Are State Trademarks Worth It?
Have you filed for a trademark with the Secretary of State where your business is registered? If so, continue reading below.
What is a trademark? A trademark is a word, phrase, symbol, and/or design (a ”mark”) that identifies and distinguishes the source of the goods of one party from those of others. State trademarks are also known as "common law" trademarks. A common law trademark is established in the geographic area where the mark is used in commerce but the mark is not federally registered. State trademarks are limited to the specific geographic area the intellectual property is used in and any areas where it could reasonably expand. This geographic area is usually not beyond the state.
Many entrepreneurs seek to save money by applying for a trademark with the Secretary of State. This can cause HUGE branding issues in the long run.
Entrepreneur A owns and operates "Tree High, LLC", a business that provides tree cutting and uprooting services in North Louisiana. Entrepreneur A registers a trademark with the Louisiana Secretary of State. One year into business, Entrepreneur A discovers that there is a new tree cutting and uprooting service in the same North Louisiana Parish. The name of the new business is "Tree High & More, LLC" and it is owned and operated by Entrepreneur B.
Entrepreneur A has began to receive social media messages and phone calls from friends inquiring if "Tree High & More, LLC" is their new business. Entrepreneur A also begins to lose customers due to the confusingly similar names. Entrepreneur A, sends Entrepreneur B a "cease and desist" letter, informing them that they must immediately stop the usage of "Tree High & More, LLC".
Entrepreneur B contacts an attorney to respond to the cease and desist letter. During the consultation, the attorney tells Entrepreneur B the following:
Entrepreneur A has no legal right to demand that they stop, because this is not a trademark registered with the United States Patent and Trademark Office.
United States Federal Trademarks have more power and rights than a state trademark, with the Secretary of State.
In the United States Patent and Trademark Office, whoever is the first to file for a trademark, wins, not the whoever was the first to use the brand name.
Attorney for Entrepreneur B, then files and successfully registers for a United States Federal Trademark for "Tree High & More" for tree cutting and uprooting services.
Attorney for Entrepreneur B, sends Entrepreneur A a cease and desist letter to stop using the brand name "Tree High". Entrepreneur A has no other choice but to comply or be sued in United States Federal Court for trademark infringement.
Entrepreneur A lost the right to use the name "Tree High" for tree cutting and uprooting services, because they wrongly believed that a trademark registered with the Louisiana Secretary of State protected them. State trademarks are not worth it and do not provide any brand protection!
When seeking to protect your business and brand, a United States Federal Trademark is the way to go! Some benefits of a United States Federal Trademark are:
Protects against federal registration of not only identical marks, but also confusingly similar marks.
Provides nationwide notice of ownership of the mark
Protected throughout the entire United States and its territories and possessions
Grants the right to use the ® symbol
To learn more about the benefits of a Trademark, registered in the United States Patent and Trademark Office, click the button below.