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Should You File a State Trademark Application

What about filing a state trademark application?  This is a common question when considering protection for your business name and brand. 

While a federal trademark registration gives national protection to a trademark or service mark owner, this avenue is not always available because of the requirement of use in interstate commerce or other factors. In these cases, a state trademark registration may be advisable.

state trademark application flagTo acquire trademark and/or service mark registration at the state level, a trademark application is filed with the state trademark office, which is usually operated by the secretary of state of the specific state. You can often find trademark application instructions on the Secretary of State website for the state in which protection is sought. State trademarks are handled on a state by state basis, and you must get information from each state individually and follow their guidelines for registration. Findlaw maintains a national index of State Trademark Application websites that may be helpful if you have trouble finding your state’s information through a search engine.

You can usually file for a state trademark in each state where the trademark is used. However, you should consult with an attorney concerning the details, especially if you are aware of potential conflicts with a federal registered trademark.

You should be aware that approval of trademark application on the state level does not guarantee that the trademark is available for use even in that state if there is a conflict with another common law trademark or a federal trademark. This is why a professional trademark search is good to have for all trademarks, whether state or national. Also, the state trademark office does not search the records of the federal register or other states. You cannot rely on a state registration to determine availability of your trademark for use or whether you are infringing on someone’s mark.

After a state trademark application is filed, the Secretary of State or other examining authority in your state will review the application that you have filed. If all of the statutory requirements have been met, the examination will result in issuance of a certificate of registration in the state. The state will update their database with your trademark’s information. This will provide a level of notice to the public and evidence of trademark protection. Further, the state trademark office will search this data when examining future trademark applications within that state, which can prevent future conflicts with state trademarks.

You may register both trademarks and service marks on the state level. State’s require a filing fee, but the fee is usually lower than the fee for filing a national federal trademark application. For example, the fee in Georgia is $15.00, which is non-refundable regardless of whether the trademark registration is successful.

You can handle the filing of a state trademark registration yourself. The reasons for seeking legal advise remain though with regard to clearance and review of potential conflicts. State trademark office web sites will provide all of the forms and instructions for filing the initial trademark application. The instructions will also be provided for renewal and assignment of trademarks. The applications are examined to ensure that they do not create a likelihood of confusion with another trademark registered in that state and that the application and mark comply with all formalities.

Does a State Trademark Application Protect You?

Not much! State trademark registration does not protect your trademark like a federal trademark registration does. On the state level trademark and service mark protection is acquired by a person or entity’s use of the mark in connection with the sale of goods or services. The protection is obtained automatically under state common-law principles.

Benefits of a State Trademark Registration

A state trademark or service mark application provides two possible benefits. Notice and evidence.

With regard to notice, the state registration provides actual public notice through listing in the state register database. This database makes the mark available for public scrutiny at a central location managed by an official government agency. This helps the trademark owner show others his intent to have exclusive ownership of a mark for particular goods or services. This also helps the potential application that wants to find out if their new trademark conflicts with a mark already used in the state. Unfortunately, most common law trademark owners within a state probably do not ever file a state trademark application.

State registration of a trademark or service mark may also be used as evidence in the event that a trademark infringement lawsuit is filed by the owner of the mark. The weight of this evidence may vary depending on the state’s laws and the factual circumstances. You will definitely need to consult a lawyer in the event of infringement to determine the value of state trademark registration.

No “Intent to Use” State Application

You cannot file an application for a trademark or service mark registration in a state before you are actually using the trademark in commerce. In other words, you will need to sell or offer goods or services for sale, and identify the goods or services by your trademark mark before you file a state trademark application. If you have a compelling interest in filing a trademark application before disclosing a new trademark, you should consider filing a federal “intent to use” trademark application. Otherwise, consider filing your state trademark application quickly, as there is no minimum period of time that a mark must be used prior to registration. Put your mark into use and then file an application for registration immediately thereafter.

Consider Federal Trademark Registration

Trademarks that are registered on the state level can still be registered federally with the United States Patent and Trademark Office and even internationally when used in other nations. For more information, check out our section on how to file a federal trademark application.

Requirements for State Trademark Applications

Besides the filing fee, the application must be fully completed with accurate information about ownership, description of goods or services, and class designation. Also, specimens and copies showing use of the mark must be submitted with the application. Some states require more than one specimen, but usually these specimens can be copies of the same one.

State trademarks are filed in classes just like federal applications. However, the classes may be given different descriptions and class numbers than used by the federal government. Whereas several classes can be designated on a single federal application, states may require that separate applications be filed for each class of goods or services that the mark is used with.

The effective term or life of a state trademark registration is determined by each individual state and can be renewed for additional terms, usually by payment of a fee. In Georgia the initial term of a state trademark registration is 10 years.

Conclusion

You should always consider federal trademark registration as an important option for protecting your brand. Federally registered trademarks have many advantages that State trademarks cannot offer. Finally, you should indicate to the public that your mark is protected by using the symbol TM because statement trademark rights are established through state common law. You cannot use the circle (R) registered trademark symbol unless you have registered your trademark through filing a federal U.S. trademark application.

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