State Trademark or Federal Trademark: Which One Is Right for You?

State trademark registration

To register a trademark with your state, you must file an application with your state's trademark office. Although requirements vary from state to state, in general you'll need to do the following:

1. Fill out a form, either online or on paper.
2. Submit a specimen and/or drawing of your trademark.
3. Pay a filing fee for each class of goods or services registered.

You typically cannot apply for a state trademark until you are actually using the mark.

Alternatives to registering a trademark with the state

By using your mark in commerce, you already have some common law trademark rights.

Registering your trademark with the state doesn’t give you much additional protection. However, state registration does create a record of the date that you began using your mark, and that record can be important if you are accused of trademark infringement or if you want to stop someone else from using a mark that is similar to yours.

Pros and cons: State trademarks

Depending on your industry, budget, and the class of your potential trademark, you may prefer to register your trademark with the state. Here are some points to remember about registering a state trademark:

Pros

Beyond the protections mentioned above, registering your trademark at the state level rather than at the federal level has some unique benefits.

• Registering a trademark with the state is less expensive than registering with the USPTO.
• A state trademark registration can usually be processed and approved more quickly than a federal one.

Cons

That said, state registration also has drawbacks.

• State trademark registration only protects your trademark in the state where you register it.
• State trademark registration does not give you the right to use the symbol ®. You may use either TM for a trademark or SM for a service mark.

Federal trademark registration

The process of registering a federal trademark is more involved. To register a trademark with the USPTO, you must fill out a form and provide the following information:

• The name of the mark’s owner
• The type of mark
• A drawing and a specimen of the mark
• A description of the goods or services the mark is used for
• The trademark class your mark falls into
• A filing basis.

You will also need to pay a filing fee. This fee will run you $350 per class if you file online through the Trademark Center and $850 for a paper filing. If you use an attorney or filing service, you can expect to pay more in exchange for increased peace of mind.

After you file: Next steps

Your trademark application will be assigned to an examining attorney. If the attorney identifies issues with your application, you may receive an Office Action requesting additional information before your registration can move forward.

Pros and cons: Federal trademarks

While the federal trademark registration procedure is unquestionably longer and more expensive than state registration, federal trademark registration offers more benefits and much greater protection.

Here are some other things to consider:

Pros

The benefits of federal trademark registration include:

• Registration creates a legal presumption that you own the trademark and have the right to use it nationwide for the class of goods or services identified in your registration.
• Federal registration supersedes state registration. If a federally registered trademark was in use before a state registered trademark, the federal registrant can stop the state trademark owner from using the mark. If the state mark was in use first, the mark’s use may be restricted to the state where it was registered.
• You can notify others of your trademark rights by using the ® symbol.
• You can file a trademark infringement lawsuit in federal court.
• You can register a trademark with the U.S. Customs and Border Protection Service to prevent infringing products from being imported.
• You can use your USPTO trademark registration as a basis for obtaining foreign trademark registrations.
• Your trademark will be listed in the USPTO’s database. This creates a public record of your mark and may help deter others from infringing upon it.
• You can file a federal application for a mark that you intend to use but are not using yet, though the mark will not actually be registered until you begin using it.

Cons

Federal trademark protection comes with many benefits, but there are a few downsides.

• Federal trademark registration is expensive. It costs more than state registration and may present a financial barrier to some.
• The complexity of the process almost always necessitates hiring a lawyer or professional service. This will increase the cost.
• The approval process for federal trademarks is incredibly strict and may involve multiple rounds of back-and-forth with the USPTO. This could possibly require additional fees.
• A federal trademark application can take anywhere from several months to a few years to process.

Which is better: State or Federal trademark registration?

Registering a trademark helps you protect your brand and your intellectual property. While federal registration offers many more benefits, you might choose state registration instead if you are short on funds and don’t ever plan to do business outside your state.

If you are unsure which is best, a trademark attorney can help you decide. Ultimately, the choice comes down to your unique circumstances.

If you're ready to register a trademark, LegalZoom can help. Get started with the trademark registration process by answering a few questions.