Trademarks: Should You Register at the State or Federal Level?
Businesses often are faced with the choice of whether to register a trademark or service mark with a state or the United States Patent and Trademark Office (USPTO). It is well known that state registrations tend to be less expensive and often take less time to apply for and receive confirmation that the mark has been registered. However, there are key benefits to registering your trademark with the USPTO. Today’s post highlights those key benefits of federally registered trademarks and service marks, and provides helpful resources for registering your trademark at the state and federal level.
The Lanham Act
First, let’s start with the basics. Under the Lanham Act, a person who obtains a federal registration that predates another person’s use of the same (or confusingly similar) mark has superior rights to use the mark throughout the U.S. This is true regardless of whether the person has obtained a state registration or was the first person to use the mark in the state. Courtesy of the Supremacy Clause, a federal registration will always trump a state registration if there is any conflict between the two.
If any mark is currently registered or its registration is pending, it is possible that the USPTO may issue a “likelihood of confusion” refusal when you file your trademark application. Likelihood of confusion exists between trademarks when the marks are so similar and the goods or services for which they are used are so related that consumers would mistakenly believe they come from the same source.
Each application is decided on its own facts, and there is no strict mechanical test for determining likelihood of confusion. To determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences. Keep in mind that in order to find a likelihood of confusion, the marks do not have to be identical. When marks sound alike when spoken, are visually similar, or create the same general commercial impression in the consumer’s mind, the marks may be considered confusingly similar. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods or services. It is important to complete a thorough search in order to determine whether there is any confusingly similar mark already in use prior to submitting your trademark application. Generally, the USPTO filing fees (see below) are non-refundable even if your trademark application is rejected.
Right to Use the Mark Across Entire U.S.
A person or business that owns a registered trademark has the right to use that mark in the U.S., including in states where a subsequent (“junior”) state mark is registered. Once the federal registrant enters the junior’s market area, the junior must cease to use the mark. Furthermore, the federal registration itself is constructive notice of the right to use the mark across the entire U.S.
As is usually the case in law, there’s an exception. The exception exists when the state mark was registered prior to the federal mark. If the state mark was in use before the date of the first use of the federally registered mark, the prior state mark holder may have some rights to use the mark. Those rights are limited to a certain geographical area, usually the state where the mark is registered and used. State registrations tend to serve as evidence for a prior use in order to establish rights to the mark in the states where it was registered.
Common Law Trademark Rights
Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. But common law trademark rights are not preferred, as they extend only to the places where a trademark has been used in commerce. Furthermore, they do not afford the level of protection that a federally registered trademark receives, such as the ability to recover profits, statutory damages, attorneys fees, treble (triple) damages for willful infringement, national priority, and the right to use the ® to give notice of rights in a mark. Some business owners are deceived by the idea of common law rights, when in actuality there aren’t many “rights” associated with trademarks relying solely on common law principles. Common law rights should be thought of as a right of last resort, and not relied on to enforce an individual’s use of a trademark.
Registering Your Mark at the State Level
To register your mark with the Washington Secretary of State, you will need to fill out and submit the Washington State Trademark Registration/Renewal form. It costs $55.00 to file for a new mark (unless you request the registration to be expedited, in which case it costs an additional $50.00). You are required to renew your trademark at the state level every five years for a fee of $50.00. RCW 19.77 lays out trademark laws in Washington.
Registering Your Mark at the Federal Level
To register your mark with the USPTO, you will need to file an application online through the USPTO website or you can submit a paper application to the USPTO. The USPTO filing fees range from $275 to $375 per registered class. Filing a federal trademark registration is a more complex and time intensive process that includes comprehensive trademark searches, identifying the basis for the mark, including class, design code (if applicable), and description of each good or service. We recommend working with an attorney when preparing to file a federal trademark registration.