State Trademark versus Federal Trademark
Trademark rights are obtained simply by having a distinctive word, phrase, or symbol that indicates a product. No registration is needed to have basic trademark rights under the common law. However, if the distinctive phrase or logo is gaining recognition, applying for a trademark may be necessary to ensure full legal protection.
The United States has two types of trademark registration, state and federal. A state trademark is issued by a state office, whereas a federal trademark is issued by the United States Patent and Trademark Office (USPTO). The process of registering a state trademark is relatively quick and inexpensive. On the other hand, registering a federal trademark requires more effort to and can be very costly.
However, registering a trademark federally offers much more legal protection. A federal registration gives the right to use the mark exclusively throughout the county while a state registration only covers within the territory of the state. State trademark protections vary by state, however, most states have adopted a version of the Model State Trademark bill, which is written under the influence of the federal trademark law.
The Trademark Registration Process
To register a state trademark, the applicant must to file an application to the state trademark office. The general requirement is to fill out a form and attach a drawing of the trademark. Filing fees range from around $15.00 to $70.00 dollars. Registering a trademark with the state will save you at least 200 dollars for each registration. The states will then review the application for conflicting registrations in the state’s database. The process of registering a state trademarks is much quicker than the federal trademark registration process.
A federal trademark is only available for marks used in interstate or international commerce. Registering a trademark federally requires the applicant to fill out a form and provide the name of the mark’s owner, type of mark, a drawing of the mark, and a description of the goods or services the mark is used for. The current filing fee is range from $275.00 to $375.00 dollars depending on the class of the goods or services. After filing the trademark application, it will be assigned to an examining attorney who will then identify all issues with the application. A federal trademark application process can take from several months to a few years. Though the federal trademark application is more extensive, there are also many more benefits. If a mark is used in trade within the state as well as interstate commerce, it is possible to apply for both a state and federal trademark.
Legal Benefits of a Federal Trademark
The federal trademark furthers the restriction of any use of confusingly similar marks. The registered trademark will be on a public database. This will prevent other similar marks from being filed and make the use of the trademark will be. The federal trademark also grants the right to use the ® symbol for goods and services while a state trademark are only allowed to use the superscript “TM”. By registering your trademark federally, you are granted the right to sue in federal court in case of infringement.
Under the Lanham Act, a person that obtains a federal trademark has superior rights to use the mark throughout the United States. If a federal registration is obtained before the use of a similar mark in a state, the federal registration has priority over the state registration. If there is any conflict between a federal and state trademark, the Court will most likely rule in favor of the federal registration.
Understanding the depth of protection between the two trademark registrations will help you decide if it is necessary to invest in a federal trademark.
Just a teaser for future consideration, this article is primarily focused on US trademark considerations. There are other steps and costs that a company should consider when expanding internationally.