I get questions like this: “I know “FedEx” is a registered service mark of a great company that provides delivery services, alright, but I want to use that name on t-shirts – they aren’t a t-shirt company! – and sell them at the fundraiser. That’s okay, right?” Until recently, I might have said yes, depending….
Generally, a trademark serves to identify and distinguish the source and quality of a tangible product, while a service mark functions to identify and distinguish the source and quality of an intangible service. In some jurisdictions (including the Second Circuit), failure to register a service mark also in goods may preclude bringing a successful infringement claim for use of the mark on goods.
An October 2017 ruling from a three-judge panel of the Eleventh Circuit Court of Appeals (which covers Alabama, Florida and Georgia) settled the question, at least for now: the holder of a federally-registered service mark need not register that mark for goods — or provide evidence of prior use of that mark on goods — in order to establish the unrestricted validity and scope of the service mark, or to protect against another’s allegedly infringing use of that mark on goods. See, Savannah College of Art and Design, Inc. [“SCAD”] vs. Sportswear, Inc., d/b/a Prep Sportswear.
You got that?! Wow.
Here’s what happened: Continue reading