The Benefits of a Federal Trademark Registration Outweigh Those of a State Trademark Registration

While both federal trademark registrations and state trademark registrations are valuable intellectual property assets, a federal trademark registration provides additional benefits to the owner of the mark. If able to meet the requirements, a trademark owner should consider applying for a federal trademark registration rather than state trademark registration.

Both federal and state trademark registrations require that the mark be a distinctive source identifier. The distinctiveness continuum, so to speak, applies to both trademark registrations in that marks that are arbitrary/fanciful, suggestive, or logo 註冊 that have acquired distinctiveness are worthy of trademark protection. Merely descriptive and generic marks are not. However, the requirement of distinctiveness is where the similarities between federal and state trademark registrations essentially end.

Understandably, there are times when an owner can only acquire a state trademark registration, since the laws that apply to registrability are different at the uniform federal level as opposed to the incongruent state levels. An owner who has only used the mark in intrastate commerce, as opposed to interstate commerce, is not eligible for a federal trademark registration. With vastly differing registration costs, protection periods, and renewal requirements, federal and state trademark registrations also provide different value to the owner. Even where the owner could acquire either a federal or state trademark registration, an owner may choose to simply protect its mark in a particular state due to cost, for example.

Despite the additional cost of a federal trademark registration, a registration with the United States Patent and Trademark Office (USPTO) on the Principal Register provides several additional benefits to the owner. A federal trademark registration creates a prima facie, rebuttable presumption that the one registering the mark is the exclusive owner in connection with the listed goods or services and that the mark is valid. A federal registration puts others on constructive notice of a claim of ownership, so as to preclude a good faith adoption defense by a subsequent user of the mark. This notice, including use of the ® symbol, may be a sufficient deterrent to avoid a third party from adopting a confusingly similar mark. Most importantly, a federal trademark registration affords the owner the right to sue in federal court and seek treble damages, attorneys fees, and/or $100,000 statutory damages for trademark infringement and/or for violations of the Anti-cybersquatting Consumer Protection Act (ACPA).