(Updated: February 24, 2019) As we have shared before, the laws and regulations related to trademarks, patents and copyrights can be confusing. For example, recently a SmallBusiness.com user asked us why there are state trademark offices when most trademark registrations take place at the federal level with the U.S. Patent and Trademark Office. As we always do before answering questions like this, we start with this caveat: Seek information from trusted professional advisors on an issue like this because every situation is unique and the internet (even us) provides, at best, generalities.
First things first | Don’t confuse the term “trademark” with the act of registering or licensing a company. When you register for certain state permits or licenses, you are not registering your company’s trademark.
Reasons why a small business might prefer a state trademark over a federal trademark
Reasons a small business might prefer a state trademark over a federal trademark include these:
Not qualified for a federal trademark | Federal trademarks are issued only to trademarks involved in interstate commerce (businesses that cross state lines). Therefore, if you don’t qualify for a federal trademark because you do not engage in interstate commerce, your only choice is to register your trademark at the state level.
Quicker to register than a federal trademark | Obtaining a federal trademark may take from 9 to 16 months, whereas obtaining a state registration is usually a quicker process, sometimes taking only a few weeks.
Less hassle, less expensive | Getting a state trademark is less complicated and costly than a federal registration
Reasons why a small business might prefer a federal trademark over a state trademark
Reasons a small business might prefer a federal trademark over a state trademark include these:
All things equal, federal trademark take precedence over a state trademark | Federal registration has priority over a state trademark registration if the federal registration was obtained prior to the state’s application date
Not useful in international disputes | State trademark registrations cannot form the basis for filings in other countries.
Not useful in custom disputes | A federal trademark registration can be used to stop unauthorized imports at the U.S. border, but a state trademark registration cannot.
Limited geographic protection | A state registration protects the mark–at most–within the borders of the state and does not protect the mark in the rest of the United States.
Use of the ® symbol | The owner of a federal trademark registration may use the ® symbol. A state trademark registration does not confer the right to use the ® symbol.
Links to trademark information in all 50 states