Federal Trademark vs. State Trademark – Should I Register My Trademark with the USPTO or My Local State Agency?
As a trademark attorney, I often get asked about the differences between state trademarks and federal trademarks. It’s important to understand these differences if you’re thinking about protecting your brand and its intellectual property.
Here, I’ll explain what a state trademark is, what a federal trademark is, disadvantages of a state trademark, advantages of a federal trademark, when it’s best to pursue a state trademark, when it’s best to pursue a federal trademark, how to get a state trademark, how to get a federal trademark, and why an experienced trademark attorney should be hired to help register a federal trademark with the United States Patent and Trademark Office (USPTO).
What is a State Trademark?
A state trademark is a mark that is registered with the state’s trademark office. State trademarks protect a business’s name, logo, or slogan in the state where it’s registered. They’re typically cheaper to register and maintain than federal trademarks, and they offer some protection against infringement within that particular state. However, there are some significant disadvantages to relying solely on a state trademark.
Disadvantages of a State Trademark
- Limited Protection – A state trademark only protects your brand in the state where it’s registered. If your business expands to other states or even globally, you won’t be protected in those locations.
- Lack of Nationwide Priority – A state trademark doesn’t provide nationwide priority over others who might want to use a similar mark. That means another business could use a similar mark in a different state, and you might not have legal recourse to stop them.
- Difficulty in Enforcing – Enforcing a state trademark can be challenging and costly, especially if the infringement is occurring in a different state.
- Limited Benefits – A state trademark doesn’t provide as many benefits as a federal trademark, including protection against infringing imports, enhanced damages, and the ability to file a lawsuit in federal court.
When Is It Best to Pursue a State Trademark Instead of a Federal Trademark?
- You have a local business – If your business operates primarily in one state, a state trademark may be sufficient to protect your brand. It provides protection within that state and may deter others from using a similar mark.
- You have a limited budget – If you have a limited budget, a state trademark is less expensive to register and maintain than a federal trademark. It’s a more cost-effective option for businesses that don’t have the resources to pursue a federal trademark.
- You don’t plan to expand your business – If you don’t plan to expand your business beyond the state where you’re registered, a state trademark may be sufficient to protect your brand. It provides protection within that state and may deter others from using a similar mark.
- Your brand isn’t unique – If your brand isn’t unique or you don’t anticipate copycats, a state trademark may be sufficient to protect your brand within the state. It provides some protection against infringement and may deter others from using a similar mark.
How Do I Get a State Trademark?
Getting a state trademark involves a process of registering your business’s name or logo with the state government where you conduct business. Here are the general steps to follow to obtain a state trademark:
Step 1 – Choose a Unique Name or Logo
Before applying for a state trademark, you need to choose a unique name or logo that is not already in use by another business in your state. You can conduct a search on the state’s trademark database to ensure that your chosen name or logo is available.
Step 2 – Check If You Are Eligible
Each state has its eligibility requirements for obtaining a state trademark. In general, you need to have a business entity registered with the state, such as an LLC or corporation, and conduct business within the state.
Step 3 – Submit an Application
Once you have chosen a unique name or logo and determined your eligibility, you can submit a state trademark application to the appropriate state agency. The application typically requires information about your business, such as your business name, address, and the mark you wish to register.
Step 4 – Pay the Registration Fee
The state trademark registration fee varies by state and can range from a few hundred to several hundred dollars. You will need to pay this fee when you submit your application.
Step 5 – Wait for Approval
After you submit your application, the state will review it to ensure that it meets all eligibility requirements and doesn’t infringe on another business’s trademark. If the state approves your application, you will receive a state trademark registration certificate.
What is a Federal Trademark?
A federal trademark is a mark that is registered with the United States Patent and Trademark Office (USPTO). Federal trademarks protect a business’s name, logo, or slogan nationwide, giving the owner exclusive rights to use the mark in commerce. They’re more expensive to register and maintain than state trademarks, but they offer significant advantages over state trademarks.
Advantages of a Federal Trademark
- Nationwide Protection – A federal trademark provides protection for your brand in all 50 states and U.S. territories.
- Nationwide Priority – A federal trademark provides nationwide priority over others who might want to use a similar mark, even if they’re in a different state.
- Easy to Enforce – Enforcing a federal trademark is typically easier and more cost-effective than enforcing a state trademark, especially if the infringement is occurring across state lines.
- Enhanced Benefits – A federal trademark provides enhanced benefits, including protection against infringing imports, the ability to seek enhanced damages, and the ability to file a lawsuit in federal court.
- Valuable Asset – A federal trademark is a valuable asset that can increase your brand’s value and provide licensing opportunities.
When Is It Best to Pursue a Federal Trademark Instead of a State Trademark?
- You plan to expand your business – If you plan to expand your business beyond the state where you’re registered, a federal trademark is the way to go. A federal trademark provides nationwide protection and priority, ensuring that your brand is protected in every state.
- Your brand is unique – If your brand is unique, it’s essential to pursue a federal trademark to protect it from copycats. A federal trademark provides broader protection and is more likely to deter others from using similar marks.
- You want to increase the value of your brand – A federal trademark is a valuable asset that can increase the value of your brand and provide licensing opportunities. It can help your business stand out from competitors and attract customers.
- You plan to sell your business – If you plan to sell your business in the future, a federal trademark is more valuable to potential buyers than a state trademark. It provides broader protection and greater value for your brand.
How Do I Get a Federal Trademark?
Getting a federal trademark involves a process of registering your business’s name or logo with the USPTO.
Registering a Trademark Step-By-Step Guide
Here are the general steps to follow to obtain a federal trademark:
Step 1 – Choose a Unique Name or Logo
Before applying for a federal trademark, you need to choose a unique name or logo that is not already in use by another business. You can conduct a search on the USPTO’s trademark database to ensure that your chosen name or logo is available.
Why You Should Invest in a Trademark Search Before Applying for a Trademark
Step 2 – Check If You Are Eligible
To be eligible for a federal trademark, you must use the mark in commerce across state lines or intend to use the mark in commerce in the near future. You also need to ensure that your chosen name or logo does not infringe on another business’s trademark.
Step 3 – Submit an Application
Once you have chosen a unique name or logo and determined your eligibility, you can submit a federal trademark application to the USPTO. The application requires information about your business, such as your business name, address, and the mark you wish to register.
Step 4 – Pay the Registration Fee
The federal trademark registration fee varies depending on the number of classes of goods and services for which you register your mark. The fee can range from a few hundred to several thousand dollars. You will need to pay this fee when you submit your application.
Step 5 – Wait for Approval
After you submit your application, the USPTO will review it to ensure that it meets all eligibility requirements and doesn’t infringe on another business’s trademark. If the USPTO approves your application, you will receive a federal trademark registration certificate.
Consult With an Experienced Trademark Attorney to Ensure That Your Trademark Is Properly Registered and Fully Protected
While state trademarks can be useful in some situations, they lack the comprehensive protection and nationwide priority that a federal trademark provides. Federal trademarks offer numerous advantages, including nationwide protection, nationwide priority, easy enforcement, enhanced benefits, and increased brand value. If you’re serious about protecting your brand and its intellectual property, a federal trademark is the way to go.
As always, it’s essential to consult with an experienced trademark attorney to ensure that your federal trademark is properly registered and fully protected. We can be reached at 1 800-651-7301, via email at info@trademarkattorneyslosangeles.com, or through our contact form below. One of our attorneys will get back to you within 24 hours of your submission to schedule a phone consultation, virtual meeting, or an in-person meeting with you. We look forward to hearing from you!