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

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(a)(iii)

## Section

- **Citation:** TMEP § 1301.01(a)(iii)
- **Heading:** Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO TMEP / Chapter 1300 - Service Marks, Collective Marks, and Certification Marks / TMEP § 1301.01(a)(iii)

## Text

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)
ee
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
ine 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 the
individual 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
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).

## Nearby sections

- [TMEP § 1301 Service Marks](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.md)
- [TMEP § 1301.01 What Is a Service?](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01.md)
- [TMEP § 1301.01(a) Criteria for Determining What Constitutes a Service](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(a).md)
- [TMEP § 1301.01(a)(i) Performance of a Real Activity](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(a)(i).md)
- [TMEP § 1301.01(a)(ii) For the Benefit of Others](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(a)(ii).md)
- [TMEP § 1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(a)(iii).md)
- [TMEP § 1301.01(b)(i) Contests and Promotional Activities](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(b)(i).md)
- [TMEP § 1301.01(b)(ii) Warranty or Guarantee of Repair](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(b)(ii).md)
- [TMEP § 1301.01(b)(iii) Publishing One’s Own Periodical](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(b)(iii).md)
- [TMEP § 1301.01(b)(iv) Soliciting Investors](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(b)(iv).md)
- [TMEP § 1301.01(b)(v) Informational Services Ancillary to the Sale of Goods](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(b)(v).md)
- [TMEP § 1301.01(b)(vi) Clinical Trials](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(b)(vi).md)
- [TMEP § 1301.02 What Is a Service Mark?](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.02.md)
- [TMEP § 1301.02(a) Matter that Does Not Function as a Service Mark](https://www.frixlaw.com/law-library/statutes/TMEP_S1301.02(a).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/TMEP_S1301.01(a)(iii). Check the current official text before relying on it. Not legal advice.