What's the Difference between State and Federal Trademarks?

bio_eric_turnbull_smBy Eric C. Turnbull

As a current or aspiring business owner, you have likely heard advice from all sorts of people that you need to protect your business by trademarking your name with the state. Or maybe trademarking it with the federal government. Or maybe copyrighting or patenting it (but please don't). Knowing what steps to take in order to protect your name and brand in the market is a vital step to setting up your business to succeed while avoiding costly pitfalls down the road.

First and foremost, trademark protection exists in "common law," meaning that you don't have to file for a registration in some cases to enjoy the benefits of trademark protection. Rather, if you are using the mark in a geographical area and have a name or brand that is unique enough, you can generally use the trademark common law to protect your name or brand. Businesses will warn everyone of their intention to use common law protections by placing the TM symbol in the corner.

You can also avail yourself of even stronger protections under federal law if you register your mark with the United States Patent and Trademark Office (USPTO). With federal registration, your mark will undergo federal scrutiny to ensure it is trademark-worthy. The biggest distinction, however, is that you must demonstrate that your mark is being used in interstate commerce, meaning that the goods you provide or services you provide have a substantial enough effect between states that Congress could justify regulating it. A federally-registered trademark will also allow for your exclusive use of the mark throughout the country. Federally-registered marks are designated with a ® symbol in the corner.

Lastly, you can pursue a trademark registration with the state in which you are transacting business. In Michigan, for example, you may register your mark with the state to establish your exclusive ability to be able to use the mark in connection with your goods or services throughout the state. While the benefits of state registration are far outweighed by federal registration, state registration opens up the jurisdiction of the state courts and is a viable alternative to businesses that fail to meet the use in commerce requirement for federal registration.

The answer as to which trademark protections to pursue for a business will vary according to the type of the business and the unique circumstances of the business. Consulting with a trademark attorney is often essential to determining the best methods to protect your brand and prevent otherwise avoidable problems down the road.

Eric C. Turnbull is an associate in the firm's litigation, business law and governmental law practice groups. Eric also handles trademark prosecution matters at the firm. He is a member of the Macomb County Bar Association and Michigan Intellectual Property Law Association.

Categories: Business