State Trademark Registration - This Is Part 3 In A 7 Part Series

States register marks for use within their borders. If a mark is not used in interstate commerce or has been held to be unregistrable federally, a state registration is the only other registration option.

However, too few companies appreciate that those who register locally will lose to prior federal registrants or even applicants. Worse, later federal registrants will get unoccupied state territory. Even more of a concern, too many state registrants invest in marks that others already own!

Additionally, the benefit one receives is questionable. First, state registration is unlikely to add to the geographic reach already given through use. Later users may take unoccupied areas. Second, state employees do not search for trademarks that are registered federally or in other states. Third, in contrast with federal registration, a state trademark application must be based on actual use, and may not be done on an “intent-to-use” basis. Fourth, a state registration does not create a presumption of ownership of the trademark.

Thus, benefits of a state registration, as compared to a federal registration, are limited, but they still include:

1. Prevention

A state registration creates a limited public record of the mark that is likely to be discovered by others conducting searches and, as a result, will discourage the adoption and use of confusingly similar marks by others.

2. Cost

The filing fees for a state registration are significantly less than the fees for a federal registration.

3. Simplicity

State registration is comparatively simple, inexpensive, and fast when compared to federal registration. If a trademark is not already taken, there should be no problem.

Common Law Rights

A company generates common law rights in its trademark the minute it begins using that mark to promote its products or services in commerce. Under the common law, the first entity to use a mark in connection with the sale of goods or services in commerce is the owner of that mark in the geographic area in which it is being used. These common law rights also extend into surrounding geographic areas that may be considered a natural and logical expansion of the entity’s products or services.

However, one of the downsides to relying on common law trademark protection is the limited geographic scope of the rights. In the event a junior user were to begin using the same or similar trademark on related goods in a remote geographic region with no knowledge that the senior user had previously and consistently been using that mark in the United States, then the junior user would have superior rights to the trademark in that geographic region, despite the fact that the senior user was the prior user of the trademark.

Prepared by Pacer K. Udall, Intellectual Property Attorney

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© 2007 Pacer K. Udall. All Rights Reserved.