In this ‘Intellectual Property Application Series,’ I’ll be discussing state registered trademarks and the proper way to use the mark in order to maintain the legal rights state registration provides. I’ll explain what a trademark is, what state trademark mark registration involves, and what to know about proper usage to maintain a state registered trademark. This and more will help explain why trademarks are an important tool, which protects both businesses and consumers.
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 trademark 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.
Federally Registered Trademarks:
Formally protecting a trademark would involve filing an application to register the mark federally and/or filing an application to register the mark in individual U.S. states. To register the mark federally, a federal application for registration is filed with the United States Patent and Trademark Office (USPTO). Like state and common law rights, federal trademark rights are claimed based on the date the mark was first used in commerce. Only State and Federal trademark registrations provide a verifiable public record of the mark and its use in commerce.
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 Certificate of Registration is issued and the mark is considered protected under federal trademark laws.
State Registered Trademarks:
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.
For example, to qualify for state registration and protection, the mark must 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 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.
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.
The protections and benefits provided by state registration are in accordance with the individual state’s laws. 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 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 Secretary of State Office. The Secretary of State’s Office does investigate the possession and distribution of counterfeit goods and the fraudulent use of registered trademarks.
Owner Responsibilities and Obligations to Maintain State Registered Trademark Rights:
Proper use of a state registered trademark preserves the rights provided under the Model State Trademark Bill and the opportunity to file a civil suit in state courts. A state trademark registration comes with responsibilities and obligations for the trademark owner, in order to maintain those rights. If the trademark is not properly monitored and protected by an owner, the rights to the mark can be put at risk or lost completely.
Market Surveillance and State Registered Trademark Enforcement:
Owners of trademarks, whether registered or unregistered, should conduct routine market surveillance to ensure that others are not using, misusing or damaging the mark. Market surveillance includes, for example, routinely searching the marketplace for generic use of the mark or infringement.
Monitoring the public market is a proactive measure that could help detect potentially damaging use of a mark. If a trademark is only used in a small market and registered only in the state of its use, there is a good potential that another company may inadvertently infringe a protected trademark. Even inadvertent infringement is damaging and must be remedied, or the trademark owner could lose rights to the mark. To claim infringement, the trademark owner must believe another mark is simply confusingly similar to their own. Exact similarity is not required to claim infringement.
Generic use of a trademark weakens and damages the mark over time. If the general public begins using and associating a trademark as indicating the goods themselves, rather than the source of the goods, the trademark becomes generic through improper use. Once a trademark is deemed to be generic, it can no longer qualify for state registration or protection under state trademark laws. Early indications of public generic use of a trademark could provide the advantage needed to curb any trends towards misuse.
Further efforts to guard your mark include monitoring for attempts to register a confusingly similar or identical mark. For state registration, this would involve periodically reviewing the public list of trademarks and service marks registered with the relevant Secretary of State’s Office. The USPTO also provides a list of federally registered marks and a separate list of federally published marks, which can be monitored and reviewed. Such monitoring can be conducted with automatic, software-enabled alerts. Thrive IP® can assist in setting up any market surveillance or monitoring programs for individual Secretary of State’s Offices and/or USPTO-monitoring programs.
The list of federally published marks offered by the USPTO is compiled of trademarks/service marks seeking federal registration and related information. The list of federal marks does not include state registered or common law marks. Applications for State registration, submitted to a Secretary of State Office, are not subjected to publication as part of the registration process.
During the application process to federally register a trademark, the USPTO publishes each potential trademark in their Official Trademark Gazette, which is available to the public to search. The federal application publication stage lasts for 30-days. During this time period, the public is provided the opportunity to file a formal notice with the USPTO, opposing the registration of the potential federal trademark. There are search firms which specialize in trademark monitoring and report any federal applications filed for confusingly similar or identical marks they find.
Once a trademark owner becomes aware of an alleged infringement, action must be taken. In order to properly protect the rights to a state registered trademark, the owner of the mark must take action to enforce those rights, or risk losing them. A potential remedy to an alleged infringement, may be to send a simple Cease and Desist letter to the infringing party. Further measures can be taken, including filing a civil suit with the relevant state court, if the infringer is not responsive to the initial effort to enforce the trademark rights.
Alternatively, an application to federally register a state registered trademark can be submitted, if the mark is used in interstate commerce. Once federally registered, the owner of the mark has the right to file suit in federal court and receive additional infringement remedies, if infringement is proven.
Proper Display of a State Registered Trademark:
To protect and maintain the rights provided under state registration, the registered mark and its use must be properly managed by the trademark owner. This would include ensuring the proper display of the trademark, to assert the associated trademark rights to the public.
A state registered trademark must be displayed and used in accordance with the rules governing all trademarks/service marks. The commonly known symbol (R) can only be used to indicate a federally registered mark. When displaying a state registered trademark (or common law trademark) in type, it should be followed by the standard TM symbol. The standard symbol SM is used for service marks.
Registering a state trademark with an individual Secretary of State’s Office allows a mark protection under state laws. Proper use of the trademark symbol gives constructive notice to the public that the mark is in use and is protected by that use. This notice asserts the trademark rights and discourages others from infringing the mark. If alleged infringement is found, the owner of a registered state trademark has the right to bring suit in the relevant state court.
When the trademark is referred to in speech, the common name of the product or the word “brand” should be included. This is to proactively prevent the public use of a trademark, in place of the common name, to describe the goods it advertises. Similarly, the use of a trademark as a noun or a verb can have dire consequences, as was the case for the once registered Jacuzzi and Google marks. Use of a trademark as a noun leads to confusion between the trade name and the business name and weakens the mark.
The main distinction is, trademarks must be presented and used as proper adjectives. As discussed previously, if the public begins using and associating a trademark as indicating the goods themselves, rather than the source of the goods, the trademark may be considered generic over time. Once a trademark is deemed generic, it can no longer be registered or protected under trademark/service mark laws.
Managing State Registered Trademark Use:
To protect and maintain the rights provided by registration with a Secretary of State’s Office, the use of the registered mark must also be properly managed. Among other things, proper management of a trademark would include ensuring the registered mark is used in connection with the goods listed in the state trademark Registration Certificate. Proper use is also necessary to formally maintain the trademark through the required renewal procedures.
When an application to register a trademark is filed with a Secretary of State’s Office, the complete application should include the state specific application form, a description of the potential trademark and an indication of the goods the owner wishes to offer under that mark. Each Secretary of State’s Office categorizes their list of potential goods into numbered classes, which can then be claimed by a potential trademark. Identifying trademarks by class helps to distinguish confusingly similar marks that are used to provide different classes of goods/services, among other things.
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. A literal description of the mark and its use(s) are also required and must be more limited than the broad class identification.
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 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 marks current use in commerce. The owner of a state registered trademark must ensure that the mark is in use for the registered goods as detailed on the state Registration Certificate.
Proper State Registered Trademark Use for Renewal:
Proof of the continued use of a trademark is also necessary to maintain state granted protections. In order to maintain a state trademark registration with the individual Secretary of State’s Office, an official Application for Renewal of a Trademark must be filed and accepted between the fifth-sixth years from the date of registration.
The Application for Renewal form is available through the Secretary of State’s Office and is specific for each individual state. Like the original Application for Registration, each Trademark Renewal Application must be accompanied by a specimen of use. The specimen must demonstrate proof of the trademark being used in commerce, in connection with the classes for goods claimed. An individual specimen must be submitted for each class of goods claimed in the original State Trademark Registration Certificate.
Once an Application for Renewal is accepted, a Renewal Certificate is issued by the relevant Secretary of State’s Office. Each renewed registration is given a renewed term of protection of five years. The trademark can be maintained indefinitely, if an application for renewal is filed and accepted, before each five year expiration date.
State Registered Trademark Use in License Agreements:
In addition to their ability to advertise and distinguish a company’s goods from another, trademarks also convey a company’s “goodwill.” The goodwill a trademark conveys is an indication of the uniform quality expected of the goods identified by the trademark. To preserve the strength of a trademark and its rights, the mark should be protected from being used in association with inferior, low-quality products/services.
When leasing a trademark, it is important to explicitly state liability obligations and establish the responsibilities of leasing the trademark. In a trademark license agreement, the owner is expected to control the quality of the goods, as well as the appearance of the licensed trademark.
Trademark owners are obligated to ensure license provisions are adhered to. To enable this, a licensor has permission to monitor the licensee’s use of the mark. These proactive measures are an important step in protecting a mark and the goodwill associated with it, so that it does not become susceptible to losing the rights it protects. If it is believed that a trademark licensee is not abiding by the terms of the trademark license, the trademark owner has the right to take action to protect their mark. Not acting to protect the mark could result in loss of rights to the mark.
State Trademarks – An Important Intellectual Property Tool:
State trademarks are important in their ability to protect businesses and consumers alike. They provide a business with legal backing to protect their 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 registration still provides a trademark owner important, but limited state rights.
The rules that govern trademarks 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 conveying the goodwill of a company, as this establishes 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 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; Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in filing a state trademark application or other intellectual property services.