Have you recently started a business or launched a new creative endeavor? If so, you’ve likely found yourself wondering whether you need to file for a trademark for your business name, logo, or any other branded material that you’ve designed to get yourself noticed by potential customers.
While you can technically get by with what’s known as a “common law,” or unofficially registered trademark, its efficacy only extends to the locations in which you’ve sold goods or offered services. If you want to cover all of your bases and allow your business to expand, you’ll want to file for an official trademark.
Unsure whether you need to file for a state or federal trademark? Our attorneys have got you covered.
What is a state trademark?
A state trademark, registered to a state’s trademark office, protects the registered trademark of the owner within their state—and their state only. It also provides the owner with exclusive rights to use the trademark within the borders of the state where they do business.
State trademark registration process
To register a trademark in Texas, you must meet predetermined criteria before beginning your application.
You’ll need to prove that:
- You have been using the trademark connected with your business’s goods and services in Texas (prior to your application date)
- Your mark differs from other registered trademarks in the state
- Your trademark differs from any other trademarks registered with the U.S. Patent and Trademark Office (USPTO)
Once you’re confident that your trademark meets the criteria for state trademark registration, you can move forward with the application process.
The next steps are:
- Complete a trademark application form with all required information, and have the form notarized before submission
- Provide three original examples of proof that your trademark is currently used in Texas
- Pay a fee of $50 for each trademark class you’re applying for
- Submit your application
Upon submission of your application, the state will evaluate your request to make sure there are no conflicting registered trademarks in the state. If there are any issues with your application, the state examiner will notify you, and you will be given 90 days to correct your application or submit arguments. Having an experienced trademark attorney by your side during the process can be incredibly helpful.
Once the process is complete, the state will issue your trademark registration, and you will be free to use it to do business within the state of Texas.
What is a federal trademark?
Federal trademarks are registered with the USPTO and protect the owner’s registered trademark within the United States. Like a state trademark, a federal trademark provides the owner with exclusive rights to use their trademark—but unlike a state trademark, it applies anywhere in the country.
The federal trademark registration process
The federal trademark registration process is similar to the state process but requires a bit more legwork and wait time.
To register your trademark with the USPTO, you’ll need to fill out an application form with the following information:
- The name of the trademark owner
- The type of mark you’re applying to register
- A drawing and specimen of the mark being submitted
- A description of the goods and services the mark is applied to and their class
- A filing basis and a fee between $275–$375 per class
Once you’ve submitted your application, it will be assigned to an examining attorney. If the attorney finds any issues with your application, you may be notified that you need to take additional action before your registration can move forward.
The federal trademark application process can take anywhere from several months to a few years to complete. While an attorney isn’t required to represent you if you reside in the United States, you are required to have legal representation if you’re domiciled in another country. (And even though it’s not required, working with an attorney can help you avoid any unnecessary delays and pitfalls throughout the process.)
Benefits of state trademark registration
For individuals who are only looking to do business in the Lone Star State, the relatively straightforward state trademark registration process may be preferable to trying to gain federal approval. You may also experience shorter wait times for state registration.
A state trademark registration can also be a more cost-effective solution than the federal option, particularly for smaller businesses or solo operations. And because the state registration still grants the trademark owner the right to sue for infringement in state court, this may be sufficient for your needs.
Benefits of federal trademark registration
The primary benefit of federal trademark registration is that it gives the owner of the mark the right to use it throughout the United States—which guarantees that no other business in the country uses the mark or any confusingly similar mark without your permission.
While the federal registration process is a bit more substantial than the state registration process, the federal option may be preferable for larger businesses that want to sell their goods and services across the country, or local businesses that plan on expanding into new territories in the future.
Choosing the right trademark for you
Registered trademarks give companies a solid basis on which to fight trademark infringement and more expansive legal recourse than companies that don’t have them. Whether you’re a small business that just needs a trademark for a specific location or a larger operation that sells goods and services across the nation, trademark registration is essential to protect your business.
Unsure which option is right for you? A qualified attorney can help you determine which path is the best for your business and help you navigate the registration process.
Obtaining your registered trademark can be a complex process that’s difficult to navigate on your own. If you have questions about the trademark registration process, contact our offices at Shann Chaudhry, Esq. to schedule a consultation.