A trademark can be any word, phrase, symbol, design, or any combination of those that allows consumers to identify and relate your business to your goods or services.
Some of the advantages to having a trademark are:
- It identifies the source of your goods or services;
- It provides legal protection for your brand; and
- It helps you guard against counterfeiting and fraud.
While many businesses understand the benefits of having a trademark, most can’t decide if they should file for a federal or state trademark.
This guide breaks down the differences between state vs federal trademarks, explores the advantages of each, and the different types of trademarks.
A state trademark is registered to a state’s trademark office. It protects the registered trademark and gives the owner exclusive rights to use the mark within the state’s borders.
What Are the Advantages of a State Trademark?
State trademark registration is not required, but it does provide some benefits:
- Relatively quick and inexpensive compared to registering for a federal trademark;
- 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;
- The ability to use the mark in connection with goods or services that are sold or distributed within the state; and
- The ability to register the mark with the U.S. Patent and Trademark Office (USPTO). * (Note: You do not need a state trademark to register with the USPTO. However, registering a state trademark will help establish priority if there is a potential conflict with another trademark.
A federal trademarkis registered with theUnited States Patent and Trademark Office and it will give the owner the exclusive right to use the registered trademark in connection with their goods and services throughout the United States.
Federal trademarks are valid for as long as you keep paying the renewal fees. The first renewal is between the fifth and sixth year after the registration date. The second renewal is between the ninth and tenth year after the registration date. After the first ten years, the renewal is every ten years.
- It gives you exclusive rights to use your trademark nationwide. This means that other businesses cannot use your mark or a confusingly similar mark without your permission;
- Registration creates a legal presumption that you own the trademark and have the right to use it nationwide for the class of goods or services identified in your registration;
- Federal registration is superior to state registration. If a federally registered trademark was in use before a state registered trademark, the federal registrant can stop the state trademark owner from using the mark. If the state mark was in use first, the mark’s use may be restricted to the state where it was registered;
- You can notify others of your trademark rights by using the ® symbol;
- You can file a trademark infringement lawsuit in federal court;
- You can register a trademark with the U.S. Customs and Border Protection Service to prevent infringing products from being imported;
- You can use your USPTO trademark registration as a basis for obtaining foreign trademark registrations;
- Your trademark will be listed in the USPTO’s database. This creates a public record of your mark and may help deter others from using it;
You can file an application for a mark that you intend to use but are not yet using. *Note: The mark will not officially register until you can show “proof of use in commerce.” This means that you may begin using your applied for mark before the application has registered. As soon as your goods and services are offered for sale in connection with the applied for mark, then you should then have sufficient proof of use. This is satisfied by filing a “Statement of Use”; and
- A federal trademark can give you added protection against internet cyber-squatters.
If you are thinking about registering a trademark for your business, especially if you’re an Amazon seller, you may want to consider filing for a federal trademark. Check out this guide to help you. It is important to note that without a federal trademark, Amazon and other third-party sites will not take down infringing listings.
You can file an application for a state trademark by going to the state trademark website. The specific steps and related fees vary by state, so be sure to check the requirements for the state before you begin.
Once you are on the state website, you will need to create an account and log in. After you log in, you will be able to fill out the online trademark application. Be sure to include all the required information and pay the filing fee ($50 to $200, depending on your state).
Once your application is processed, you will receive a Certificate of Registration. Although the protection afforded to a registered state trademark is limited, your state registration records the specific date that you started using your trademark in interstate commerce. This record is crucial if you discover another entity infringing your trademark and need to show priority.
STATE TRADEMARK OFFICES
The process for filing a federal trademark application is relatively straightforward, but there are a few things you should know before getting started:
- Choose the right trademark application for your needs. There are two main types of federal trademark applications: TEAS Plus and TEAS Standard. The main difference between the two applications focuses on the description of your goods and services. For a TEAS Plus, you must select your goods or services listing from the Trademark Identification (ID) Manual. If the ID Manual doesn’t have a listing that accurately reflects your goods and services, you must use TEAS Standard. For a TEAS Standard, you can write the description of your goods and services, but it’s still essential to accurately describe your goods and services.
- Gather all of the required information and documents. These include drawings and specimens for your mark.
- Identify the Trademark Filing Basis (Are you currently using the mark in commerce (1a) or do you plan to use the mark in commerce (1b) If you intend to use the trademark in the future, be prepared to pay additional fees later on in the application process when you need to file your Statement of Use.
- Pay the application fee. The USPTO Trademark Electronic Application System (TEAS) has two filing options: TEAS Plus has a fee of $250 per class and TEAS Standard has a fee of $350 per class and you can pay the initial application fee paid in the beginning, with the rest for later).
The procedure to register a federal trademark can take several months or even years to be completed and will likely involve several actions and responses with your assigned examining attorney. Aside from the initial registration costs, expect additional legal fees as the process continues.
As detailed above, a federal registration provides significantly more protection for your mark and your brand than state registration.
If you are looking to register a trademark, you may be wondering if you should register it at the state or federal level. The answer to this question depends on several factors, including the type of business you have and the geographic area you want to cover.
Generally speaking, a federal trademark registration is the best option for most businesses. Federal registration provides broader protection and is much easier to enforce than a state registration.
However, there may be some circumstances where a state registration may be the better option. For example, if you have a small business with a limited geographical scope and highly localized products or services, state registration may be a better option.
Both options provide much-needed protection for your business and your brand. If you are unsure whether to register your trademark at the state or federal level, it is best to consult with an experienced trademark attorney to discuss your options and potential contingencies if you choose to go either way.
Yes. Federal trademark registration supersedes state trademark registration. When you register your trademark with the USPTO, you receive nationwide protection for your brand.
Trademark law is governed by common law, state law, and federal law. Federal trademark law is governed by the Lanham Act, which is codified in Title 15 of the United States Code. State trademark law varies from state to state but is generally based on the common law of trademarks.
The Lanham Act sets forth the requirements for obtaining and maintaining a federal trademark registration, establishes the grounds for trademark infringement, and sets forth the remedies available to trademark holders who are infringed upon.
State trademark law generally provides for the registration of trademarks with the state’s secretary of state or attorney general. State trademark law also establishes the grounds for trademark infringement at the state level and sets forth the remedies available to trademark holders who are infringed upon.
Your trademark can be protected domestically and internationally. International trademark law is governed by treaties and conventions set by countries that are a party to those agreements. Please note: a U.S. trademark only provides protection within the U.S. and its territories. If you would like trademark protection outside the United States you would need to file a trademark with each country or through a multinational filing system such as the Madrid Protocol. If you would like to learn more about international trademark protection, please see our recent article here.
The process of international trademarking is quite complex, and there are a few things you need to know before you get started.
First, you must determine which countries you want to protect your trademark in. Then, you need to file a trademark application with the appropriate intellectual property office in each country. Once your trademark is registered, you will need to renew it every few years to maintain its validity.
Not all trademarks are created and protected equally. There are four ratings of trademarks, and they vary in terms of distinction and the level of protection granted.
It’s important to understand their differences because the strength of the trademark varies. If the phrase or logo you want to trademark is common in your industry, it may not qualify for trademark protection. You may have to rework or adjust your mark so it will be granted the protection that you need.
Here are the four types of trademarks ranked by level of protection (from strongest to weakest).
You can get the strongest trademark protection for a term that you created yourself. Fanciful trademarks are words that are not found in the dictionary and are just made up for marketing purposes. Starbucks, Lexus, Spotify, Nike, and Adidas are some examples.
Arbitrary trademarks are words with well-known meanings but are applied to entirely unrelated products or services. The best example is Apple—a common noun that refers to the fruit, but the proper trademarked term refers to a tech company that manufactures computers and smartphones.
The next level of trademark protection covers common terms that imply descriptive qualities of the product or service but do not state them outright. For example, Jaguar suggests speed and grace and gives no indication that it refers to a car manufacturer. KitchenAid products provide aid in the kitchen. Netflix refers to a collection of movies that you can watch on the internet.
To register a descriptive trademark, your business must establish a distinctive secondary meaning for the descriptor over the span of five years. It is difficult to register common descriptive terms because most verbiage should be left available for all types of businesses and brands to describe their products or services.
Some examples are Bank of America, the Associated Press (AP), and International Business Machines (IBM).
Generic terms are not granted protection; however, such terms can be used within a more specific umbrella term or logo design.
Business owners make many common mistakes when dealing with trademark law. These errors can be costly and can even jeopardize the validity of your trademark.
Some of mistakes include:
- Not conducting a trademark search before choosing a name or logo. It is important to conduct a search to not only ensure that the trademark you want to use is available, but also to ensure the trademark you want to use is not too similar to another trademark application or registration.
- Incorporating your business before obtaining a trademark. States will allow businesses with nearly identical names to register as entities. This is no indication of whether the business name is available for trademarking and may end up costing you more money to reincorporate under a new name, as well as time spent marketing and labeling/packaging products under the original name.
- Not filing a trademark application as soon as possible. While you may establish common law rights in the use of your trademark before another registered trademark, you will still have to spend more time and money fighting to get the registered trademark canceled. The USPTO operates on a first-to-file basis meaning first come, first served. So, the filing date is everything when it comes to establishing priority.
- Using a generic term or descriptive phrase in your trademark.
- Not monitoring your trademark for misuse or infringement.
Searching for and registering a trademark can be a daunting task. There are millions of registered trademarks, and it can be difficult to know where to start. The best way to begin your trademark search and decide whether to use a state trademark or a federal trademark is to partner with an experienced trademark attorney who can help you navigate the process and set your application up for success.
An experienced trademark attorney will help you identify the right search terms to use and understand your search results. Once the search is finished, they can help you determine if a trademark is available and advise you on the next steps.
Money-Back Guarantee Trademark Applications
At the Rapacke Law Group, our team of trademark attorneys are now offering a money-back guarantee with your trademark application. Should your trademark application not be allowed for any reason, we will provide a 100% money-back guarantee of any fees paid.
Speak With an Experienced Attorney About State vs Federal Trademarks
At Rapacke Law Group, we will assist you in identifying the type of intellectual property protection necessary for your business. We will be with you through every step of the process and answer all your questions about state and federal trademarks.