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Trademark Registration - When You Should Consider Registering With the State?

 

If you are using your trademark only within a single U.S. state (and thus do not qualify for federal registration), should you register your trademark in that state?

If you are using your trademark in interstate commerce or between the U.S. and a foreign country and you have registered your trademark with the U.S. Patent and Trademark Office (federal registration), should you also register your trademark at the state level?

Trademark registration?
In the United States, a trademark may be registered at the federal level if there is interstate use or use between the U.S. and a foreign country and also with the authorities in each of the fifty states where the mark is used. The federal law and the laws of each state concerning trademark registration and rights may differ, meaning that the protection afforded by federal registration and by one state’s trademark registration may differ from that provided by other state registrations, but most states have adopted versions of the Model State Trademark Bill (MSTB). Registration at the federal level and/or at the state level provides valuable rights and remedies not available to users of non-registered trademarks.

How does one obtain a registration?
One obtains a federal registration with the U.S. Patent and Trademark Office.

One obtains a state trademark registration by completing a form provided by the relevant state agency and paying a fee. Forms and fees vary by state. Some states review the application for conflict with other existing registrations in its database while others do not.

Note: A trademark is different from a corporate name or trade name. The state registration of a trade name only authorizes one to use that exact business name but does not confer ownership and does not necessarily provide protection from the use of the name by others.

How do state trademark registrations differ from federal trademark registrations?

FEDERAL REGISTRATIONS

STATE REGISTRATIONS

How Obtained

A federal trademark registration is issued by the United States Patent and Trademark Office (“USPTO”).

A state trademark registration is issued by a state office, typically the Secretary of State’s Office such as the State of Arizona Secretary of State’s Office or the New York Department of State’s Office.

Use Requirements

A federal trademark registration is available only for marks used in interstate commerce or commerce between the United States and another country. It is also possible to apply for registration before actual use, based on an intent to use the Mark. Purely intrastate use of a Mark, that is, within only one state, is not sufficient to obtain a federal trademark registration.

Intrastate use is sufficient to obtain a registration in that state. Only some states will permit applications based on an intent to use the Mark or of a reservation of a Mark.

Presumption of Validity and Ownership

A federal trademark registration provides a presumption of the validity of the ownership by the entity or person identified in the registration records.

A federal registration has priority over a State trademark registration if the federal registration was obtained prior to the State registrant’s application date; provided; this remedy may only be used by the federal registrant by petitioning the court to cancel the state registration.

A state trademark registration may, in some states, be admissible asprima facie evidence of (1) the validity of the registration of the trademark; (2) the registrant’s ownership of the trademark; and (3) the registrant’s exclusive right to use the trademark in that state in connection with the goods and services specified in the certificate, subject to any conditions and limitations stated in the certificate. One may not acquire common law rights in a Mark that is already registered with that State (unless the registration has lapsed or the Mark has been abandoned by the registrant).

Basis for Other Filings

A federal trademark registration can form the basis for filings in other countries, such as International Registration under the Madrid Protocol.

A state trademark registration does not form the basis for filings in other countries.

Customs Recordation

A federal trademark registration can be used to stop unauthorized imports at the U.S. Border.

A state trademark registration cannot be used to stop unauthorized imports at the U.S. Border.

Geographic Area of Registration

A federal trademark registration provides protection for a trademark, as well as constructive notice of the validity and ownership of the trademark, throughout all fifty U.S. states.

A state trademark registration protects the Mark, at most, within the borders of the state and does not protect the Mark in the rest of the United States.

® Symbol

The owner of a federal registration may use the ® symbol.

A state trademark registration does not convey the right to use the ®symbol.

Additional Protection

A federal trademark registration may provide for federal jurisdiction, attorneys’ fees and costs and possible incontestability. A federal trademark registration is slower (may take 9 – 16 months), more complicated, and more expensive.

A state trademark registration may provide in exceptional cases, for the court to award costs and attorneys’ fees. Exceptional cases are generally those involving willful, malicious, or fraudulent conduct by a party. State trademark registration is generally faster (sometimes a few weeks), less complicated and less expensive.

Many people and businesses overlook the possibility of state trademark protection for intrastate use, especially when federal registration may not be available. We recommend state registration if you only have intrastate use since you may then enjoy the exclusive right to use the mark in that state. If you qualify for federal registration, we recommend you pursue federal registration as you may enjoy additional rights not available via state registration. If there is a factual question of whether you have true interstate use or use between the U.S. and a foreign country, then state registration should be considered.





Kevin J. Collette is an attorney in Ryan Swanson’s Trademarks & Intellectual Property Group and can be reached at 206-654-2252 or collette@ryanlaw.com.


Because each situation is different, this information is intended for general information purposes only and is not intended to provide legal advice on any specific facts and circumstances. Ryan, Swanson & Cleveland, PLLC is a full-service law firm located in Seattle, Washington.

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