In this ‘Intellectual Property Application Series,’ I’ll be discussing state trademark registrations and the proper way to use the state trademark symbol in order to maintain the legal rights state registration provides. I’ll explain what a trademark is, what a state trademark registration involves, and what to know about proper usage of the state trademark symbol to maintain a state registered trademark. 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 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), where it undergoes trademark prosecution procedures. 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.
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.
State Trademark Symbol:
State registered marks are not permitted to use the federal registration symbol (®), which indicates only 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 state trademark 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.
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.
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.