State v. Federal Trademarks
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As an entertainment law firm, we deal with all kinds of different brands, companies, musicians, artists, painters, gamers, and you tubers. One thing they all have in common is that they're approaching this industry as a business. When building your name and your logo, you want to make sure that you are protected by getting a registration for your trademark. What we find is that there is a lot of confusion in regards to the difference between a state trademark and a federal trademark. In this article, we're going to discuss the difference between state and federal trademarks.
State Registrations. When talking about state registrations, you will file with the trademark office in your state, or the secretary of state’s. It's going to differ depending on where you live. Do your research. What is common is that there is going to be some sort of minimal filing fee. For example, in Arizona, the filing fee is $10 at the time of the writing of this Article, and the process is very fast (sometimes just a few days). The benefit of a state trademark registration is that now you have protection in the entirety of your state for your trademark.
Federal Registrations. When you file a federal registration, you are filing through the United States Patent and Trademark Office (USPTO). When we say federal, we mean nationwide. If you get a federal registration, you have protection in all of the states. Another thing that you have to keep in mind is that a federal registration trumps a state registration. Even if you have a state registration, if someone has priority over you and they have a federal registration, they're going to win.
Considering the Federal Registration Process. There are a couple of things to keep in mind. First of all, it takes monumentally longer to get through the federal process. At a minimum you're looking at 6-9 months, and that's an average. Some clients are going to run into some issues because other trademarks might come up that cause some concern for the attorney who is reviewing your application at the USPTO. If that happens, you have to duke it out to try and get that registration. At this point we hope that you actually have an attorney so you're able to get through that process a little bit easier. The main point of this being that you are still looking at 6-9 months, even in a best-case scenario. Because of this investment of time and money, you have to think carefully about what marks you want to register and go through this process for.
The Financial Side. For a Federal trademark registration, it is definitely a lot more expensive than the $10 or so for the State Registrations. For a Federal Registration, you will be looking at an average of $900-$1,200 upfront. This is going to be inclusive of all the attorney time and typically one to two filing fees. The filing fees are between $225-$275, depending on what you're registering your trademark for. There is a lot more consideration that goes into this when you want to file a registration.
Benefits in getting the Federal Registration. First, we discussed that it trumps a state registration. It also gives a presumption that you are, in fact, a valid owner. For example, if you have to enforce your trademark in a court of law, you now have a piece of paper that says you are the trademark owner. It makes things go a lot easier. We’ve also found that when we're doing things like takedown notices (online), it's very quick. We can get sometimes get online infringements taken down in a matter of hours as long as you have an actual trademark certificate and you have the underlying information needed to effectuate those takedowns. Other benefits will include the right to use the ® symbol. You can use that symbol in association with your trademark if you have the trademark registration. It acts as notice to the world that you are the owner of this registered trademark. Having a federal registration also helps if you are trying to get a foreign trademark. In this instance, your registration within the United States can be a basis for getting that foreign trademark. You will also be listed in the USPTO as a registered trademark owner, so it acts as constructive notice, meaning it puts the world on notice that you are the owner.
Cons of Federal Registration. You may not have the finances for the federal registration right out of the gate. Many up and coming artists, musicians, and business owners don’t have a lot of money to spend on a federal registration, but this is a process that you want to get started as early as possible. Know that it is okay to take a baby step in this process and go for the registration in your state first. You can always work your way towards that federal registration.
Trademark rights if you don't have a registration. Those rights are subject to common law trademark rights. It basically means that if you are actually using and regularly exploiting your mark, your symbol, your logo, etc., you are building a paper trail. This paper trail allows you to oppose a registration, and we’ve seen this happen. If someone was trying to register your mark and you caught wind of it, you have a right to oppose the registration, even if you don't have a registered mark through the USPTO. This has to do with common law rights. The law still protects you, and it comes through actual use of your mark. The sooner you start using your mark, the better.
Remember to always get an entertainment attorney or someone experienced with filing federal trademark applications through the USPTO. The website and the application are very complicated. If you make a mistake, it may cause your application to be rejected and you will lose all of that time and money so please try to get some help if you can.
Video: State v. Federal Trademarks