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Service Marked instead of Trademarked

Posted by . updated on 11/11/2009
Hello, I was in process of trying to register a business name that I am starting and somehow I just noticed it has me under "Service Mark" rather than a "Trademark". I am worried if that will become an issue later? I will be a retail florist. It is now filed under 1B so should I have it changed right now? If so, what is the process of doing this? Or should I wait and see if I do get it approved and when I later start my business, and change it into a 1A basis, I can request a change from a "Service Mark" into a "Trademark"? Please advice. Thanks
Answers (11)
 
Lyza
This is straight off the USPTO website, http://www.uspto.gov/main/faq/index.html,

Quote
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.  In short, a trademark is a brand name.

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.

The rest of your question will undoubtedly be answered by an attorney, but I would advise you to seek the help of an attorney as you obviously do not have a working understanding of how to prosecute a trademark application.  If an office action is issued, or as another example, when the Notice of Allowance is issued, you won't know how to respond.  Thanks.
 
 
MohaimenK
Well, I did file one but it had some issues in infrigment. I spoke to a lawyer and was told there's nothing that can be done w/ that name. I then learned how to properly search for the name to make sure it might be something I will be able to get. But 1st time, I did the options that charges $325 but this time I used the option which charges $275. I was told the difference is they have more things to fill out but this took half the time. Anyway, I contacted some lawyers here and they pretty much tried to scam me and wanted $800 for it. I'll have to find a reliable person.
 
 
Lyza
An attorney is not "scamming" you when they ask to be paid for their time to review your work and give you educated legal advice.  Since you obviously don't understand the process, you may have wasted money on a filing that will not result in a correctly protected mark.  A qualified authority is "reliable."  This forum is not.  Good luck on your own.
 
 
JSonnabend
MohaimenK, the only thing that is clear from your posts is that you are entirely confused about the process.  Your statements regarding 1(a) vs. 1(b) and service mark vs. trademark are meaningless.  If you've already been working with a lawyer, then the only thing I can say is that the lawyer hasn't done a very good job educating you about the process.

I suggest you find a lawyer you can work with effectively and who you can afford, and follow that attorney's advice.

- Jeff
 
 
MohaimenK
Gee thanks! I didn't know I had no idea about it?? Obviously the reason I came here for suggessions!

As for lawyer scamming me, LOL ur kidding right, when you say "lawyers don't scam u"?!?

Long story short, called a few local lawyers, 1 wanted $800 for my service which they said, "we have a case, 100%" and when I asked "ok, so you guarantee your work?" he said "uhh...well no can't gurantee it, sorry" ok, hung up on him. 2nd person wanted $300/hr to just look at whats going on w/ it. Called 3rd one, she was straight forward, asked me for my serial number, looked at it and said "sorry, this is something that just can't be won, the infrigment is too close and we just wouldn't win, u'd just be wasting money" Boy, wish I had kept her number few months back. So yeah, when u say lawyers don't scam u, think again, unless you do the same? As far as 1(a) and 1(b), that's not what my question was about at all....But anyway, I came for suggessions, thought someone might have gone through what I have. But obviously u didn't give me anything new, more than something I could have told myself....which was to go look for a lawyer who can help. But thanks for the suggessions.
 
 
JSonnabend
MohaimanK, you are clearly a more sophisticated business person than Lyza or I.  Thank you for sharing your knowledge with us.  Good luck to you in your business endeavors.  I'm sure with your acumen, you will go far.

- Jeff
 
 
MohaimenK
Thanks. I hope you realize, being the type of business man has NOTHING to do with understanding trademark laws, reason why smart business owners have atty when they start....let me not go into more details on this.

Anyway, it was simply because I put the wrong class. Which now I know what to do. Funny it was USPTO that provided me w/ this free information w/out hiring an atty. Then I realized, this is a forum for ATTYs so getting free advice....HAHAHA is probably WAY OUT OF THE QUESTION.

I searched for trademark forums, this forum came up, thought this is where I could get some help.....well......anyway, thanks JS, hopefully I will become a more sophisticated businessman than u and Lyza and hopefully I'll be able to help a few along my way and share my knowledge w/ those rather than to tell them they clearly have no idea what they're doing.
 
 
MYK
MohaimenK, it's not that we object to giving out free advice (subject to the inherent limitations of doing it on a forum, where only general advice can be given), it's that you seem to imply that someone charging you a fee for their services is "scam[ming]" you.

Once you've corrected the class, perhaps you'll be told of more problems;  if not, congratulations on having saved some money.  If so, perhaps you'll end up going through years of trying to figure it all out yourself, until finally you decide it would have been worth hiring someone at the start.

By the bye, the USPTO didn't give you the information for free;  presumably you had to pay them a fee to file your application, otherwise they never would have sent you that response.
 
 
MohaimenK
Actually....all I had to do was change it through preliminary amendment. Figured I'd try another forum...

Well, didn't cost me for that answer. My mark is now back to where I needed it. Thanks again for all the help guys.  Lips Roll

Again, he was scamming me, not because he was charging me for his advice but he was TRYING to get money from me, KNOWING there was eventually a dead-end. Now if you're telling me "there's no way he could have known that" then he really needs a new career.

 
 
JSonnabend
Kazi -

I've now reviewed your two pending applications, and your amendment from class 35 to class 31 was one of the smallest issues that could possibly be raised.  The examiner would even have made the change by examiner's amendment down the road.  There wasn't any "dead end" as you say (and the whole 1(b) issue you raised is nonsense -- that's still your filing basis).

If you look at your other pending application, the one with the 2(d) rejection, you'll see that examiners will raise classification problems in an office action and will allow you to correct the problem without any penalty.

In all, I can't quite figure out what you're complaining about here other than (a) attorneys charge for their services, or (b) some attorneys charge a lot for their services.

- Jeff
 

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