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Selecting and Registering a Trademark





State Trademark Registration in the United States


Updated, July 2014


1.  What is a state trademark registration?
 

The United States has a two-tiered system of trademark protection: federal and state. A federal registration, under the Lanham Act, gives the registrant rights throughout the entire United States and its territories and possessions; a state registration gives the registrant trademark rights only within the territory of the state.

The rights and protection afforded by one state’s trademark laws may differ from those afforded by others’; however, most states have adopted some version of the Model State Trademark Bill, which is patterned after the federal trademark law.

For an overview comparison of federal and state registrations, see below, “How do state trademark registrations differ from federal trademark registrations?”


2. How does one obtain a state registration?

State trademark applications are filed with a state’s trademark authority. The specific forms and fees payable with an application vary by state. Some states review the application for conflict with other existing registrations in the state’s database, while others do not.

Note: A trademark is different from a corporate name or trade name. The state registration of a trade name authorizes one to use only that exact business name, but it does not confer ownership and does not necessarily provide protection from the use of the name by others.


3. How do state trademark registrations differ from federal trademark registrations?

  • Trademark authority: A federal trademark registration is issued by the United States Patent and Trademark Office. A state trademark registration is issued by a state office, typically the Secretary of State’s office (e.g., the State of Arizona Secretary of State’s Office or the New York Department of State’s Office).
  • Use requirements for registration: A federal trademark registration is available only for marks used in interstate commerce or commerce between the United States and another country. One may also apply for federal registration before actual use of the mark, based on intent to use. Purely intrastate use of a mark—that is, within only one state—is not sufficient to obtain a federal trademark registration. Intrastate use is sufficient, however, for registration of a trademark in that state. Only some states will permit applications based on intent to use or on the reservation of a mark. One may file for both federal and state trademark registration if the mark is used within the state as well as in interstate commerce or commerce between the United States and another country.
  • Presumption of validity and ownership: A federal registration provides a presumption of the validity of the ownership by the entity or person identified in the registration records.

A state registration may, in some states, be admissible as prima facie evidence of (1) the validity of the registration of the trademark; (2) the registrant’s ownership of the trademark; and (3) the registrant’s exclusive right to use the trademark in that state in connection with the goods and services specified in the certificate, subject to any conditions and limitations stated in the certificate.

Although the first person to adopt a mark as a trademark has a common law right to prevent others from using a similar mark in a manner that is likely to confuse consumers, regardless of registration, one may not acquire state common law rights in a mark that is already registered in that state unless the registration has lapsed or the mark has been abandoned by the registrant.

A federal registration has priority over a state trademark registration if the federal registration was obtained prior to the state registrant’s application date; this remedy may be used only by the federal registrant, by petitioning the court to cancel the state registration.

  • Basis for other filings: A federal registration can form the basis for filings in other countries, such as an International Registration under the Madrid Protocol. A state registration cannot form the basis for filings in other countries.
  • Customs recordation: A federal trademark registration can be used to stop unauthorized imports at the U.S. border, but a state trademark registration cannot.
  • Geographic area of registration: As noted above, federal trademark registration provides protection for a trademark, as well as constructive notice of the validity and ownership of the trademark, throughout all 50 U.S. states. A state registration protects the mark, at most, within the borders of the state and does not protect the mark in the rest of the United States.
  • Use of the ® symbol: The owner of a federal trademark registration may use the ® symbol. A state trademark registration does not confer the right to use the ® symbol.
  • Other differences: A federal trademark registration may provide for federal jurisdiction, attorney fees and costs, and possible incontestability. In exception cases, generally those involving willful, malicious or fraudulent conduct by a party, a state trademark registration may also provide for the court to award costs and attorney fees. Obtaining a federal trademark may take from 9 to 16 months, whereas obtaining a state registration is usually a quicker process, sometimes taking only a few weeks, and is less complicated and costly than a federal registration.


4. What role can state laws play in trademark-related issues?


In addition to offering state-specific trademark registrations, state laws can serve important functions in the area of unfair competition law and related fields. State dilution laws survive alongside the federal statutory scheme, providing different standards of liability based on more extensive and varied bodies of historical case law. State common law often fills in registration gaps in enforcement proceedings and, along with unfair competition and consumer protection statutes, continues to provide alternative theories of liability. Other state statutes afford additional remedies beyond those available under the Lanham Act, and rights of publicity still arise only from state law. More broadly, state contract law provides the framework for trademark agreements and state tort law governs claims of licensor liability, trade libel, tortious interference and many other issues that arise in the commercial use of trademarks.


Additional INTA Resources


U.S. State Trademark and Unfair Competition Law
A singular comprehensive source for facts, commentary and analysis on U.S. state trademark and unfair competition law. INTA membership required.

Filing a Trademark Application in the United States


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