State v. Federal Trademark Registration

Trademarks can be registered at the state level and/or federal level. However, state and federal registration are not equal. Federal registration offers far more brand protection. Before you decide which is best for you, it’s important to understand the differences.

State Trademark Registration

By using your mark in commerce, you already have a common law trademark with common law trademark rights. Registering your trademark with the state doesn’t give you much additional protection. However, state registration does create a record of the date that you began using your mark, and that record can be important if you are accused of trademark infringement or if you want to stop someone else from using a mark that is similar to yours.

Some points to remember about registering a state trademark:

• Protection is limited to the state where your mark is registered.

• Less expensive than federal registration.

• Faster processing time.

• State trademark registration does not give you the right to use the symbol ®. You may use either TM for a trademark or SM for a service mark.

Federal Trademark Registration

While the federal trademark registration process is unquestionably longer and more expensive than state registration, federal trademark registration offers more benefits and much greater protection. From a brand protection perspective, federal registration is highly recommended. The benefits of federal trademark registration include:

• Right of exclusivity. The exclusive right to use your registered trademark and exclude others within your industry from using a confusingly similar trademark.

• 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.

Trademark registration is one of the best ways to protect your brand. It prevents others from looking and sounding like your business. Federal registration offers many more benefits than state registration. You might choose state registration if you are short on funds and don’t ever plan to do business outside your state.