Should I Apply for a State of Federal Trademark Registration?

Did you know you there is also an option to file a trademark registration at the state level, not just the federal level? You can register you trademark with the United States Patent and Trademark Office (USPTO) or you can register your trademark with your state. Most people would assume that they should file a federal trademark registration because it is better than a state trademark registration. Although the federal trademark registration is superior, there are situations where a state trademark registration would satisfy a person’s wants or needs. To help you determine which trademark registration would better suit you, let’s go over the benefits and limitations of each type of trademark registration. 

State Trademark Registration

Here are the pros of a state trademark registration: 

• It is less expensive than registering with the USPTO.

• It can usually be processed and approved more quickly than a federal trademark registration.

• The exclusive right to use the mark within the state;

• The ability to sue for infringement in state court;

• The ability to use either TM for a trademark or SM for a service mark.

• State registration creates a record of the date that you began using your mark. 

• If there is a potential conflict with another similar trademark and your own, that record may help you establish your priority. 

• If you are accused of trademark infringement or if you want to stop someone else from using a mark that is similar to yours, that record can be used as evidence to defend or support your case.

Here are the cons of a state trademark registration:

• It only protects your trademark in the state where you register it. Therefore, state trademark registration provides you essentially the same protections as common law.

• It will not give you the right to use the symbol ®. 

• State trademark registration does not override the rights and protections provided by federal trademark law. Federal law preempts state law. 

• For example, a person who has federal registration of a mark has superior rights to use the registered mark throughout the United States, even if there is a person who received a state registration or was the first person to use the mark in that state. 

How do you Apply for a State Trademark Registration?

Each state has their own process, so you will need to go to the state government website. There you will be able to fill out your application. For example, in Hawaii you would go to Hawaii.gov where you can register a trademark or service mark, search for currently used trade names or service marks, fill out an application, and pay the application fee. Just like the federal application process you should conduct a trademark search and choose the appropriate trademark class before filing your application. Most states model their application process to the UPSTO’s trademark registration process in that you must submit documents and specimens, you may receive office actions or oppositions, and you must maintain and renew your trademark.

Now let’s take a look at the pros and cons of Federal trademark registration.

Federal Trademark Registration

Here are the pros of a federal trademark registration: 

• Your trademark will be listed in the USPTO database of registered and pending trademarks. This listing services as an official notice to the public and those searching for similar trademarks. 

• A registered trademark guarantees you the exclusive rights of the trademark and ensures that the trademark is not already being used by another business entity. 

• Your certificate of federal registration eliminates the need for overwhelming evidence in the case of a lawsuit.

• The U.S. trademark registration can be used to file for trademark protection in foreign countries.

• You will be able to use federal trademark registration symbol, ®, along with the trademark, which will act as a deterrent to others who may want to use a trademark that is similar to yours.

• Your business trademark has legal liability protection against another business entity claiming that you are infringing on a previously registered trademark. 

Here are the cons of a federal trademark registration:

• The application cost is more expensive. Since it costs more than state registration, federal trademark registration may present a financial barrier to some.

• The complexity of the federal application process almost always necessitates hiring a lawyer or professional service. This will increase the cost.

• The approval process for federal trademarks is incredibly strict and may involve multiple rounds of back-and-forth with the USPTO. This could possibly require additional fees.

• A federal trademark application can take anywhere from several months to a few years to process.

How do you Apply for a Federal Trademark Registration?

For this information, please see our August 2024 Blog entitled: Where do I file my trademark application and what is the process?

Summary

State trademark registration is faster, less expensive, and arguable can be done without legal representation. A federal trademark registration offers substantially more legal protection to you and your trademark. So, it all comes down to your budget and your need for the trademark. Obliviously, if you have the time and money, you should ideally obtain a federal trademark registration to best protect your business and your trademark. 

In our next blog we will discuss the whether you should in words, a logo, or color in your trademark application. 

If you have any questions regarding trademark law or the federal process used to obtain a trademark, we would be happy to help.