Trademarks serve as valuable assets that safeguard a company’s name, logo, slogan, or other distinctive elements from unauthorized use by competitors. However, business owners may be unsure about whether they should apply for state or federal trademark registrations. This article explores the differences between state and federal trademarks and their respective benefits.

What Is a State Trademark?

A state trademark provides legal protection for a mark within the boundaries of a specific state. When a trademark is registered at the state level, it provides exclusive rights to use that mark in connection with the relevant goods or services within that particular state’s jurisdiction. State trademarks are governed by state laws, which vary from state to state, and are typically administered by the Secretary of State’s office or a similar State department.

State trademark registration establishes a public record of a claim to the mark within that state, offering a layer of protection against potential infringement by other businesses operating within those same state boundaries. However, it’s important to understand that state registration does not provide nationwide protection, therefore, these trademark rights remain limited to the state where registered.

Benefits of a State Trademark

Registering a trademark at the state level offers several advantages, particularly for businesses that operate primarily within a single state:

• Lower Cost: State trademark registration fees are typically much less expensive than federal registration, usually ranging from $50 to $150 plus attorneys’ fees, depending on the state.
• Faster Processing: State applications are generally processed more quickly, often within 1-5 months, compared to federal registrations that can take 12-18 months or longer.
• Immediate Legal Protection: State registration provides immediate protection within state boundaries from the filing date.
• State Court Access: Registration grants standing to bring infringement lawsuits in state courts.
• Enhanced Common Law Rights: Registration strengthens existing common law trademark rights within the state.
• Local Business Focus: Perfect for businesses that operate exclusively or primarily within one state.
• Building Block For Federal Registration: Can serve as a stepping stone while preparing for eventual federal registration.

State Trademark Registration

The state trademark registration process is less complex than federal registration. To register a trademark at the state level, an application form is submitted to the state’s trademark office (usually within the Secretary of State’s office), along with examples of how the mark is being used in commerce. Most states require that the mark already be in use in connection with the goods or services before filing.

The cost of state trademark registration varies from state to state but generally ranges from $50 to $150 per class of goods or services plus attorneys’ fees. Processing times are usually fairly quick, ranging from a few weeks to a few months. Once approved, state trademark registrations typically last for 5-10 years, with renewal options. However, be aware that protection is limited solely to the state of registration.

What Is a Federal Trademark?

A federal trademark, registered with the United States Patent and Trademark Office (USPTO), provides nationwide protection for a mark across all 50 states. This coverage establishes an exclusive right to use the mark in connection with the relevant goods or services throughout the entire country. Federal trademarks are governed by the Lanham Act and provide consistent protection regardless of location within the United States.

Federal registration creates a legal presumption of ownership and validity of the mark on a national scale. Federal registration also serves as a foundation for seeking international protection through treaties like the Madrid Protocol.

Benefits of a Federal Trademark

Federal trademark registration offers significant advantages, particularly for businesses operating or planning to operate across multiple states:

• Nationwide Protection: Exclusive rights to use your mark across all 50 states, not just in areas where you are currently doing business.
• Legal Presumption of Ownership: Federal registration creates a legal presumption that you own the mark and have the exclusive right to use it nationwide.
• Federal Court Jurisdiction: The right to bring trademark infringement lawsuits in federal courts.
• U.S. Customs Protection: The ability to record registration with U.S. Customs and Border Protection to prevent the importation of infringing foreign goods.
• Basis for International Registration: Federal registration can serve as a foundation for registering a mark in foreign countries.
• Listing in USPTO Database: The mark appears in the USPTO’s online database, potentially deterring others from adopting similar marks.
• Incontestability Status: After five years, “incontestable” status may be sought, which provides enhanced protection against certain legal challenges.

Federal Trademark Registration

The federal trademark registration process through the USPTO is more complex and rigorous than state registration. It may begin with a clearance search to ensure that the mark doesn’t conflict with existing registrations. Then, an application is filed with the USPTO, which can be based on either the current use of the mark in commerce or an intent to use it in the future. The current base filing is $350 per class of goods or services. After submission, the application undergoes review by a USPTO examining attorney, who evaluates whether the mark meets legal requirements and searches for conflicting marks. This examination process typically takes 6-9 months. If the examining attorney raises concerns, an “Office Action” requiring a response is issued. Once approved, the mark is published in the Official Gazette for 30 days, during which time others may file oppositions. If no oppositions are filed, the mark will proceed to registration. The entire process from application to registration typically takes 12-18 months for straightforward applications, though complex cases can take longer. Federal trademark registrations can be renewed indefinitely as long as the marks continue to be used in commerce.

Should You Register For a State or Federal Trademark?

The decision between state and federal trademark registration should be based on the business’s current operations and future goals. If the business operates exclusively within a single state with no plans to expand beyond those boundaries, a state trademark registration might be sufficient. This is particularly true for local service businesses like restaurants, retail shops, or local service providers that cater specifically to local clientele.

However, if the business operates in multiple states, sells products or services online, or has expansion plans beyond the home state, federal trademark registration is generally recommended. Additionally, businesses with significant brand value or those in competitive industries should consider federal registration for the stronger protection it provides. In many cases, businesses opt for state registration as an initial step while preparing for federal registration, especially when budget constraints are a concern.

Does a Federal Trademark Supersede a State Trademark?

Federal trademark registration generally supersedes state registrations due to the Supremacy Clause of the U.S. Constitution, which establishes that federal law takes precedence over state laws when they conflict. However, the relationship between federal and state trademark rights involves nuanced considerations of timing, geography, and prior use.

Obtaining a federal trademark registration after someone else has established rights to a similar mark at the state level may limit the federal rights in the geographic areas where the state registrant was using the mark before the federal filing date. Further, a prior filed state trademark may be subsequently limited to the geographic area where the mark was used before the federal registrant’s filing date, hindering expansion. These geographic limitations protect businesses that have built goodwill in specific regions, even if they haven’t secured federal protection. Understanding these dynamics is crucial when developing a trademark strategy.

Book a Meeting With an Experienced Trademark Attorney

Navigating trademark registration decisions requires careful consideration of the unique business circumstances and long-term goals. An experienced trademark attorney can provide invaluable guidance on whether state registration or federal registration would best protect your intellectual property rights.
 At Grant Attorneys at Law, we specialize in helping businesses develop comprehensive trademark strategies that align with their specific needs and growth trajectories. Our team can assist with trademark searches, application preparation, responding to office actions, and enforcement of rights if someone is infringing on your trademark.