Should you apply for a USPTO Federal Trademark vs. State Trademark?
This article addresses whether you should register your mark with the USPTO federally or file for a state trademark. So, you’ve done the preliminary work of coming up with a catchy phrase, symbol, or combination of the two and you now want to know whether you should obtain a federal registration or a state registration for your mark. When one’s mark qualifies for federal registration, they are usually encouraged to do so as the breadth of protection is more expansive (as will be discussed below) and such a registration allows for infringement lawsuits to be brought in federal court. However, in some instances, such as a mark relating to the sale of cannabis, federal registration would not be appropriate as the sale of cannabis is illegal under federal law. Sometimes, businesses are not selling across state lines, and have no interstate commerce, and therefore cannot qualify for a federal registration. As such, a state registration in one or more of the states where the sale of cannabis is legal would be appropriate.
Expenses & Processing Time
USPTO Federal Trademark vs. State Trademark expenses and processing times: State registration of one’s mark is overall less expensive and often processed and approved much more quickly. On the other hand, federal registrations are more expensive and processing time can take several months.
What Symbol Can You Use?
With a federal registration, you have the right to use the ® symbol. However, with a state registration you only have the right to use the ™ symbol for a trademark or the ℠ symbol for a service mark.
Geographical Coverage
USPTO Federal Trademark vs. State Trademark: with respect to geographical coverage, federal registration of a trademark is much more expansive in that it provides nationwide rights and protections of one’s mark. State registrations provide a narrower scope in that one’s trademark rights and protections are limited to those within the state for which it is registered.
Prior to obtaining a state registration, if an individual uses their mark in commerce in a particular region within a state, the individual has common law trademark rights only in the region where the mark is used. For example, if someone uses their mark in commerce in Los Angeles, CA (and therefore has common law trademark rights), and another person obtains a federal registration for the same or a confusingly similar mark, the person with the federal registration can start using the mark in San Diego, CA.
Using One’s Mark in Commerce
As mentioned above, if someone uses their mark in commerce prior to state registration they are entitled to common law trademark rights. While there are not many additional protections provided upon state registration, it does create a record of the date the mark owner started using their mark. Under the Lanham Act, if federal registration is obtained for a mark that was used prior to a state registered mark, the federally registered mark is awarded the nationwide rights and protections described above and can prevent the state mark from being used altogether. Because of the Supremacy Clause, this rule is true regardless of whether or not the owner of the federally registered mark was the first person to use the mark in that state. However, there is an exception. If the state-registered mark was first used prior to the first use of the federally registered mark, the use of the state-registered mark will likely be confined to the state where it was registered.
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