1301.01(a)    Criteria for Determining What Constitutes a Service

The following criteria have evolved for determining what constitutes a service:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.   In re Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Res., Inc., 218 USPQ 829 (TTAB 1983) ; In re Landmark Commc'ns, Inc., 204 USPQ 692 (TTAB 1979) .

1301.01(a)(i)    Performance of a Real Activity

A service must be a real activity.  A mere idea or concept, e.g., an idea for an accounting organizational format or a recipe for a baked item, is not a service.  Similarly, a system, process, or method is not a service.   In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) ; In re Citibank, N.A., 225 USPQ 612 (TTAB 1985) ; In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979); In re McCormick & Co., 179 USPQ 317 (TTAB 1973).  See TMEP §1301.02(e) regarding marks that identify a system or process.

The commercial context must be considered in determining whether a real service is being performed.  For example, at one time the activities of grocery stores, department stores, and similar retail stores were not considered to be services.  However, it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitutes the performance of a service.

1301.01(a)(ii)    For the Benefit of Others

To be a service, an activity must be primarily for the benefit of someone other than the applicant.  While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.   In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970) ;  see TMEP §1301.01(b)(i).  Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.

The controlling question is who primarily benefits from the activity for which registration is sought.  If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal.  In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985).  On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit.   In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (finding that intranet website was used solely for internal purposes and that respondent was primary beneficiary); In re Alaska Nw. Publ'g Co., 212 USPQ 316, 317 (TTAB 1981) (stating that "[t]he that the activities and operations associated with the production, advertising or sale of the product may be indirectly beneficial to purchasers of the product is immaterial to the question of registrability of the mark as a service mark").

Performing research and development, or other routine or expected activities, in the production or sale of one’s own goods, and not for the benefit of others, are not services for purposes of service-mark registration. See In re Dr. Pepper Co., 836 F.2d at 509, 5 USPQ2d at 1208 ("[I]t has become a settled principle that the rendering of a service which is normally ‘expected or routine' in connection with the sale of one's own goods is not a registrable service whether denominated by the same or a different name from the trademark for its product. This interpretation is a refinement of the basic principle that the service for which registration is sought must be rendered to others."); In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1063 (TTAB 2016) (finding applicant’s provision of information regarding flowers and conducting promotional events to promote the sale of its flowers did not constitute a separately registrable service, but were merely incidental to the production or sale of the goods).

Collecting information for the purpose of publishing one’s own periodical is not a service because it is done primarily for the applicant’s benefit rather than for the benefit of others.   See TMEP §1301.01(b)(iii).

Offering shares of one’s own stock for investment is not a service because these are routine corporate activities that primarily benefit the applicant.   See TMEP §1301.01(b)(iv).  On the other hand, offering a retirement income plan to applicant’s employees was found to be a service, because it primarily benefits the employees.   Am. Int’l Reins. Co. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978) .

Licensing intangible property has been recognized as a separate service, analogous to leasing or renting tangible property, that primarily benefits the licensee.   In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986).

See TMEP §1301.01(b)(vi) regarding conducting clinical trials.

1301.01(a)(iii)    Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services

In determining whether an activity is sufficiently separate from an applicant’s principal activity to constitute a service, the examining attorney must first ascertain the nature of the applicant’s principal activity under the mark in question (i.e., the performance of a service or the provision of a tangible product).  The examining attorney must then determine whether the activity identified in the application is in any material way a different kind of economic activity than what any provider of that particular product or service normally provides.   In re Landmark Commc'ns, Inc., 204 USPQ 692, 695 (TTAB 1979). The identification of goods/services, specimen of use, or other information in the application record may indicate whether the activity identified in the application is a separately registrable service. If necessary, the examining attorney should request additional information, pursuant to 37 C.F.R. §2.61(b), to determine if the activity constitutes a service as contemplated by the Trademark Act. See TMEP §814.  

For example, operating a grocery store is clearly a service.  Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service.   See TMEP §1301.01(b)(v).

Conducting clinical trials for one’s own pharmaceuticals is generally considered to be a normally expected and routine activity that is not separately registrable from the principal activity of providing the goods themselves because the U.S. Food and Drug Administration legally requires clinical trials as a prerequisite of pharmaceutical approval. See TMEP §1301.01(b)(vi).

Conducting a contest to promote the sale of one’s own goods or services is usually not considered a service, because it is an ordinary and routine promotional activity.   See TMEP §1301.01(b)(i).

While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods generally does not constitute a separate service, because that activity is ancillary to the principal activity of providing the goods and normally expected in the trade.   See TMEP §1301.01(b)(ii).

However, the fact that an activity is ancillary to a principal service or to the sale of goods does not in itself mean that it is not a separately registrable service.  The statute makes no distinction between primary, incidental, or ancillary services.   In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986) (licensing cartoon character found to be a separate service that was not merely incidental or necessary to larger business of magazine and newspaper cartoon strip); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984) (chemical manufacturer’s feed, delivery, and storage of liquid chemical products held to constitute separate service, because applicant’s activities extend beyond routine sale of chemicals); In re Congoleum Corp., 222 USPQ 452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from distributors held to be sufficiently separate from the sale of goods to constitute a service rendered to distributors, because it confers a benefit on distributors that is not normally expected by distributors in the relevant industry); In re C.I.T. Fin. Corp., 201 USPQ 124 (TTAB 1978) (computerized financial data-processing services rendered to applicant’s loan customers held to be a registrable service, since it provides benefits that were not previously available, and is separate and distinct from the primary service of making consumer loans); In re U.S. Home Corp. of Tex., 199 USPQ 698 (TTAB 1978) (planning and laying out residential communities for others was found to be a service, because it goes above and beyond what the average individual would do in constructing and selling a home on a piece of land that he or she has purchased); In re John Breuner Co., 136 USPQ 94 (TTAB 1963) (credit services provided by a retail store constitute a separate service, since extension of credit is neither mandatory nor required in the operation of a retail establishment).

The fact that the activities are offered only to purchasers of the applicant’s primary product or service does not necessarily mean that the activity is not a service.   In re Otis Eng’g Corp., 217 USPQ 278 (TTAB 1982) (quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment); In re John Breuner Co., 136 USPQ at 95 (credit services offered only to customers of applicant’s retail store found to be a service).

The fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of applicant’s primary product or service is also a factor to be considered.   In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994) ; In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990).

Another factor to be considered in determining whether an activity is a registrable service is the use of a mark different from the mark used on or in connection with the applicant’s principal product or service.   See In re Mitsubishi Motor Sales of Am. Inc., 11 USPQ2d 1312, 1314-15 (TTAB 1989) ; In re Universal Press Syndicate, 229 USPQ at 640; In re Congoleum Corp., 222 USPQ at 453-54; In re C.I.T. Fin. Corp., 201 USPQ at 126.  However, an activity that is normally expected or routinely done in connection with sale of a product or another service is not a registrable service even if it is identified by a different mark.   In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971) .  Moreover, the mark identifying the ancillary service does not have to be different from the mark identifying the applicant’s goods or primary service.   Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953).