The Difference Between State and Federal Registration

A trademark can be registered at a state or federal level. The requirements and the registration process were reviewed in the articles Federal Registration and State Registration. It was also noted that the scope of the rights and protection differs significantly between the two.

State registrations are cheaper and less time consuming than federal ones. However, the registration provides protection only within the state in which the mark is registered. State registration is available to the marks that are used in commerce within the state. Applicants don’t receive nearly as many rights and protection with the state registration as the federal one affords. The rights can only be enforced in the area in which the mark is being used. For example, the owner of the slogan to a restaurant chain “Eat and Be Merry,” would have an exclusive right to use this slogan only in the geographical area in which the restaurants are located.

Federal trademark registration is available for the marks that are either used in commerce or intended for use in commerce, both across the states and between the U.S. and other countries.

What rights and protection does the federal registration give that the state one does not?

  • Federal registration grants the presumption of validity and ownership of a trademark while state registration grants rights similar to the common law rights. Common law trademark rights are granted to the individuals or companies that utilize that particular trademark in commerce before other market participants. First in place – first in right. So it may open the door to the arguments of who was the first.
  • Federal registration protects the mark in all 50 states. It grants the trademark owners exclusive nationwide rights to use the mark in connection with the goods/services set forth in the registration documents and execute licenses to others for its use at the owners’ discretion.
  • All federally registered trademarks are in the USPTO database. It gives constructive notice nationwide of the trademarks owners’ rights and puts the public on notice of the exclusive rights associated with the mark. That in turn prevents inadvertent infringement and/or serves as a strong argument in court in case of intentional infringement.
  • Federal registration can be used as a basis for obtaining registration in foreign countries. It may be filed with the U.S. Customs Service to prevent exportation of infringing goods to foreign countries.
  • Federal registration helps to prevent others from taking advantage of the trademark’s publicity by infringing the original mark, counterfeiting, operating under similar or confusing marks or committing other actions which may be detrimental to the trademarks owners.
  • Federal registration enables owners to sue for infringement and invoke jurisdiction of federal courts.
  • Federal registration allows the owners to claim statutory treble damages, disgorgement of profits, and costs for willfulness which by itself may prevent many potential infringers.
  • Federal registration allows owners to use the registered symbol ® to indicate the exclusive ownership rights.
  • Overall, it is an incontestable evidence of the mark’s ownership.

U.S. Trademark and Copyright Law was developed to ensure that intellectual properties contribute to the development of the country’s economy and to encourage innovation and entrepreneurial spirit. Therefore, it is strictly protected and enforced in the country.

Leave a comment

Make sure you enter all the required information, indicated by an asterisk (*). HTML code is not allowed.