Lawyers often talk about the benefits of federal trademark registration. Federal registration bestows upon the trademark owner the ability to bring infringement actions in federal court, it provides evidentiary presumptions about use and validity of the mark, it bestows a presumption of incontestability (after 5 years), it provides constructive notice that the mark is yours, and federal law provides certain statutory remedies unavailable at common law. But what about registering your mark under state law? What benefits accrue to state registration when the benefits of federal registration are so sweeping? There are some, but not many.
State registration may be important if the owner is making purely intrastate use of its mark. In fact, the first requirement of registering your mark in a state registry is that you are using the mark in that state. Another benefit of state registration is cost. To file a trademark registration with the United States Patent and Trademark Office, the fee ranges between $275 and $375 per class of goods and services depending upon the type of application filed. In Pennsylvania, for example, the registration fee is $50.00, renewable every five years. Other states’ fees are similar.
Registering your mark in a state registry, by providing a public record, also gives notice to potential registrants that you are using your mark. For example, the state registration will be revealed in trademark searches run by other potential users. Because trademark rights are tied to first use under United States law, evidence of first use is critical to prevailing in a trademark action. Thus, state registration may also establish prior use of the mark in an infringement action. It is worth noting, however, that trademark rights, while based upon use, are also tied to the geographic area in which the trademark is being used. So where a state registration is evidence of priority, it only extends to the state in which it is registered. State registration, therefore, may not be appropriate for businesses that conduct interstate activities or sell goods and services over the Internet to customers in other states.
Compared to the benefits of federal registration, the level of protection you receive from a state registration is limited. Perhaps, the best reasons for registering a trademark on the state level is where the owner’s business activities are local and use by others of similar marks in other states is not important; and where the owner has limited financial resources but desires some level of protection. For any other situation, federal trademark registration provides more protection.
— Adam G. Garson, Esq.
