State Trademark: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
A state trademark allows business' to register marks at the state level if it will only be used within one state, but doesn't have the same level of protection.13 min read
A state trademark allows a business to register its mark at the state level only, so long as the mark will only be used within one state. It does not provide the same level of protection as a federal trademark.
What Is a State Trademark?
Trademarks offer the owner protections against the unauthorized use of any symbol, words, phrases, or identifying elements of a business that are unique and specific to your brand identity. There are two ways to file for trademark protection in the United States. The most well-known of these is to register a federal trademark under the Lanham Act. This provides protection over a mark not just throughout the United States but across all its possessions and territories.
A state registration, on the other hand, provides protection for a mark within the borders of the state in which it's registered. Each state can vary in the exact protections offered, but in general, most states pattern the benefits of trademarks after the Model State Trademark Bill. This bill exists to provide a basis for bringing state laws in line with federal laws regarding how these marks work and the protections they provide.
Registering a trademark at the federal level is much more difficult than at the state level. It also takes much longer to receive approval. However, the protections of a federal trademark are much stronger than a state trademark. You should make sure to obtain a federal trademark if you want the best legal protections possible.
When Should I Consider Filing a State Trademark?
The biggest benefit of registering in your state is that your mark will be listed in the state's list as registered and owned by you. This can be a major deterrent against others using your mark.
In addition, the filing fee and process to register a state trademark is far lower than a federal one, with state fees ranging between $50 and $75, and in places like Arizona, as low as $15. This is as opposed to a federal application, which as of September 2012, ranges from $275 to $375.
State trademarks are also generally faster than federal ones to file, process, and approve. If you are planning to do business only in your state, and have no desire to expand beyond its borders, a state trademark can be a great option.
When Should I Not File a State Trademark?
If you plan at any time in the future to move your business out of state, or expand it beyond state borders, you should consider filing a federal trademark instead. In addition, if you have already filed a federal trademark, no state trademark is necessary. In this case, you are already protected in your state by the federal filing.
Note also that with a state registration, you may not use the registered trademark ® symbol. You are restricted to ™ for trademark or SM for service mark.
Using only a state trademark can also create problems if you encounter someone with a federal mark. Federal trademarks take precedence over state ones. This means if there is a federal mark in place when you file, the owner of that mark can stop you from filing. If someone later files a federal trademark, it can result in you being restricted to the use of your mark within your state and not across its borders.
Finally, federal trademarks can be used to stop people from importing products from other countries that would infringe your trademark when you file with the U.S. Customs and Border Protection Service.
What Are the Benefits of a State Trademark?
Trademark rights are granted the moment you use a mark for commercial purposes. These are referred to as common law trademark rights. Once you begin using the mark, it is yours without the requirement for official registration. However, there are extra protections you gain from official registration.
Specifically, registering with the state gives you a filing date that is official and will carry weight in court should you have to defend your trademark. This can be important not only in stopping others from using your mark but in defending yourself against accusations that you have infringed on someone else's work.
In addition, registration serves as a notification that someone owns and uses the trademark. It becomes a matter of public record, searchable by others.
Also, some states have laws in place that work alongside federal trademark laws to help you avoid unfair competition and setting liability standards because of a greater available body of case law. Where gaps in enforcement exist, state common laws can help to fill the holes. Moreover, they can afford remedies beyond those specified in the Federal Lanham Act.
What Are the Advantages of a Federal Trademark?
Federal trademarks supersede state ones at almost every level. Besides having priority if the federal registration was filed first, the following benefits apply to possessing a federal as opposed to a state mark:
- Federal registrations give you a basis to file in other countries, including the Madrid Protocol.
- Federal trademarks can allow you to stop imports that are unauthorized and use your mark.
- Federal trademarks give you ownership across all 50 states, plus all U.S. territories.
- Federal trademarks allow you to use the ® symbol.
- You can file infringement suits in federal courts.
- Your mark will be listed in the U.S. Patent and Trademark Office (USPTO) database.
- You can file before you begin using the trademark.
- You may be eligible for much greater awards in cases of infringement of federal marks, including attorney's fees, court costs, incontestability, and enhanced damages in cases of malicious, fraudulent, or willful infringement.
- Those who aren't U.S. nationals can count on Section 44 of the trademark statute to file a federal application based on ownership of a foreign trademark in their home country and an intent to use in the U.S. No use of the mark needs to exist within the U.S. at the time of filing, though eventually, the mark must be used to avoid cancellation.
How Do I File a State Trademark?
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 or a drawing of your trademark, and pay a filing fee that ranges from about $50 to $75 for each class of goods or services registered.
Each state has its own requirements for registering a trademark. Normally the application is filed with the office of the secretary of state, but individual states may vary. The first step is to check with your state's trademark office to see what the requirements are. If you are uncertain, your attorney can help you.
What Is the Difference Between a State and a Federal Trademark?
The specific differences between state and federal trademarks break down into several levels:
- Trademark authority
- Requirements to register
- Presumption of validity.
Trademark authority: Federal and state marks are under different jurisdictions. Federal trademarks are issued by the USPTO, whereas a state trademark is issued by the office of the secretary of state for the state in question, such as the Arizona Secretary of State, the Pennsylvania Department of State, etc.
Requirements to register: If you plan to do business only within your state, you may not have sufficient cause to register a federal trademark; such filings require the use of a mark across state lines or between the U.S. and other nations. On the other hand, federal trademarks can be registered based on intent to use the mark, whereas in general, state marks require active use before the mark can be filed.
It's possible to file for state and federal trademarks if you start work in the state and later decide to move across state lines. Once you file for federal trademark and are accepted, there's no longer a need to file for state trademark, as federal statute supersedes state.
Presumption of validity: Registering for a federal trademark provides a legal presumption of ownership and validity by whoever is listed on the registration. This means your ownership carries weight in court that federal records back up.
The most common mistakes made regarding trademark applications revolve around assumptions of validity. Just because you get approval for use of a state trademark, that doesn't mean there is an automatic availability of your trademark. If an identical or similar federal trademark previously exists, you could run into problems in the form of a challenge to your mark.
Another common mistake is filing too early. Before filing for a state trademark, be sure you are actually using the mark in commerce.
A common error, which can lead to legal problems, is using the wrong mark. If you use the ® mark when you have only a state trademark, you can face legal consequences for misrepresenting your trademark.
Registering your business name is not the same as filing for trademark protection. While registering your name does place it on a list of operating businesses, it offers no legal protections against other people using the name. This is a mistake many people make.
Steps to File a State Trademark
You may register both trademarks and service marks on the state level. Each state has different rules and procedures to file. You will need to:
- Complete a search to ensure your mark is not registered by someone else.
- Complete the proper paperwork.
- Submit with a filing fee, which can vary from $15 to $75, depending on the individual state.
Your application requires complete, detailed, and accurate information regarding:
- The description of your business
- The goods and services you provide
- The trademark over which you're claiming ownership
- The class designation of your mark.
You will also need to include proof that you have used the mark in business in the form of copies and specimens.
A class refers to the category of goods and services you're providing. Both state and federal trademarks are filed under classes, but those available at the state level might vary from those at the federal level. While on a federal application, you can designate multiple classes for your mark. In a state trademark you may, depending on the state, need to file a separate application for each class.
What Are the Things to Remember About Registering a State Trademark?
There are a few items to keep in mind when considering registering a state trademark. The registration will only protect the trademark in the state you registered it in. It's not as expensive to register a trademark with the state as it is to register with the USPTO. Around $200 can be saved per registration. A state trademark registration often gets processed and approved faster than a federal registration. This registration doesn't allow you to use the symbol ®, but you can use SM to indicate a service mark or TM to indicate a trademark.
It's important to know that a trade name or a corporate name is not the same as a trademark. When the state authorizes a trade name, the business can use only that exact name. This doesn't mean it has ownership, nor does it protect others from using the name.
Steps to File a Federal Trademark
The first step in filing a federal trademark is to file an application with the USPTO, which can be an application for a mark that is in use, or an intent to use, "ITU," or Use application. An attorney will examine this application at the USPTO and either approve or reject it.
If the application is rejected, the applicant can respond within six months. If a response is tendered, the application may or may not be reconsidered and the rejection withdrawn.
The application, if accepted, will then be published in the Official Gazette. At this point, third parties have 30 days to oppose the trademark registration or to request an extension for up to 120 days to do so.
If no opposition is filed, a Certificate of Registration will be issued. If the application was an ITU, a Notice of Allowance will be issued, which gives the applicant three years in periods of six months to file a Statement of Use, at which time the applicant receives a Certificate of Registration.
Between the fifth and sixth anniversary, the mark owner must submit an affidavit that he or she is still using the mark, and at the same time, the owner can submit an affidavit of incontestability.
Registration of a trademark is valid for 10 years, and it has to be renewed every 10 years thereafter. This requires the submission of an application for renewal and another affidavit of continuing use.
Example of State Filing: New York
In New York, applications for state trademarks are administered by the office of the New York secretary of state. Applications are completed on paper and mailed to the office. Your application must include the following information:
- Your name and business address.
- A description of the mark, which includes all design features.
- Listing of the goods and services you provide.
- The class of your mark.
- The way in which the mark has been and will be used.
- Date of first use, either by you or by a predecessor.
You must also include a statement declaring you are the owner of the mark, which is in current business use, and that to your knowledge, no other entity or person has registered the mark or has the right to use it, either in an identical form or in such a way as to cause confusion or deception for consumers.
You will then sign the application, and verify it by oath, affirmation or declaration, and subject to all perjury laws by you or your designated representative. You must attach three specimens that demonstrate the use of the mark in commerce. A state filing fee of $50 is required.
Filing Information by State
Links to the filing information and office in charge of administrating trademarks in each state follow:
- Alabama: Alabama Secretary of State
- Alaska: Alaska Dept. of Community & Economic Development
- Arizona: Arizona Secretary of State
- Arkansas: Arkansas Secretary of State
- California: California Secretary of State
- Colorado: Colorado Secretary of State
- Connecticut: Connecticut Secretary of State
- Delaware: Delaware Trademark Act
- District of Columbia: D.C. Government
- Florida: Florida Department of State
- Georgia: Georgia Secretary of State
- Hawaii: Hawaii Dept. of Commerce & Consumer Affairs
- Idaho: Idaho Secretary of State
- Illinois: Illinois Secretary of State
- Indiana: Indiana Secretary of State
- Iowa: Iowa Secretary of State
- Kansas: Kansas Secretary of State
- Kentucky: Kentucky Secretary of State
- Louisiana: Louisiana Secretary of State
- Maine: Maine Secretary of State
- Maryland: Maryland Secretary of State
- Massachusetts: Massachusetts Secretary of State
- Michigan: Michigan Dept. of Consumer & Industry Services
- Minnesota: Minnesota Secretary of State
- Mississippi: Mississippi Secretary of State
- Missouri: Missouri Secretary of State
- Montana: Montana Secretary of State
- Nebraska: Nebraska Secretary of State
- Nevada: Nevada Secretary of State
- New Hampshire: New Hampshire Secretary of State
- New Jersey: New Jersey Division of Revenue
- New Mexico: New Mexico Secretary of State
- New York: New York Dept. of State
- North Carolina: North Carolina Secretary of State
- North Dakota: North Dakota Secretary of State
- Ohio: Ohio Secretary of State
- Oklahoma: Oklahoma Secretary of State
- Oregon: Oregon Secretary of State
- Pennsylvania: Pennsylvania Department of State
- Rhode Island: Rhode Island Secretary of State
- South Carolina: South Carolina Secretary of State
- South Dakota: South Dakota Secretary of State
- Tennessee: Tennessee Department of State
- Texas: Texas Secretary of State
- Utah: Utah Division of Corporations and Commercial Code
- Vermont: Vermont Secretary of State
- Virginia: Virginia State Corporation Commission
- Washington: Washington Secretary of State
- West Virginia: West Virginia Secretary of State
- Wisconsin: Wisconsin Department of Financial Institutions
- Wyoming: Wyoming Secretary of State
What Role Can State Laws Play in Trademark-Related Issues?
While state laws can offer companies trademark registrations that are state-specific, they can also help with important purposes when it comes to anything related to unfair competition law. Federal statutory scheme and state dilution laws exist alongside each other, which give varying standards of liability that are based on more varied and extensive bodies regarding historical case law. State common law tends to fill in registration gaps when it comes to enforcement proceedings. They also provide different theories of liability, along with consumer protection and statues.
There are other state statutes that offer extra remedies past those that are only available under the Lanham Act. Rights of publicity only come from state law. State contract law gives the framework for state tort law and trademark agreements and rule claims of trade libel, licensor liability, tortious interference, and a variety of other issues that can come up in the area of using trademarks commercially.
Why Have a State Trademark?
Each state has its own laws that govern trademarks, such as how to register a trademark in the state to give it maximum protection. There are variations in each state for trademark laws. However, almost every state has some kind of version of the Model State Trademark Bill. This was created to be the standard for making sure state trademark laws and federal trademark laws are in line with each other.
A state trademark registration can be more helpful for local business owners than a federal trademark registration is. This is due to it having trademark protection that's comparable to federal registration at a more inexpensive cost.
What Are the Basic Trademark Rights?
Trademark rights can be received in any distinctive symbol, word, or phrase that shows the source of a specific product. Being able to use the new trademark legally and exclusively is done by having the trademark in commerce. It's not necessary to register to get trademark rights, whether it's at the state or federal level. However, registering the trademark gives the owner extra rights and legal protection with the trademark.
What Are the Situations Where State Registration May Be the Only Option?
A trademark application can be sent to the USPTO and will get examined against every trademark registered in the nation. If it appears a trademark may conflict with one that was registered previously, it's almost certain that rejection of the application will occur. This is true even if the registered trademark isn't in use in the current state the applicant plans on doing business in. The only choice at this point is for the applicant to register on the state level.
What Is a Service Mark?
A service mark is a name, device, word, symbol, or any combination of these that a person uses to distinguish and identify his or her services from another person, as well as refer to the source of the services. The service mark shows that every service provided that's related to the mark come from identical sources.
How Do I Get Rights to a Mark?
You obtain common law ownership rights to a service mark just by using the mark in relation to the relevant services or goods. The mark does not need to be registered to get common law rights to it.
If the mark is used in interstate commerce, you can apply to the United States Patent and Trademark Office to register it. Registering it with the USPTO lets the rest of the country know you're claiming ownership of the mark, and it forms the legal presumption that you've been giving the exclusive right to use it around the nation in relation to relevant services or goods.
Need Help with a State Trademark?
Trademark law can be tricky and complex. Many people don't know whether to pursue a state trademark, a federal filing, or even if they need a trademark at all. It can be very helpful in any issue of intellectual property to have help from an excellent attorney who specializes in the field.
At UpCounsel, we maintain a database of the top lawyers in trademarks and related fields, representing many decades of combined experience and the very best educational institutions from Harvard to Yale. Post your legal need for help on your intellectual property issues today.