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Trademark Guide: Federal Versus State Registration

By Stephanie Robinson

Companies are often confronted with the question of whether they should register a trademark or service mark with the United States Patent and Trademark Office or simply register their mark with a state. State registration is usually less expensive, but state law also provides less protection to a mark. Under the Lanham Act, a person who obtains a federal registration that predates another person?s use of the same (or a confusingly similar) mark has superior rights to use the registered mark throughout the United States. This is true regardless of whether the person has been granted a state registration or was the first person to use the mark in the state. When there is a conflict between a federal registration and a state registration, thanks to the Supremacy Clause, the federal registration usually wins. For instance, a prior federal mark takes priority over a subsequently registered, or ?junior,? state mark. Under trademark law, a federal registrant has a nationwide right to a mark if they have a federal registration and show a likelihood of entry into an area where a local junior user exists. The junior user may continue to use the mark in the state for as long as the federal registrant remains outside the market area. But once the federal registrant shows a likelihood of entry, the junior user must cease use of the mark. A federal registration is constructive notice that the registrant has the right to use the mark throughout the entire country (even if the registrant is not using it in a specific geographic area) and can prevent others from using the same or similar mark anywhere in the U.S. An exception to this exists when the state mark was registered prior to the federal registration. If the state mark was in use before the date of first use of the federally registered mark, the prior state user may have some rights to use the mark, but those rights would be limited to a certain geographical area, usually the state where the mark has been registered and used. A state registration may also be helpful as a means of establishing prior use of a mark. State registrations can serve as evidence for a prior user to help establish rights to the mark in those states where such a registration was obtained.

Full post as published by Business and Technology Law on February 13, 2008 (boomark / email).