Once a person or business starts using a mark in commerce, they technically have what is called a common law trademark; the protection afforded to this right is extremely limited. Hence, a common law trademark is only enforceable in the geographic area where the mark is used. In most instances, it is hard to enforce common law rights because it is hard to show when use of the mark began. Therefore, it is important for owners of marks to understand the importance of obtaining registered trademark(s) for their brand(s). They shall decide whether they need to obtain a state or federal trademark registration. In this article, I will discuss the difference between these two.
In general, state trademarks are quick and easy to obtain, while federal trademarks are more costly and complex. Nevertheless, federal trademarks offer way more protection than do state trademarks. State trademarks protects a mark only in the registered state(s), meanwhile a federal trademark protects the mark(s) nationwide and can be potentially used to obtain international trademarks through the WIPO World Intellectual Property Organization. Furthermore, the owner of a state trademark registration cannot use the registered symbol ® next to its mark to put others on notice. The registrant can only put either a TM for a trademark or SM for a service mark next to its mark. Hence, when a federal registration is pending, the applicant can put either one of these symbols next to its mark and once the federal trademark obtains registration, the applicant can put the registered symbol ® next to it.
There are several other benefits of obtaining a federal trademark such as you can register your trademark with Amazon or U.S. Customs and Border Protection Service to prevent infringing products from being imported or sold, the registration creates a public record of use of your mark which may help deter infringers and you can file a trademark infringement lawsuit in federal court. In federal court, trademark owners of federally registered trademarks can sue for statutory damages, recover profits, receive triple damages for willful infringement and get infringing businesses to pay their legal fees, which is much harder for common law trademark owners to obtain. Common law trademarks aren’t governed by statute as federal registered trademarks are; state law governs them. Hence, none of the foregoing benefits apply to state or common law trademarks. Therefore, obtaining a federal trademark is usually the better choice.
If you need help obtaining a trademark, please don’t hesitate to call The Law Office of Biana Borukhovich at (347)450-1811. (Attorney Advertisement)