There are basic advantages of both state and federal trademark or service mark registration. The following is a break-down of the main differences between both and some key advantages associated with federal trademark registration.
State vs. Federal Protection
State registration will provide a much more cost-effective way of obtaining the protection your business needs. However, registration of your mark at the State level will prevent other businesses from using the same or a confusingly similar mark in commerce only within the State of registration. Each state requires that your business establishes use of its mark in commerce before you may seek registration. You cannot obtain protection for merely intending to use the mark in commerce in the future. Registration can be made with the Secretary or Department of State by filing a registration form and the filing fee is usually nominal. Additionally, it takes a matter of a few weeks for registration to become finalized, providing an advantage over Federal registration.
Internet based and interstate businesses should seek federal trademark registration for their marks. Federal trademark registration provides the most protection available under United States law. Federal registration grants exclusive rights and marks receive protection nationwide, regardless of the actual geographic use of the mark. A trademark must be used to offer goods or services for sale in more than one state to qualify for Federal trademark protection. In other words, it must be used in interstate commerce. Federal registration typically costs much more than State registration and requires a search of multiple State business databases and directories, and the USPTO Federal database. Businesses offering products or services through the internet to a national customer base should consider Federal registration. This can be done either once the business has established use of the mark in commerce, or via an “intent-to-use” application filed with the United States Patent and Trademark Office (USPTO).
The main advantages to Federal registration of your mark can be summarized as follows:
- Protection from the Date of Application– Once the mark is registered at the Federal level, the applicant’s trademark rights relate back to the date of the trademark application and gives the registrant priority over any party attempting to adopt the mark afterwards. But, if another business has already been using the same trademark in a geographic area, federal registration obtained by you later cannot stop their use in that area. However, registration will prevent them from being able to use the name in additional geographic areas;
- Higher Award of Damages– In certain instances, deliberate infringement can lead to an award of special or treble damages beyond the amounts able to be recovered under common law, and including an award of attorney’s fees;
- Your Mark is Incontestable- If the mark is used continuously for five years, it may become incontestable. This basically limits the defenses that an infringer can use to challenge any claim you may make;
- Warning Shot to Others– Registered marks are easily found in trademark and service mark searches, providing an immediate and clear warning not to use a confusingly similar mark;
- Restricts Confusing Imports- Foreign goods that bear infringing marks may be blocked at U. S. Customs from entering the United States, if the registrant of the mark is a U.S. citizen;
- Evidentiary Advantages- A registered mark enjoys a presumption of ownership with the registered party, and other evidentiary advantages, should you ever have to file a claim for infringement;
- Right to Use Federal Symbol ®- You are permitted to place the ® symbol next to any federally registered trademark. This symbol puts the world on notice of your ownership and the registered status of the mark. This can be a powerful deterrent;
- Clarifies Ownership- Trademarks and other intellectual property rights can be important assets in the sale of your business. Registration of your mark(s) greatly simplifies the due diligence process since any competent buyer would want to confirm ownership of each business asset.
Simply stated, Federal registration of a trademark provides much broader protection of that mark in commerce. State registration only protects that mark insofar as it is used in State commerce. Most businesses that only conduct business within a single state should probably file for state trademark or service mark registration only. However, even those businesses need to carefully consider their potential for interstate growth.
In addition to State and Federal trademark and trade name protection, your mark may be eligible for International protection under the Paris Convention or Madrid Agreement. The United States is a member of the Paris Convention for the Protection of Industrial Property. This covers patents and trademarks. The Paris Convention only offers limited assistance since an applicant must file and pursue separate registration in each member country. However, under the Madrid Agreement (specifically under the “Madrid Protocol” adopted in 1989), trademark owners may secure trademark rights in other member countries by a single filing with their home country’s trademark office.
The Madrid Protocol provides a cost-effective way for trademark holders to ensure protection of their marks in multiple countries. The Madrid Protocol also simplifies the subsequent management of the mark. All changes in ownership or in the name or address of the holder are done through a single filing with the World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all member countries.
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