REGISTRATION OF SERVICE
MARKS IN NORTH CAROLINA

CLYDE SMITH
Deputy Secretary of State

The adoption of the New North Carolina Trademark Registration Act by the 1967 General Assembly modernized an antiquated statute and opened new areas of coverage which had not been available previously, The former law which hod been in effect since 1901 covered only marks which were affixed to goods bought and sold in the market. Marks which identified services were not subject to registration. Thus a trademark which was used by a manufacturer to identify dry cleaning equipment could be registered, but a service mark used to identify the dry cleaning services performed with that equipment could not be registered. However, owners of service marks were not without protection; since they had certain rights under the common low, but the advantages to be derived from public registration were not available to them on the state level. Registration under federal law could only be obtained if the mark were used in interstate commerce.

The North Carolina Trademark Registration Act which become effective January 1, 1968, provides for registration of service marks as well as trademarks. The Act defines a service mark as "a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others."

Registration is by an application to the Secretary of State on a form furnished by his office. The registration fee is $10.00, and the registration is effective for a ten year period. At the end of ten years, the registration may be renewed for additional ten year periods as long as the mark is in use. Registrants are notified by the Secretary of State and furnished forms for renewal six months prior to the expiration of their registrations.

Registration is denied to a mark if it consists of or comprises (a) immoral, deceptive or scandalous matter; (b) matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; (c) the flog or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign notion, or any simulation thereof; (d) the name, signature or portrait of any living individual ' except with his written consent; or (e) consists of a mark which (1) when applied to the goods or services of the applicant, is merely descriptive or deceptively misdescriptive of them, or (2) when applied to the goods or services of the applicant, is primarily geographically descriptive or deceptively misdescriptive of them, or (3) is primarily merely a surname; or (f) consists of or comprises a mark which so resembles another mark or trade name as to cause confusion.

A significant area which is not covered by the registration provisions of the North Carolina Trademark Registration Act is that of trade names. A trade name is "a word, name, symbol, device or any combination thereof used by a person to identify his business, vocation or occupation and distinguish it from the business, vocation or occupation of others." In order to be subject to registration a mark must identify the source of either goods or services. However, it is possible for a trade name to function as a trademark or service mark if used in on appropriate manner.

The classification of goods an services established in the North Carolina Trademark Registration Act is based on the classification used to be the United States Patent Office. If a mark is used in connection with goods or services which fall under more than one of these classifications, separate applications must be submitted for each class. The Classes of services are fewer and much less specific than those for goods, and it is often difficult for a person no familiar with trademark practice to select the proper class. However, it appears that the proper class for a mark identifying the services a agents in selling real estate would be Class 101, Advertising and Business, while services of agents in selling insurance policies would be under Class 102, Financial and Insurance

In closing, it should be noted that registration of a trademark or service mark is not required under either federal or state law. Rights to trade marks and service marks are acquired by adoption and use--not by registration. The registration statutes merely implement common law right and create certain procedural advantages.