Should I register my trademark at the state or federal level?

Businesses often ask the above questions when they are concerned with trademark protection for their name, logo, or brand.  The answer depends on a variety of factors.

In the United States, trademark rights are conferred by use of the mark.  Registration is a formal acknowledgement of pre-existing rights.  Registration at both the state and federal levels provides public notice of the businesses claim of ownership of the mark. State registrations are often simpler, quicker and more cost-effective.  One downside to state registration is that state trademark laws often provide less protection for a  registered mark than federal law.

Federal registrations, on the other hand, provide you with a legal presumption of ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the registered goods/services.  it also allows you to bring an action concerning the mark in federal court and the right to use the federal registration symbol ®.  U.S. Registration can be used as a basis for registration in foreign countries and also allows you to record your registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods.  The downsides to federal registration are that registration is more extensive, time consuming often taking several months or more to complete (the USPTO provides example timelines for the registration process here) and can be costly.

So which to I choose?

Well, it depends.   Small business or companies that operate solely within one state, have no plans for expansion and have little to no internet presence may find that registration of their mark(s) within a state is sufficient and most cost-effective.  For most companies, the benefits of registering a mark federally far outweigh those of state registrations despite the relatively minor downsides of the federal registration process.

Making this decision is not an easy decision.  It is also not a decision that should be taken lightly as your trademark is your company as we discussed in our previously post Trademark Protection:  What they call you?   Because of the numerous factors to consider in making the decision of whether to file a federal or state trademark registration, trademark owners should consult with an attorney to evaluate the benefits and drawbacks.  If you have questions regarding your trademark, please contact us at (812) 463-2056 or by email at info@wormanlegal.com.