Intellectual Property Law

Is State Trademark Registration Appropriate for Your Mark (Part 1)?

By Michael Atkins

Don’t buy more than you need. For some trademark owners, getting a state registration is just as good as — and sometimes better than — getting a federal registration issued by the U.S. Patent and Trademark Office. This post summarizes the advantages of state rather than federal registration. Tomorrow’s post will look at the downsides.

So why would a trademark owner consider forgoing federal registration in favor of registration in one of more states?

Here are the most common reasons:

• It’s cheaper. Federal registration typically costs $325 in filing fees for each class of goods or services. State registration usually costs a lot less. In Washington, it’s only $50. Maintenance fees, such as filing affidavits of use, also typically cost more at the federal level in comparison to what states charge.
• It’s quicker. A federal registration can take a year or longer. A state registration often issues within a few months.
• It’s easier. The U.S. Patent and Trademark Office employs examining attorneys to vet trademark applications. Most states do not. Therefore, applications that might not pass federal muster often can be registered at the state level — as long as the exact mark has not already been registered. The federal system also gives third parties an opportunity to object to an application if they believe registration would harm them, whereas most state systems do not. Moreover, a mark that is not used in interstate commerce cannot be federally registered. The threshold is lower for state registration. As long as a mark is used in State X, it should be registrable in State X unless some other bar exists.
• It offers statewide protection. A state registration is usually considered prima facie evidence that the trademark is valid; of the registrant’s ownership of the trademark; and of the registrant’s exclusive right to use the trademark in in the state in connection with the goods or services specified in the certificate. See, e.g., RCW 19.77.040. If a mark is used solely or primarily within the bounds of a state, getting a registration in that state may offer all the protection an owner needs. Similarly, an owner that only uses its mark in one region may find adequate protection by registering its mark in each state in which the mark is used. 
• It offers regional dilution protection. The Lanham Act now requires that a mark be famous on a nationwide basis to qualify for federal protection against dilution. Gone are the days of niche market fame. However, owners of marks that are famous locally or in a particular niche market may be able to get protection through state anti-dilution laws.
• It can provide for attorney’s fees. The Lanham Act only provides for an award of attorney’s fees in “exceptional circumstances.” State trademark statutes tend to be more liberal in allowing for an award of fees to the prevailing party. In Washington, for example, fees are awarded at the court’s discretion. See RCW 19.77.150.

Full post as published by Seattle Trademark Lawyer on July 20, 2008 (boomark / email).