The Mississippi Secretary of State tweeted the following this week:
|Mississippi SOS (@MississippiSOS)|
|3/19/14, 4:38 PM MS was recognized by the International Trademarks Association for having the most progressive trademark laws nationwide. #WhyMSBusiness|
While any recognition is great, my initial reaction when I read the tweet was “Who cares?” My second thought was “Why would a business register a trademark with a state as opposed to getting a trademark on a federal level with the United States Patent and Trademark Office?” That may seem like a harsh sentiment, but it is my contention a business should always seek registration on the federal trademark registry and not with an individual state.
The globalization of business is a wonderful thing. Businesses, artists, filmmakers and musicians now have the capabilities, and luxury, of living anywhere in the world to practice their profession. A local cupcake business delivering delicious desserts is no longer competing with the mom and pop bakery down the street. The cupcake business’s competitors are now any business in the world that might deliver similar and equally as delicious confection creations.
Businesses are no longer limited to the borders of the states in which they are incorporated or setup shop. It is almost necessary to have a strong nationwide and sometimes international presence in order to compete and thrive in this now global economy. That means having a strong web presence by way of a website, a Facebook page, a regularly updated Twitter account, strategically placed search engine optimization along with the traditional forms of advertising such as billboards, cable television advertisement, print and radio advertisement. Let’s not forget good old word of mouth and news buzz that is a result of perhaps a hired publicist.
The protection afforded by registering a trademark with a state is limited. As explained in Should I Register My Trademark, there are certain benefits that come from owning a federally registered trademark. The biggest advantage is that you can protect your mark and keep others from infringing on the goodwill you have developed with your business on a nationwide and sometimes international basis. Another advantage to registering your mark on the federal registry is that the owner of the trademark is given nationwide protection, as opposed to just within the boards of that state, retroactive to the date on the application. Once a mark is registered with the United States Patent and Trademark Office the certificate indicates the validity of the registered trademark, which can become valuable evidence in a case of trademark infringement. Registration on the federal register gives you the privilege of using the ® with your mark. A registered mark owner can receive aid from the government to protect against the import of infringing goods. Finally, the owner of a federally registered trademark can file a suit in federal court which means more of a chance for monetary compensation.
There are some companies who may benefit by only registering their trademark with a state entity. Registering a federal trademark can sometimes be expensive and takes a long time; therefore, a state trademark might be the only thing a new company can afford. A company may plan to only conduct business within the borders of that state and have no dreams of expanding outside of those borders. In that case, only having a registered mark via a state entity may make more financial and business sense. Finally, a mark may not be able to be registered with the federal trademark registry for a variety of reasons, and a state registration might be the only alternative. Outside of those, I have not seen any real benefit from having a state registered trademark. Maybe some of my readers have some insight?
If at all possible, it makes more sense for a new company to register on the federal registry. It may cost a little more money and take a little more time, but you never know where your business might take you. With the globalization of the marketplace, I cannot help but wonder if state trademarks will soon fall away and become a thing of the past, similar to telegrams … or dinosaurs. I also wonder about the uneducated reader who may see that tweet and think they have as much protection as on the federal registry. It is not the same thing and does not give an owner as many benefits as the federal mark. For my attorney readers, have you all found any real benefit in having a state registered trademark as opposed to a federally registered trademark? Take part in the conversation below and Stay Tuned In!
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Nice reminder of benefits that state registration affords. Less stringent state standards may permit potentially confusing marks to be shepherded in locally, develop secondary meaning, and then possibly be ripe for federal registration.
Great point William!
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