State Trademark or Federal Trademark: Which One Is Right for You?

State Trademark or Federal Trademark: Which One Is Right for You?

by Jane Haskins, Esq., June 2015

If you want to register a trademark, you have two choices: you can register with the United States Patent and Trademark Office (USPTO), or you can register your trademark with your state.

State trademark registration is relatively quick and inexpensive, while federal trademark registration is more complex and costs more. However, federal registration offers far more protection. Before you decide which is best for you, it’s important to understand the differences.

State Trademark Registration

To register a trademark with your state, you must file an application with the state trademark office. Although requirements vary from state to state, in general you must fill out a form, submit a specimen and/or drawing of your trademark and pay a filing fee that ranges from about $50-$75 for each class of goods or services registered. You typically cannot apply for a state trademark until you are actually using the mark.

By using your mark in commerce, you already have some 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:

  • State trademark registration only protects your trademark in the state where you register it.
  • Registering a trademark with the state is less expensive than registering with the USPTO. You will typically save at least $200 for each registration.
  • A state trademark registration can usually be processed and approved more quickly than a federal one.
  • 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

To register a trademark with the USPTO, you must fill out a form and provide the following information: the name of the mark’s owner, the type of mark, a drawing and a specimen of the mark, a description of the goods or services the mark is used for and the class they fall into, and a filing basis. You must also pay a filing fee, currently $275-$375 per class of goods or services.

Your trademark application will be assigned to an examining attorney. If the attorney identifies issues with your application, you may receive an office action that you will need to respond to before your registration can move forward. A federal trademark application can take anywhere from several months to a few years to process.

Because of the complexity of the federal trademark process, you may need a lawyer to help you. Legal fees will add to the registration cost.

While the federal trademark registration procedure is unquestionably longer and more expensive than state registration, federal trademark registration offers more benefits and much greater protection.

The benefits of federal trademark registration include:

  • 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 using yet, though the mark will not actually be registered until you begin using it.

Registering a trademark helps you protect your brand and your intellectual property. While federal registration offers many more benefits, you might choose state registration instead if you are short on funds and don’t ever plan to do business outside your state. If you are unsure which is best, a trademark attorney can help you decide.

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