Welcome!

With this inaugural post on the HCCB Intellectual Property Law Blog, I'd like to welcome you and thank you for taking the time to check us out. This blog is designed to provide information and commentary on issues arising out of trademark and copyright law. I hope to cover a wide range of topics from registration, litigation, IP management and everything else dealing with these two fascinating areas of the law.

This blog will be updated every Friday and as always, you can contact me during the rest of the week at estubbe@hardycarey.com.
_______________________________________________

Topic of the Day: The Benefits of State and Federal Trademark Registration

It may seem redundant to have a registration for the same mark at both the federal and state levels, but each has a unique role to play in the protection of your intellectual property. As you would imagine, a federal registration is the ticket to nation-wide enforceable protection against infringers who would seek to use your mark on the same or similar goods and/or services.
image: greefus groinks
The benefits of a federal registration include the prima facie (or on its face) presumption that your mark is distinctive and worthy of protection. Additionally, third parties who seek to register the same or similar marks on the same or similar goods at the Patent & Trademark Office will face the scrutiny of the Examining Attorneys who may reject the proposed application on the grounds that it is likely to confuse the consuming public with your mark. Another benefit to the federal registration is that you can sue in federal court (remember you can sue in federal court without a federal registration, but your burden of proof is much higher because you have to make the prima facie showing that the mark is worthy of protection before you can even get to the question of infringement).

So how does a state registration help when you get so much in a federal registration? Well, it is true that a state registration's "reach" is limited to the state in which it is issued and it is also true that you would be limited to whatever causes of action and remedies are available under that particular state's laws if you were to litigate over infringement of dilution of your mark. However, by far the best beneft of a state registration is to prevent others from registering the same or similar marks in that state.

Typically, the vast majority of people who start a business or develop a brand do not have the resources or the time to go to the PTO's website and search to see if someone has either registered or filed an application to register the mark that they are thinking of using. The most that many people do is file for a name reservation at their state's Secretary's office (note - some states process their trademark applications and registrations through departments other than the Secretary of State). If you have a registration already for your mark in that particular state, that registration should have the effect of barring the other person's name reservation or mark application. At the very least, it educates that person that you are using the mark and they go and find another one.

So, the benefit of a state registration is primarily to protect your registration from being inadvertenly infringed upon by others who haven't taken the time or don't know how to find out if there are users who have already registered that particular mark. A secondary, but still important benefit, is that if you do end up litigating the federal registration in federal court, you should be able to add the state-law claim based on the state registration as well.

State registrations are typically fairly inexpensive and most states (although not all - Virginia being an excellent example) look only to see if the mark is going to infringe upon someone else's mark that has already been registered rather than look to substantive issues such as descriptiveness. The small investment in a state registration is more than made up for in the ability to have a means to prevent a lot of confusion and heartache in the future.

text © 2008 Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.