of independent national registrations. Madrid now permits the filing, registration and maintenance of trade mark rights in more than one jurisdiction, provided that the target jurisdiction is a party to the system. The Madrid system is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. There are 90 countries part of the Madrid System.

ELEMENTS

 Trademark Service in U.S

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos. The term "trademark" is often used in a general sense to refer to both trademarks and service marks. Unlike patents and copyrights, trademarks do not expire after a set term of years. Trademark rights come from actual “use” (see below). Therefore, a trademark can last forever - so long as you continue to use the mark in commerce to indicate the source of goods and services. A trademark registration can also last forever - so long as you file specific documents and pay fees at regular intervals. Must all trademarks be registered? No, registration is not mandatory. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration. However, federal registration of a trademark with the USPTO has several advantages, including a notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. For more information about “common law” trademark rights and the advantages of federal registration see the Basic Facts About Trademarks brochure.

Each time you use your mark, it is best to use a designation with it. If registered with the USPTO, use the ® symbol after your mark. If not yet registered, you may use TM for goods or SM for services, to indicate that you have adopted this as a “common law” trademark or service mark. Use of a business name does not necessarily qualify as trademark use, though other use of a business name as the source of goods or services may qualify it as both a business name and a trademark. Many states and local jurisdictions register business names, either as part of obtaining a certificate to do business or as an assumed name filing. For example, in a state where you will be doing business, you might file documents (typically with a state corporation commission or state division of corporations) to form a business entity, such as a corporation or limited liability company. You would select a name for your entity, for example, XYZ, Inc. If no other company has already applied for that exact name in that state and you comply with all other requirements, the state likely would issue you a certificate and authorize you to do business under that name. However, a state’s authorization to form a business with a particular name does not also give you trademark rights and other parties could later try to prevent your use of the business name if they believe a likelihood of confusion exists with their trademarks. For more information on when a designation may function as both a business name (“trade name”) and a trademark or service mark

TRADE MARKS AND SERVICE MARKS IN INDIA

Trade Mark: A trade mark can be a word, logo, symbol, label, shape, smell, combination of colours etc. and acts as a source indicator and refers to the origin of goods or services. Trade mark can either be a word mark or a device mark. A word mark essentially denotes words/letters in a non-stylised manner. On the other hand device mark comprises artistic features or unique colour combination. Service Mark: A trademark pertaining to services is known as service mark.

Trade Mark Classification: The Trade Mark Registry, for the purpose of registration has classified goods and services under 45 classes in accordance with the Nice Classification. Class 1 to 34 refers to goods and class 35 to 45 refers to services. Trade Mark Search: It is advisable to conduct a pre-registration search at the Trade Mark Registry to find out about the pre existence of deceptively similar and confusing marks. The search is conducted so that the Applicant is aware of the probable objections or oppositions that may be initiated against the prospective trademark. Trade Mark Filing: An application is to be filed under the Trademarks Act and the Trademarks Rules. The following documents are required for the filing of an Application:

Application for Registration- Full description of the Applicants to be provided.

User detail – The user date should denote the month and date of first use in India. Conversely it can be on “proposed to be used” basis.

Priority Claim – Priority claim in relation to foreign applications is to be filed within 6 months from the date of filing of the trade mark in the parent country.

In India, trademarks and service marks are registered under the federal registration system, with support of five regional trademarks offices, which are well-established in Mumbai, New Delhi, Kolkata, Ahmedabad, and Chennai. These zonal trademark registry offices register, regulate, and protect trademarks and service marks as per the rules, regulations, and provisions given in the Trade Marks Act of 1999, and the Trade Marks Rules of 2002, taking into accounts all amendments made to these so far. Flawless registration of any newly created trademark or service mark with any of these zonal trademarks offices, gives complete protection to all the trademark rights of the trademark owner in places all across India. Here, it may also be added that, proper and perfect registration of a trademark with the immediately concerned national trademark office, forms the primary basis for all international trademark registrations worldwide. Noteworthy here also is the fact that, as India is a respected member of most of the international conventions and treaties related with trademarks in the world over [mentioned in the last section], the trademark classification list followed in India [given in the Fourth Schedule of the Trade Marks Rules of 2002] also contains 45 classes, out of which eleven are associated with services in diverse sectors, and the remaining 34 are allotted to goods and products of various economic fields.

For getting one's newly-invented trademark registered in India, application is to be sent to the immediately concerned zonal trademarks office, based on the location of the applicant company. The major and main tasks or activities connected with registration of a trademark [or service mark] are --- Creation of Trademark; Trademark Search and Infringement Analysis; Filing of Trademark Application [Form TM-1]; Official Examination and Verification; and Trademark Prosecution for registration. Generally, any divisional trademark registry office of India completes the process of registration well within one year. However, based on the condition and status of the originality and uniqueness of the forwarded trademark, and situations of opposition or infringement allegations by other companies, the process of registration of the trademark may take longer time. The governmentally prescribed fee for getting a trademark registered in India is INR-3,500/- at present [this fee does not cover the consultation fee, lawyer's charge for preparing and filing the application for registration, fee for tackling opposition cases, and the service charge for trademark prosecution]. Such initial registration of a trademark stands valid and effective for a period of ten years, counted from the date of its registration. The application for Trademark Renewal is filed well within the expiration of this period in Form TM-12 with the concerned regional trademark office, together with a prescribed renewal fee of INR-5,000/-, for securing trademark rights for next ten years.

The new Indian Trade Marks of 1999, and the Trade Marks Rules of 2002, now include provisions for the following tasks and facilities: The Classes for Service Marks have been increased to eleven classes, ranging from class 35 to class 45, as per an amendment in the Trade Marks Rules of 2002, made in year 2010.

Multi-Class Application --- A Single application can now be filed for registering trademarks belonging to different classes. Registration of the Collective Marks is possible The Shape of Goods, Designing of Packaging, and a certain unique Combination of Colors, have been included in the purview of definition of a trademark, under the Section 2(1) (zb) of the Trade Marks Act of 1999. The time-period for the validation of the initial registration of a trademark or service mark, has been extended to ten years from seven years.

Famous Cases

1. 3M v. 3N

A lawsuit by The 3M company against Changzhou Huawei Advanced Material Co Ltd for the use of 3N resulted in a win for 3M and "significant damages" for 3M. It was ultimately ruled that, despite some dissimilarities in products and pricing, the notoriety of the 3M mark and the fact that 3N had managed to acquire clients and market share by use of the similar mark, constituted infringement. One analysis notes this can be indicative of trademark case results in Chinese courts, where these matters are taken "seriously." While this particular case was complex and confusing, 3N definitely veered into dangerous zones by emulating the trademarked named of such a well-known brand. It was ultimately held that the "3M" trademark had a high distinctiveness and reputation.

2. US: D2 Holdings v. House of Cards

Massachusetts-based D2 holdings recently filed a lawsuit against MRC II Distribution company, the brand behind the Netflix hit political thriller House of Cards. D2 has held the trademark for House of Cards for "entertainment goods and services" since 2009, which has been licensed to a gaming radio show distributed by Granary Media. MRC reportedly filed for a trademark for House of Cards multiple times for the show which premiered in 2013 and has now been renewed for a fifth season.

D2's lawsuit asks for multiple types of infringement to cease, including fan merchandise and gaming machines. It's likely that MRC was aware that D2 held the trademark, based on their repeated failure to obtain a trademark through the U.S. Patent and Trademark Office. The failure could be in the distribution company's decision to change the show's title, based on their inability to obtain a trademark.

3. US: Academy Awards v. GoDaddy

TheAcademy Awards and domain retailer GoDaddy recently concluded a five-year legal battle over "cybersquatting" issues. Initially filed in 2010, the Academy alleged that GoDaddy's decision to allow customers to buy "confusingly" similar domain names such as 2011Oscars.com, allowed profit from individuals who wanted to "park" on these domains and collect revenue. Initially, the Academy managed to demonstrate in court that 57 domains were sold by GoDaddy with the potential for confusion. Ultimately, the judge ruled that GoDaddy did not "possess the requisite bad faith intent to profit" from their sales. While this legal battle was undoubtedly expensive, it may be considered a landmark ruling in the cybersquatting space. Similarly frustrating lawsuits can be avoided when, like in GoDaddy's case, you may not be able to reasonably expect a third-party to "police" your brand trademark. Verdict in Favour of GoDaddy.

4. US: Adidas v. Forever21

Adidas very recently filed a lawsuit against clothing retailer Forever21 alleging that the retailer's products, which contain a "three stripe" design, constitute "counterfeit products." Adidas reports they have "invested millions" to build and protect the three-stripe design as a trademark component of their brand and own "numerous" patents. While representatives for Adidas and Forever21 have not released further comments in regards to the lawsuit since initial statements, it remains to be seen how the courts will respond to the lawsuit. Given the similarity of Forever21 and Adidas' products and distribution channels, Forever21 may have been able to avoid this lawsuit by evaluating their recent designs against Adidas' products and trademarks. (Verdict Pending)

5. South Korea: Louis Vuitton v. Louis VuitonDak

In one of the more shocking examples of international trademark infringement, a South Korean fried chicken restaurant recently lost a trademark battle with designer Louis Vuitton. The court ruled in the designer's favor after determining that the restaurant's name of Louis VuitonDak was too similar to Louis Vuitton. In addition to the name infringement, the restaurant's logo and packaging closely mirrored the designer's iconic imagery. The restaurant was ultimately hit with another 14.5 million fine for non-compliance, after changing their name immediately after the first ruling to LOUISVUI TONDAK. Many brands can avoid similarly expensive legal battles by avoiding mirroring their brand closely after another, even if the products and purchase channels have nothing in common.

REFERENCES

http://www.advocatekhoj.com/library/lawareas/servicemark/service.php?Title=Service%20Marks

https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright

https://www.nist.gov/sites/default/files/documents/mep/scottslides.pdf

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