One unique aspect of trademarks that sets them apart from other types of intellectual property is that they are registrable at both the federal and state level. Copyrights and patents are only registrable at the federal level because they originate directly from the U.S. Constitution. Thus, only the federal government has the authority to issue these rights. Trademark protection, on the other hand, does not arise from the constitution. So, while trademarks can be federally registered, states can register trademarks as well.
The biggest difference between a state and federal trademark is obvious – the geographic area in which trademark protection applies is different. A state registration only benefits its owner within the confines of that state. A federal registration, on the other hand, provides protection of the mark throughout the United States.
The other major difference between the two is the level of scrutiny that an application receives. With a few notable exceptions, most states do only a cursory review of trademark applications to ensure that the mark is registrable, has not been taken by someone else already, and the application and fee are in order. At the federal level, however, the hurdles are much higher to gaining registration. This is due in part to the fact that the registration, if granted, gives such broad geographic protection as to exclude others, the sheer number of applications for registrations particularly for the same or similar marks, and because there are more restrictions at the federal level on what can be registered.
There are situations where obtaining a state trademark registration makes sense, but they are rare. For businesses that transact business only within a single state and do not engage in interstate commerce, state protection may be sufficient (and also their only option). The mark protects its owner from other subsequent businesses who may seek protection in the same state. Thanks to the Internet, however, it is almost impossible to say that any business is truly confined to a single state.
Another situation where obtaining a state registration makes sense is for marks that are highly prone to counterfeiters. All states of which I am aware have laws that allow registered mark owners to sue infringers in state court. In addition (and here’s where the real benefit comes in), the owner of a registered state-based trademark can obtain the assistance of that state’s attorney general’s office in going after infringers. This can include having state police raid a counterfeiter’s facility or warehouse and seizing counterfeit merchandise.
Cost is another difference between state and federal trademark filings. State trademark filing fees are in every case of which I am aware lower than federal trademark filing fees. All state-based trademark filings are made with the Secretary of State’s office.
State application processing also tends to be much faster than that of the USPTO, due primarily to the fact that the volume of applications at the state level is nowhere near that of the federal level. The best case time frame to obtain a federal registration is currently nine to 12 months, and that assumed there are no issues with the application. The state process is usually at least one-third of this time, and I have successfully registered state based marks in less than two weeks in some cases. This is important in situations where time is of the essence in obtaining some form of registered trademark protection.
If you are considering obtaining a state or federal trademark registration, or if you have questions about the differences between a state and federal registration, contact the Law Office of Chris Clark. Our team is happy to provide you with the answers and guidance you need regarding both state and federal trademark law.
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