Help! Do I Need a Trademark [or] Service Mark [or] Wordmark?

Help! Do I Need a Trademark [or] Service Mark [or] Wordmark? by Pat Werschulz

Trademark law is complicated. I hope to help educate and simplify very dense explanations through my blog articles to clients, colleagues, and the public. In a recent conversation, I was asked: 

“If someone owns a “service mark” on a particular phrase, can someone else own the “word mark” on that same phrase, too? For example, a branding phrase or slogan is registered as a service mark already, but if someone else wanted to use it for entirely different purposes, could it be registered as a word mark by someone else?” 

First, let’s clear up some confusion. 

  • A service mark, a type of trademark for services, can be a word mark (just words), a design mark (logo), or a combination, etc. It can be a sign, symbol, or device that tells the consumer the source of the service. 
  • Generally, trademarks are a sign, symbol, or a device that tells the consumer the source of goods or service. 

When a service such as UPS or Federal Express registers a trademark for delivery services, the trademark may be called a trademark or a service mark. Either is correct. 

If a service has a trademark that is not federally registered, it can use “TM” or “SM” as a superscript. For example, UPS has registered the color brown, Pullman Brown to be exact, with USPTO, therefore you can call it a trademark or a service mark. 

Whether you refer to it as one or the other—trademark or service mark—has no legal connotation. 

Now, if you are selling goods, say cookies, OREO® is a trademark, because it is something in “trade” and to call it a service mark for the cookie would be wrong, but there is no legal consequence. 

Now let’s drill down. There are 45 international classes of goods and services that USPTO has adopted. Thirty-four (34) of these are for various products (goods) and 11 of these are for services. Anything in these 11 classes can be said to have service marks. UPS and Federal Express have registration in class 39 (among others) for delivery services. 

Generally, once a trademark is registered in a class, no one else can use it in the same class—unless you can show there is no likelihood of confusion

There are three hard and fast rules in trademark law: 

  1. your trademark cannot confuse consumers with someone else’s,
  2. you must use the trademark to provide a service or offer goods for sale, and
  3. the senior user gets the rights in the territory. 

It is pretty clear that you cannot use a trademark that is confusing with one that is already being used in the same class. 

Can you use the trademark in a different class? It depends.

Even if the goods are in different classes but closely related, you cannot use someone else’s trademark. For example, you cannot use a brand name for a beer (class 32) that someone is using for wine (class 33). 

Can you use a trademark for goods that someone is using for a service or vice versa? It depends.

If the service is closely related to the goods, then probably not. For example, if you are in the service of repairing computers, you cannot use MACBOOK Computer Repairs as the name of your company because MACBOOK® is a brand of computers made by APPLE® and you are not part of APPLE®. It has to do with confusion. 

Contact a qualified trademark attorney for assistance with legally protecting your brand or product. 

Patricia Werschulz

Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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