Affixing the Service Mark: Reconsidering the Rise of an Oxymoron

Abstract

This article explores the deep and to date unacknowledged contradictions underlying service marks (trademarks used in connection with services rather than goods). Namely, the Lanham Act statutorily mandates treating trademarks the “same” as service marks; yet it simultaneously loosens requirements for proving service mark “use” by allowing mere advertising to substantiate service mark rights. This shortcut is not permitted with trademarks as such. As a result of this imbalance, sophisticated trademark practitioners may now quickly secure vast service mark rights for clients in ways not available for trademarks.

To better understand current service mark practice, and the above contradictions, the article traces the historic origins of service marks, with a particular focus on trademark law’s initial reluctance to treat service marks as technical trademarks because they were not “affixed” to goods. It then explores the Lanham Act debates of the 1920’s and 1930’s, where the service mark was effectively formulated, finding fundamental uncertainties among the bar, commentators and legislators as to how to treat this new legal creation. It next shows how early misgivings by the courts and USPTO gave way to a misleading “distinction without a difference” approach characterizing contemporary service mark practice. The current approach, it suggests, has led to an explosion in service mark claims over the past decades, and perhaps made it too easy for brand owners to attain service mark rights with merely fleeting or peripheral services. The article concludes by offering two potential “fixes” designed to tighten the connection between service marks and those services with which they are being used.

Keywords: trademarks, service marks, Lanham Act, affixation