Introduction
State trademark registration offers much less protection to a mark than federal registration, but there are various reasons why someone should register their mark at the state level in each state where the goods and/or services are offered for sale, even if a federal registration is or will be sought. Three main reasons state registration(s) should be sought:
- if the mark will only be used within the state, federal registration is not permissible;
- state registration can generally be secured in significantly less time and for significantly less money than a federal registration; and
- some states offer additional protections not available at the federal level.
In addition, regardless of whether you file a federal trademark application and secure registration, it is always a good idea to supplement the federal registration by filing a trademark application in each state where your goods and/or services are sold.
Protection offered by state trademark registration
Some states offer more protection to trademark registrants than others and it is never a bad idea to apply for and secure a state registration for your trademark in each state where you offer your good and/or services for sale. Some of the additional benefits provided by a state registration are: (1) documentation of your ownership of the mark before you have used it in interstate commerce (in more than one state or in a foreign country); (2) protection against infringement within the state where your mark is used and registered; and (3) notice to potential third party users that the mark has been used and secured in each state where state registration has been secured; state registration will cause proper trademark search reports to identity your mark as being used within the registered states, thus putting a potential user on notice that such use will constitute infringement.
State trademark laws
All states have a trademark statute. Although most state trademark statutes contain similar provisions to the federal statute, there are unique differences that occur in each state. Nevertheless, the federal trademark statute applies only to trademarks that are used in interstate commerce and registered with the United States Patent and Trademark Office (PTO). State statutes, on the other hand, are designed to regulate the use of trademarks, and protect the rights of trademark owners, within each state.
Obtaining State Registration
You can apply for state trademark registration only in the state or states where you are currently using the mark in commerce. As with federal registration, "use" of a mark in a specified state is defined as the sale of the product(s) and/or service(s) to which the mark is applied, or the advertising of and readiness to offer the products and/or services to which the mark is applied within that state.
You should file a state trademark application as soon as your product(s) and/or service(s) meet the above definition of "in use", regardless of whether you are or are not concurrently using the mark in interstate commerce. If you are concurrently using the mark in interstate commerce, then in addition to obtaining a state registration in one or more states, you should simultaneously file a federal use-based application. If you plan to use the mark at a later date in interstate commerce, you should consider the simultaneous filing of the appropriate state application(s) and an intent-to-use application at the federal level.
You should file a trademark application in each state where you are using the mark, especially if you have not secured a federal registration on the principal register. As you expand into other states, continue to file additional state trademark applications. This plan will give you as much protection as possible in the early life of your mark, at the lowest possible cost.
State Trademark Renewal
In most cases, state trademark registrations last from 5 to 10 years, and can be renewed indefinitely so long as there is continuous use of the mark. As with federal registrations, you must renew state registrations before the initial term expires. If you have secured a federal registration for your mark since filing for state registration, and the federal registration is current and in effect, you should be able to safely let your state trademark lapse since the initial registration term is proof that mark had been used in the state.
TM, SM and ®
If your mark is registered at the state level in one or more states, you should be careful to follow the rules for the proper use of trademarks. Do not use the ® in a circle symbol, which indicates federal trademark registration until and unless you have secured a federal trademark (actually received a registration certificate). Ignoring this restriction on the use of notice of federal registration can seriously damage your right to stop infringers, or later register your mark with the U.S. Patent Office. You may, and should, however, use the ™ ; mark to identify any mark that relates to good and the SM mark to identify any mark that related to services. Again, stay away from the ® symbol unless you have secured a federal trademark (actually received a federal registration certificate).
