A trademark – whether a name, logo, packaging design, tagline, or slogan – is at the center of any company’s branding efforts and can be one of its most valuable assets. Like any important asset, a trademark warrants protection to preserve its value and keep others from diminishing or exploiting it for their own purposes. That is why trademark registration is essential for any business trying to establish itself and its brand.
But there is more than one way to register a trademark. While most people are familiar with federal trademark registration through the U.S. Patent and Trademark Office (USPTO), that is not the only game in town. You can also register your trademark with the state where your company is located and using the mark. For example, businesses that use their mark in commerce in Michigan can obtain a state registration from the Corporations Division of the state’s Department of Licensing and Regulatory Affairs.
Federal trademark registration and state registration are not mutually exclusive, though obtaining a federal registration usually deletes the need for a state one. But federal registration and state-level registration are not created equal. There are significant differences in the protections afforded by each type of registration and the complexity and costs involved in applying for registration.
So, what are the differences between federal and state trademark registration, and which one is right for your business and mark?
Advantages of Federal Trademark Registration
If you want the strongest, broadest protection for your mark and may use it outside your immediate geographic area, there is no substitute for registering your trademark with the USPTO.
There are several advantages to federal registration that a state registration cannot provide. Perhaps the most fundamental distinction between the two is that a federal registration protects your rights and your trademark throughout the entire United States (including its territories and possessions), while a state registration provides no protection beyond its borders.
Additional benefits of federal trademark registration include:
- Deterrence of infringement. A federally-registered trademark is listed in the USPTO’s database of registered and pending trademarks. It provides the public, including people or companies looking to use or register a similar mark, notice of the mark’s registration, the goods and services with which it is used, and the dates the owner applied for and received trademark registration. Seeing a registered mark can deter other parties from using a confusingly similar mark that may lead to an infringement claim.
- Presumption of ownership. Federal registration creates a legal presumption of ownership of the mark and the right to use it. If those rights become an issue in litigation, the registration certificate proves ownership without needing to present other evidence to support the claim.
- Filing before actual use of the mark. A federal trademark application can be filed even before the mark is used in commerce. Filing on an “intent to use” basis allows an owner to get the ball rolling on registering their mark and securing an earlier filing date.
- Foreign registration. While a federal registration is no guarantee of registration in another country, it can be the basis of seeking such protection.
- Access to federal court. Federal registration allows an owner to pursue infringement and other claims in federal court.
- Use of federal trademark symbol. The owner of a federally registered mark can use the federal trademark registration symbol, ®, with the mark, which may deter others from using the trademark or one too similar to it.
State Trademark Registration
Registering a trademark with a state creates rights and protections in that state only. The mark will not be protected if the owner uses it in other states where it isn’t registered. Like most states and unlike the USPTO, Michigan requires an applicant to demonstrate actual use in commerce when applying, and a state registration does not confer the right to use the ® symbol. It cannot form the basis of a foreign registration, and it does not secure access to federal court.
Why Apply for a State Trademark Registration?
For companies that do not currently or have no intention of using their mark outside their immediate area, federal registration may not be necessary or available. The requirements for federal registration and its application process are much more complex and stringent than for state registration. This includes demonstrating the mark’s current or future “use in commerce,” which means, among other things, using the mark across state lines. Additionally, the fees for applying for federal registration are significantly higher than for state registration. Federal registration fees (not including any attorney’s fees incurred preparing and prosecuting the application) run between $250-$750, while applying for a mark in Michigan costs $50.
The best way to determine which trademark registration path is best for your business is to meet with an experienced trademark attorney. If you have questions about how and where to register your mark, please contact the trademark attorneys at The Dobrusin Law Firm for assistance.