This blog post follows the previous post called “Identify Your Trademarks.”
THIS LINK to go to that post. After you identify the trademarks you would like to protect, you next want to determine whether you want to protect particular marks through the state or Federal registration process. Our firm can assist with both. If you are using particular marks in association with products or services in the public sphere with a focus on marketing to customers or clients, evaluate whether the marks are distinctive and whether you want to register the marks. A successful registration will provide exclusive rights to use the mark(s) in the jurisdiction in which they are registered, subject to any prior use common law rights.
Registration can help you protect a mark and avoid issues that might otherwise arise. For example, if you do not register your mark and another party meanwhile registers the same or a similar mark, you might be limited to use of your mark in the territory in which you were using it when the other filed mark registers. This scenario can create significant roadblocks for a growing brand and result in a need to rebrand, which can be expensive and time consuming.
If you only do business in your current state, you may elect to register through the State trademark registration process. Most state trademark registrations are simply notice registries and the application is not evaluated by the state. You simply fill out a form, pay your fee and then the mark is registered on the state trademark database. This is an inexpensive way to seek registration if your business does not cross state borders. If your business is of the nature that it could cross state borders or is commerce that is deemed interstate (i.e. you sell into other states or you operate a restaurant that has patrons from out of state), I strongly recommend Federal trademark registration. Federal trademark registration provides a presumption that you have the exclusive right to use that mark in association with the listed goods and services throughout the United States. Such trademark coverage is much stronger and provides room for growth in your brand. There are a number of advantages of Federal registration over relying on common law rights. The top three advantages are exclusive priority rights in the mark, efficiency in enforcement, and it is less expensive to manage a Federal registration over 50 different state registrations. You can also claim priority to your Federal trademark registration for purposes of filing outside the United States, as long as you file within 6 months of filing your United States trademark application.
We can provide counsel regarding whether to protect you mark(s), at what level, and which marks you would like to protect. Just send us an email at firstname.lastname@example.org to me, Ted, or a call at 503-439-6500 or 512-920-1899.