In this ‘Intellectual Property Application Series,’ I’ll be discussing state trademark applications. I’ll explain what a trademark is, what a state trademark is, and what a state trademark application and registration involves. This and more will help explain why state trademarks are an important tool, which protects both businesses and consumers.
Trademarks:
A trademark is a type of intellectual property that uniquely distinguishes and identifies the source of a good. Trademarks assert an owner’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, in the market. Importantly, trademarks also convey an indication of the uniform quality expected of the goods/services it identifies. This is also known as the “good will” of the trademark. In general, trademarks are secured by a company to advertise and distinguish their products from those offered by other companies.
The word “trademark” is generally used as an umbrella term to include both trademarks and service marks. More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. The protections provided, under either a trademark or service mark, vary slightly. This is because they are specific to the classes of goods/services they protect. State trademark rights extend to both trademarks and service marks.
The word “trademark” is also generally used as an umbrella term to include both commonly protected and formally protected trademarks/service marks. The protections provided by a trademark, and the obligations to maintain those protections, vary based on the type of trademark rights governing the mark. Formally protecting a service mark would involve filing an application to register the mark federally and/or filing an application to register the mark in individual U.S. states.
Common Law Trademarks:
Common law trademark rights can be claimed as soon as a mark is officially used in commerce, to market a product/service. There is no formal application or review process to obtain common law trademark/service mark rights. Instead, the first individual to use a mark in commerce is awarded the common law rights to the mark. Appropriately, since common law rights are the easiest to claim, but provide the most limited of the trademark protections available and can be difficult to enforce. In contrast, federal and state trademark registrations provide a verifiable public record of the mark and its use in commerce.
Federal Trademarks:
To obtain federal registration, an official Application for Federal Registration of a Trademark is filed with the United States Patent and Trademark Office (USPTO). An application for federal registration undergoes the most rigorous of trademark prosecution procedures. The federal trademark prosecution process involves a review of the federal trademark application, to confirm adherence to the government filing requirements. Also during the prosecution process, the mark itself is examined to confirm it qualifies for federal protection, in accordance with strict government rules. Once the examination process is completed and the application is accepted, a formal Federal Certificate of Registration is issued and the mark is considered protected under federal trademark laws.
Only marks in current use in interstate commerce can be granted federal registration and protection. If a mark is not currently being used to market products/services, but there is a true intention to do so, the USPTO does provide the option of filing an intent-to-use based application. This option allows for an earlier application filing date and potential priority over competing marks, which could be crucial in a legal conflict over the trademark.
State Trademarks:
Like other types of trademarks, state registered trademarks are obtained in order to assert an owner’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, to market goods to consumers and to protect against unauthorized use of the mark. To obtain registration in a specific state, an official Application for Registration of a Trademark or Service Mark, must be submitted to the relevant state trademark office, generally a Secretary of State’s Office.
The application must meet the filing requirements of the state trademark office and strict filing procedures must be followed. These requirements and procedures vary based on the state trademark office in question. The trademark itself must meet the statutory requirements for registrations, governed by the Secretary of State’s Office with which registration is sought.
The protections and benefits provided by state registration can vary, but are generally governed by the Model State Trademark Bill and in accordance with the individual state’s laws. These protections are limited to the boundaries of the state in which the mark is used. The enforcement of the mark is also limited to the registered State’s boundaries.
State registration provides an official, verifiable, and public record of your ownership of a mark and the details of its use. Specifically, the date of first use. Official proof of ownership and the ability to verify details of a mark’s use could prove invaluable in enforcing the rights to a mark or defending against accusations of infringement on another’s mark. The fact that the registration is made a part of the public record gives notice to the public that the mark is in use and formally protected. The public record can also be searched by those performing a clearance search, decreasing the likelihood for inadvertent infringement.
The Trademarks Division of the individual Secretary of State’s Offices cannot provide legal advice to customers. They recommend that an attorney be consulted for any questions regarding protecting a mark or infringement upon a mark. Sound legal advice can help ensure you understand and achieve the specific legal goals intended to be gained by filing for protection or taking action to defend a mark.
State Trademark Clearance Search:
The first important step, before using or attempting to register any type of trademark, is to investigate the potential mark and confirm if it is uniquely distinctive and not already in use by another company. It is the responsibility of the potential trademark owner to confirm that their intended mark is not already in use. For this, a trademark clearance search can be performed.
A clearance search involves a dedicated search of currently used marks. A search can be attempted by an individual, but a formal search is conducted by a patent attorney, patent agent, or a person who specializes solely in these types of searches. The United States Patent and Trademark Office (USPTO) even has some advice about hiring a private trademark attorney. Thrive IP® is readily available to assist in trademark clearance searches, prosecution of trademark applications, and many other services related to maintaining and enforcing your trademark.
To conduct a formal search, an experienced professional uses specialized tools and databases to compare the mark to the millions of published and registered applications. These applications are found in the database of the Trademark Electronic Search System (TESS) of the USPTO and in the state specific State Trademark Office databases. A complete search would also include an internet search for common law marks used in online commerce.
A clearance search is performed as part of the due diligence process, before a trademark is used by a business to market their goods. Finding out if a mark is already in use or registered, could prevent a company from being sued for unintentional infringement of another’s mark. Avoiding a trademark litigation could not only save time and money, but also a company’s reputation.
Even the most in depth search may not find every similar mark that is being used in commerce. If a trademark dispute should arise, one factor considered is if appropriate steps were taken to avoid infringement of an existing mark. Any claim to a trademark, registered or unregistered, can be put at risk if there is no proof that a proper clearance search was performed, prior to using the mark in commerce. Proof that an official clearance search was performed, prior to using a mark, can support a defense that an accusation of infringement was, at the least, not malicious. In the case where a proper clearance search was not performed, common law rights may supersede either state or federal trademark rights.
State Trademark Requirements:
After a chosen mark has passed a clearance search, there are specific requirements that must be met for a trademark application filing to be accepted, and for the mark itself to qualify for state protection. The trademark application filing requirements are defined by the individual State Trademark Offices. To qualify for state protection via registration with a specific state trademark office, a potential registered mark must be distinctly unique to the individual business that is applying for its use in a specific state.
The mark must also be in current use in commerce. Unlike federal registrations, no option is provided for filing an application with only an intention to use the mark. To demonstrate current use of a trademark, the Secretary of State’s Office requires the submission of formal specimens with examples of the mark in use. An individual specimen is required for each class of goods claimed in the Application for Registration.
State Trademark Application Filing and Prosecution:
To obtain registration in a specific state, an official Application for Registration of a Trademark or Service Mark must be completed and filed. Each state provides an application form specific to the individual state. The completed form must be submitted, with related documents and fees, to the relevant state trademark office, generally a Secretary of State’s Office.
The application form must meet the filing requirements of the state trademark office and strict filing procedures must be followed. The trademark itself must also meet the statutory requirements for registrations, governed by the Secretary of State’s Office with which registration is sought. These requirements and procedures vary based on the state trademark office in question.
To obtain the state specific application form and review the individual state’s filing procedures/requirements, an applicant must consult the office in charge of administering trademarks in that state. The USPTO has provided a list of all state trademark offices and links to access them: https://www.uspto.gov/trademarks/basics/state-trademark-information-links.
While the filing requirements of a state trademark vary by state, most requirements are held in common. A completed Application for Registration of a Trademark would include the state specific application, at least one specimen showing an example of the current use of a mark, and an appropriate government filing fee. The application is used to describe the mark and how it is used, claim a date-of-first use, and provide specimens as examples of the mark in use.
In general, applications for state registration will require the application form to be signed and notarized by the trademark applicant. The trademark applicant is the owner of the mark. The Applicant can be an individual, corporation, limited liability company, partnership, association, or other person. Only a single individual or business entity may claim ownership of a mark. If the applicant is a business, the application must also include the state in which the entity was organized.
State trademark application forms also require a written description of the potential trademark. The description is required to include any wording and/or design elements of the mark claimed. If the trademark is a logo, the company name, in addition to a description of the “look” of the logo, is expected. For filing an application to register a word mark, the descriptions would simply be the word(s) attempting to be registered. The descriptions of the mark must match exactly as it appears on the specimen of use provided.
The application form further requires an indication of the Actual goods and/or services with which the mark will be used and an indication of the mode or manner in which the mark will be used. An indication of the mode/manner in which Actual goods are used would include indicating the mark would be directly applied to goods, e.g. T-shirts. A business name may be registered as a service mark and an indication of Actual services would include, letterhead, website, advertising, etc.
Still further, the application form requires an indication of the class of goods the owner wishes to offer under that mark. Each Secretary of State’s Office categorizes their list of potential goods and services into numbered classes, which can then be claimed in the application. If a mark will be used as both a trademark and a service mark, separate applications are generally required for each type of mark. As a rule, a separate government fee will also be required for each class claimed and/or each application filed.
Identifying trademarks by class helps to distinguish confusingly similar marks that are used to provide different classes of goods/services, among other things. Trademark classes identify a mark’s use in commerce. Specifically, the use of a mark identifies it and the mark’s class identifies its use. Each class is simply a broad description of how the use of a mark is intended. The literal description of the mark and its use(s), discussed previously, must be more limited than the broad class identification
Each class claimed will require a specimen of use to support the claim. A specimen of use is simply an example of proof of the mark as actually used in trade. The submitted specimen(s) must match the provided description of the mark exactly. If the color of the mark is specifically being claimed, then the specimen must also be in color.
For example, the following specimens would be considered acceptable for a trademark:
■ 3 identical photographs of the goods that show the mark on the goods; OR
■ 3 tags or labels for the goods; OR
■ 3 containers for the goods; OR
■ 3 identical photos of a display associated with the goods.
Some state trademark application forms will request that the applicant provide information on any previously filed applications for federal trademark registration. The requirement extends to indicating if an application to register any portion of the mark was ever submitted. Complete information regarding the filing date, serial number, and status of each application is required. If the application was refused or was not registered for some other reason, an explanation is necessary.
In general, applications for state registration will require a Declaration of Ownership. This standard statement will be part of the application form itself and must be carried out in the presence of a notary. By signing the application form, the Applicant agrees to all of the language in the “Declaration of Ownership,” and affirming that all information given is truthful.
Declaration of Ownership: Applicant herewith declares that he/she has read the above and foregoing application and knows the contents thereof and that the facts set out herein are true and correct, that the specimens of the mark submitted are true and correct, that the applicant is the owner of the mark, and that the mark is in use. Additionally, to the knowledge of the person verifying this application, no other person has registered this mark either federally or in this State, or has the right to use this mark in its identical form or in near resemblance as to be likely, when applied to the goods or services of another person, to cause confusion or to cause mistake or to deceive.
A state trademark application can only be submitted by mail or in person. The majority of state trademark offices do not offer an option to file applications online. In contrast, the USPTO provides a significant discounted filing fee for submitting an electronic application. State application filing fees are non-refundable.
State Trademark Application Rejection:
To be accepted, the trademark application must be completed in its entirety. An application missing any part of the required information in the application form or filed with inappropriate specimens will be rejected. Any rejected applications are sent back to the applicant with a notice of why the application was rejected. The office will give a short window to reply, generally 15 days, for the applicant to amend and resubmit the corrected application. If the applicant fails to respond with corrections to the application before the deadline, then the application will be deemed abandoned and the application fee forfeited. A new application with a new fee will need to be submitted to restart the application process.
State Trademark Registration Certificate and Maintenance:
After the completed Application for Registration of a Trademark or Service Mark is reviewed for adherence to filing requirements and the mark is accepted, the Secretary of State’s Office will issue a formal State Trademark Registration Certificate. The official Certificate of State Registration is specific to the state in which the application was filed. The protections and benefits provided by state registration are in accordance with the individual state’s laws.
Further, the Certificate of State Registration certifies that the trademark is registered in relation to the class(es) of goods listed on the certificate. To maintain the rights offered by the state registration of a trademark, the mark must continue to be used in relation to the specific class(es) represented on the official State Registration Certificate.
Unlike the USPTO, the Secretary of State’s Offices do not provide a procedure for filing a request for cancellation of a registered trademark, citing non-use of the mark. Even so, the protections provided by state registration are based on the mark’s current use in commerce. The owner of a state registered trademark must ensure that the mark is in use in relation to the registered goods, as detailed on the state Registration Certificate.
A registered trademark must also continue to be in use, to be maintained. Specific maintenance procedures must also be filed, in order to keep the trademark enforced. The maintenance requirement prevents trademarks from exclusion from registration, without actually being in current use.
To maintain a state trademark registration, you must continue to use the mark in connection with the goods/services identified in the registration, and occasionally file an Application for Renewal of a Trademark or Service Mark. The time frame for this maintenance is every five years after registration. The state trademark registration can be renewed continuously.
State Trademark Rights:
The acceptance of a trademark for registration by the Office of the Secretary of State provides the owner with a right to use such mark in the specific state of registration. The protections extend specifically to the mark, as registered, and its use in relation to the goods and/or services identified in the registration. State registration also provides the owner the right to file a civil suit with the appropriate state court, in order to enforce the granted trademark rights.
To signify ownership of a state registered mark, it is appropriate to use the standard symbol “TM” (trademark) or “SM” (service mark), but their use does not confer legal rights. Legal rights cannot be claimed, because the Secretary of State does not play any role in regulating the use of trademarks/service marks or in prosecuting their misuse, rather the Office is strictly ministerial.
State registered marks are not permitted to use the registration symbol (®), which indicates federal, rather than state registration. It is a violation of federal law to use the (®) federal registration symbol, if a federal trademark Certificate of Registration has not been issued for the mark.
The Office of the Secretary of State is not required to search other state or federal registrations, internet domain names or other common law uses of the mark. As such, State registration and the rights granted by that registration, may be “affected or preempted,” if another individual can prove prior use or registration of the mark. State governed trademark protection is limited to the state in which the mark is used, unless it is used in interstate commerce.
Each Secretary of State’s Office provides a public list of trademarks and service marks currently registered with that specific Office. Once registered with a specific state, the trademark is added to that state trademark Office’s list of registered marks. The Secretary of State’s Office does investigate the possession and distribution of counterfeit goods and the fraudulent use of registered trademarks.
Caution- Fraudulent Solicitations:
A trademark owner should be weary of solicitations from private companies requesting payments to maintain a trademark. Some of these companies simply want to charge for attending to the trademark maintenance fee. Unlike a licensed attorney, these companies are under no obligation to continue to monitor a trademark after the initial maintenance fee is paid. It should also be noted that there are intentionally misleading or malicious entities that send solicitation letters to trademark owners. These entities request payment without the intent of actually maintaining a trademark. In this case, if maintenance fees are not paid, the rights to a trademark will be lost, while the trademark owner believes their rights are still protected. To help identify trademark solicitors, the USPTO has included a list of potentially misleading notices.
State Trademark Monitoring:
After a trademark is in use and/or registered, the market must be monitored for infringement. The trademark owner is expected to enforce their ownership or risk losing rights to the mark. If infringement is suspected, a notice of the trademark rights should be sent to the infringer with the request to cease and desist. This cease and desist notice should, at a minimum, advise the infringer to stop the infringement, or expect further action. While it is not required, having an experienced legal team behind a cease and desist notice can help avoid the potential for the tables to turn. A simple cease and desist notice can be justification for a defamation complaint, claim of extortion, or even material for a counter suit.
The trademark owner is responsible for monitoring and enforcing their rights, but third parties can be enlisted to assist. To ensure that a mark is being monitored correctly, we can assist in forming these trusted relationships and maintaining communication. Additionally, if infringement is found, our team is here to help guide you through the task of trademark enforcement.
State Trademarks – In Important Intellectual Property Tool:
State trademarks are important in their ability to protect businesses and consumers alike. They provide a business owner the legal backing to protect their business identity, reputation, and the goodwill associated with a company and its trademarks. While the strongest protection for a trademark is provided through federal registration, state and common law rights still provide a trademark owner with important, but limited rights.
The rules that govern trademark law enable businesses to compete efficiently and fairly. Government trademark rules establish a standardized system for businesses competing in the market. Government guidelines for addressing trademark disputes are also integral to the success of the trademark system.
In addition, the laws governing trademarks help protect consumers from deceit by counterfeit products or fraudulent companies. Trademarks do this by signifying the goodwill and identity of a company. Consumers depend on trademarks to convey the goodwill of a company, as this indicates an expected level of quality and/or trust. The proper use of the trademark symbol (™) is the best way to communicate to consumers that a legitimate trademark is in use. If businesses could not prove and protect their reputation via trademarks, it could be the consumers that pay the greatest price.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. Thrive IP® patent attorneys are located in Charleston, SC; Greenville, SC; and Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in filing a trademark application or other intellectual property services.