How to Trademark: Radio Interview of Attorney Brian Hall Discussing The Difference Between Federal and State Trademark Registrations

Listen to Traverse Legal, PLC attorney Brian A. Hall talk about the differences between federal trademark registrations with the United States Patent and Trademark Office (USPTO) and state trademark registrations as well as the benefits and drawbacks of both trademark registrations.

Mr. Hall reviews the requirements of trademark registrations at the federal and state levels while reflecting upon what common elements of each.  Ultimately, Mr. Hall provides practical considerations for entities seeking a trademark registration, discusses why to choose a federal trademark registration over a state trademark registration, and expresses when a state trademark registration may be selected.

Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

DAMIEN: Good morning and welcome to the Vertio Talk Radio. Traverse Legal Radio’s Tech Spotlight.  Today we are on the phone with Brian Hall. Brian is an attorney with Traverse Legal, PLC.  Brian's practice focuses on trademark matters including trademark clearances and registrations, opposition and cancellation proceedings in front of the TTAB, licensing issues, and federal court litigation.  Brian also regularly handles domain dispute resolutions, internet law matters, and related business representation matters.  Today we are going to be talking about the difference between federal trademark registrations and state trademark registrations as well as the benefits and drawbacks of both trademark registrations.  Good afternoon, Brian, how are you doing?

BRIAN: Doing well. Thanks for having me.

DAMIEN: It’s a pleasure to have you as always.  We’re talking about trademarks and to start, does trademark mean thing we were talking about at federal and state trademarks?

BRIAN: Yes it does.  A trademark is essentially a word, symbol or phrase used to identify a particular manufacturer or seller’s product or services and distinguish them from another manufacturer or seller’s products and services.

DAMIEN: What requirements do federal and state trademark registrations have in common?

BRIAN: Well in order to acquire a state trademark registration or a federal trademark registration, the trademark must be distinctive. And when I say distinctive, the law defines distinctive to mean it must be capable of identifying the source of a particular good or service. This is where the distinctiveness continuum, so to speak, comes into play and marks that are arbitrary or fanciful, suggestive, or have acquired distinctiveness are deemed to be distinctive and worthy of trademark protection. On the other hand, merely descriptive marks or generic marks are not and will not be able to be registered on either a federal register or a state register.

DAMIEN: What are some of the difference between a federal trademark and a state trademark registration?

BRIAN: First off and probably most important is the law that applies to each of them is different. The uniformity of federal law namely the Lanham Act and Trademark Act may be preferred over different state laws that exist.  So, for example, if you file a federal trademark registration when I say that I’m meaning a federal trademark registration within the United States Patent and Trademark Office that there’s a set of laws that is consistent and uniform throughout. Whereas, if you file for a trademark in a state, let’s say Michigan, New York or California, the trademark statutes vary, and in fact they vary from state to state, but in recent years there’s been efforts to try and secure a uniform state trademark registration legislation. However, it’s not quite there yet. So when you’re looking at state law, the duration of registrations vary from state to state with 10 years being the norm, but like I said, Michigan might be 5 years or California might be 5 years; you know, where another state might be 10 years. So in some states registration might also be perpetual and in some states registration might not even be required at all.  State law versus federal law is extremely important when you’re looking at the differences. It’s also important to look at how, and more importantly, where the marks are used when determining whether you can file for state trademark or federal trademark.  State trademark registrations must be used in intra state commerce. Put another way, in order to meet the requirements for registration of a state trademark, the trademark owner must use the mark within that particular state.  So, for example, if I were to try and secure a Michigan state trademark registration for a client, it would have to be shown that the client has used that mark within the state of Michigan.  Whereas, with a federal trademark registration, requirement exists to use that mark in inter state commerce or among the states. So state trademark registration looks at intra state commerce, whereas federal trademark registration looks at inter state commerce meaning from state to state throughout the United States.

DAMIEN: Is there any other way that the federal and state trademark registrations differ?

BRIAN: Well practically speaking, cost is a major difference when you’re looking at federal versus state trademark registrations.  Federal trademark registration requires approximately $300 filing fee that goes directly to the USPTO and then you would add in attorney’s fees for preparation and prosecution if the owner chooses to go with an attorney rather than file for himself.  State trademark registration is relatively simple. It’s inexpensive and fast compared to that federal registration.  In order to secure a Michigan trademark registration, for example, a non-refundable fee of $50 is required and that trademark registration lasts for ten years.  So $300 versus $50 is a vast difference.  California, on the other hand, charges $70 and a California trademark registration lasts only five years with the option to renew it for another five years with proof of use in intra state commerce.

DAMIEN: What additional benefits does a federal trademark registration provide over the state trademark registration?  Especially in light of the cost difference?

BRIAN: The benefits of a federal trademark registration far outreach those of a state trademark registration.  For example a registration on the federal register where the USPTO establishes a rebuttable presumption that the marks are protectable or distinctive which is what we had talked about earlier. Registration of the trademark also creates a prima facia rebuttable presumption that the person who is the registered owner of that mark is in deed the owner and that the trademark is valid.  Other items such as registration on the principal register which is the main register of the USPTO shows that the ownership is not only the ownership by that person, but also the exclusive right to use that mark by that person or entity who is in deed the owner. Most importantly is probably that registration with a federal trademark office or the USPTO is constructive notice of a claim of ownership as to eliminate any defense of good faith use of that mark or adoption of the same or similar mark in connection with the same or similar services.  So really a registration with the USPTO creates a whole slue of benefits, not to mention leverage, such as a federal trademark registration with the USPTO allows you to use the big stick, so to speak, a $100,000 damages for the infringement of your trademark by a third party.

DAMIEN: So with all these benefits of having the federal trademark registration, why would a trademark owner even pursue a state trademark registration?

BRIAN: That’s a great question and it’s one that comes up often.   Let’s not forget that a state registration does afford a certain amount of benefits.  That said, it does not provide protection beyond the boundaries of the state of the registration.  Ok, so if I have a Michigan trademark that I don’t have leverage in California or some other state, if somebody adopts a trademark and starts using it there.  The trademark rights are tied to first use in commerce of a distinctive mark.  So that said there is still reasons to register a state trademark; one is if it’s impossible to obtain a federal registration for such reasons as failure to meet the interstate commerce requirement or because the mark has been held to be unregister able after trying then there’s still benefits to that state registration.  State registration creates at least a limited public record of the mark and permits the registrant to indicate that the mark is in deed registered.  So the leverage is there and there are rights that are tied to a state trademark registration, but there’re not as great as a federal trademark registration.  Finally the only that comes to mind is that some states have criminal penalties for counterfeiting mark.  Now that’s not much different than the federal law, but it’s just something else that you get for your $45 - $70 state trademark registration filing.

BRIAN:  In deed. Well thank you thank you very much, Brian, for joining us today and sharing all of this information.  Always a fountain of info when we speak to you.

BRIAN: Thanks a lot, Damien. It’s been fun.

DAMIEN:  You’ve been listening to the Traverse Legal Tech Spotlight.  We’ve been in the studio with Brian Hall of Traverse Legal, PLC.  I am Damien Allen. Thank you for joining us today.  Have a great day.

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Comments

[Marc Avila]

Thank you for this information. It was helpful to me and presented clearly.