This is actually a trick question – the answer is, “not much”. Generally, trademarks refer to source-identifying marks used in connection with goods (products) and service marks are used for the same purpose, but in connection with services. The associated rights – to be able to preclude others from using a confusingly similar mark in connection with similar goods or services – are the same.
But one important way in which they are different is the way in which an applicant for registration of a mark with the U.S. Patent & Trademark Office (“PTO”) demonstrates that it is using the mark in commerce. Whether an applicant applies for registration of a mark based on actual use in commerce (§ 1(a)) or based upon a bona fide intent to use the mark in commerce (“ITU” – § 1(b)), each applicant must at some point during the prosecution of its application submit an example (“Specimen”) of how the mark is used in commerce in connection with the specific goods or services. (For more about the trademark application process, see Common Questions: What’s Involved in Registering a U.S. Trademark.)
Acceptable Specimens for Trademarks
Simply put, if an applicant seeks to demonstrate use of its mark in connection with goods, it must show the mark as used in the process of selling or offering to sell those goods to the purchasing public. Examples of such use include:
- Affixing the mark to the goods themselves (such as by imprinting the mark on it to the product or applying a sticker with the mark printed onto the product);
- Affixing the mark to a label or tag attached to the goods;
- Printing the mark on the outside of shipping containers delivering the goods to the store;
- Displaying the mark prominently on product packaging that the ultimate purchaser sees;
- Displaying the mark prominently on point of sale displays (such as shelf talkers, dedicated shelving in the store, a special display unit in the grocery aisle, etc.); and
- Sometimes on websites, provided that the website has a point of sale system. (In other words, if an applicant relies on a page from a website to demonstrate use, that page must not only show the product and the mark but also give a purchaser the ability to order the product – it cannot be mere advertising.)
PTO Trademark Manual of Examining Procedure (TMEP) § 904.03. Not acceptable to demonstrate use of a trademark in connection with goods are items like drawings conceptualizing the goods, business stationery, business cards, blank invoices, advertising, price lists, and promotions conducted on social media. See the (TMEP) § 904.04 for more examples of unacceptable specimens. (If these types of items provide a point of sale system, they may be found to be acceptable.)
Acceptable Specimens for Service Marks
Similarly, if an applicant seeks to demonstrate use of its mark in connection with services, it is likely not in a position to simply affix the mark to the services, as one can do with goods. There is no product packaging that encases a service – as a result, other specimens will satisfy this requirement, including certain types of advertising of the services. Note that acceptable advertising must show the use of the mark in connection with the services and the mark must function as a service mark in that it connects the services to the source. In addition, the advertising cannot be merely a printer’s proof or a proposed design of the advertising – it must the final version as distributed into the marketplace.
In contrast to trademark specimens, “[l]etterhead stationery, business cards, or invoices bearing the mark may be accepted if they create an association between the mark and the services.” TMEP § 1301.04(h)(i). Pages from websites may also qualify as acceptable advertising provided that the specimen must demonstrate an association in the mind of the purchaser between the services and the source of the services.
For more examples of acceptable specimens to submit in connection with service mark applications, see TMEP § 1301.04 (Specimens of Use for Service Marks).
Regardless of which type of specimen an application calls for, an applicant should ensure that the mark as shown on the specimen matches both the mark itself and the drawing of the exact mark, as submitted with the application (the “drawing page”) as submitted with the initial application. (For more about drawing pages, see Common Questions: What’s Involved in Registering a U.S. Trademark.) As a result, be careful when submitting the initial application that you match the actual mark with what is shown on the drawing page – and that both match the way that the mark is actually used (or will be used) in interstate commerce. Drawing pages cannot be amended after the application has been filed, with limited exceptions.
Picking the right specimen to support an application is sometimes an art. Applicants who have questions or concerns about this process should consult with an experienced trademark attorney to help decide which specimens are the most appropriate to submit in support of their application(s).