How to File Your Own Super-Easy State Trademark Applications
Editor’s Note: This article is for informational purposes only. Because state and municipal laws vary widely, as do the circumstances of individual cases, readers are encouraged to contact an attorney for specific legal advice. © Scott C. Advice 2022
Note: The views and opinions expressed here are those of the authors and contributors and do not necessarily reflect those of the publisher and editors of WholeFoods Magazine.
It would take at least a small volume to provide you with all the nuances needed to prepare your own US Federal trademark application, which would be valid in all 50 states and territories. The form is involved and contains a few unintended pitfalls for the unwary. However, the United States Patent and Trademark Office (USPTO at uspto.gov) did its best to simplify the form; however, it is still not an easy or obvious form for a layman to fill out. And for my retail clients who do business primarily in a single state, federal trademark applications are not always necessary to protect one’s trademark or service mark. State registrations may be an easier, cheaper, and more viable alternative that such individuals may consider to obtain legal trademark registration for trademark protection.
Keep in mind that if you want to protect your trademark but feel uncomfortable doing so yourself, it would be best to consult a qualified trademark attorney and have that attorney prepare and file your application. . If, on the other hand, you want to protect a trademark you created by filing for state trademark registration—which will help to offer statutory trademark rights in this state only-and think you could manage an online form, so here is your brief guide.
- Determine what you want to protect and if you can protect it
If you have a (good) product or service with an eye-catching and unique name (or ‘trademark’) that no one else has ever used and is still using, then you can protect your brand or name somewhat by ensuring that the ‘TM’ symbol is printed next to the mark when you use it. This is common law protection.
But it’s not as effective if you have an individual or a business with a bigger budget and bigger market presence, who is unaware of your lesser use and then spends wads of dollars marketing his own product with his infringing trademark. Once they become aware of your brand, or their own, they will usually fight you tooth and nail before abandoning their investment. Better actually Register your trademark with the state or federal trademark office so that when a trademark search is performed, yours will show up in that search and discourage any of your competitors from making that investment in the first place. Instead, they will go to the next name on their list.
Additionally, once you have decided on your brand, use it. Start putting it on your goods, or in relation to your services, and document its use so you get a first date of use as soon as possible. If it’s a bottle of vitamins with the new brand, package it up and ship it to a customer across state lines so you can honestly document and keep track of your “first use.” in interstate commerce”. Of course, nowadays you can also apply for trademark registration simply on the basis of “intent to use”; but, frankly, I found it much easier to have a documented “first use” and file based on that, avoiding all sorts of possible complications. And in the case of a simple state registration, you do not need to have interstate use to justify your state registration.
- Do your own trademark search
Because you should already be generally aware of what’s going on with your market and your competitors, you can find out if someone else is using your brand. To be certain, you can hire a trademark search service, such as Corsearch (www.corsearch.com) or Government Liaison Services (www.trademarkinfo.com), to perform a full search of their databases to detect conflicting trademarks.
Or, to save money, you can simply search the United States Patent and Trademark Office (USPTO) online database, called the Trademark Electronic Search System (TESS), at ‘address https://tmsearch.uspto.gov/ and see if anyone else has already registered or applied to register your trademark nationwide.
You should also search the trademarks and service marks database of the state in which you intend to file your state application. In California, this search would be conducted online at:
https://tmbizfile.sos.ca.gov/Search. In New Jersey, you would search the New Jersey database at: https://www.njportal.com/DOR/businessrecords/TradeSearch/TradeStatus.aspx. In Florida, as another example, you would look for possible conflicting marks on: https://dos.myflorida.com/sunbiz/search/.
To my knowledge, no state has a trademark search engine that will also search alias registrations, legal names of companies or other filing entities, or search the database USPTO data. These search engines also do not include marks that appear only in telephone directories, on the Internet, or in any other common law use of marks in commerce. It is your job, as someone seeking to register a mark, to be responsible for a more thorough search to avoid infringing on the marks of others.
Either way, you’ll want to do a search first to avoid the expense, wasted time, and disappointment of the state refusing to register a trademark it has already registered. Just keep in mind that by using this less expensive approach to online research State and
federal databases, you only verify actual registrations and requests. I recommend that if you opt for self-checking, always search both the federal database and the database of the state in which you actually want to register your trademark.
Before you go online to register your new (or old) trademark, make sure you collect and have ready all your necessary trademark information and have a digital image of your label (or other ) showing the actual current use of the mark in a .jpeg format file on your computer. In particular, make sure you have all of the following on hand: (1) The brand name (of course); (2) The name, address, telephone number, fax number and e-mail address of the trademark owner; (3) Date of first use everywhere of your brand and the date of first use in the State of intended registration (be careful, the two dates may be identical); (4) An idea of the type of goods or services (or both) on or with which you use your mark; (5) The class of goods in which your mark must be registered (each state will use the USPTO classification system); (6) A decision as to who will sign the application and their title or function, if an officer of the company; and (7) An image of the label or other use of your trademark saved in .jpeg (or pdf) format and no larger than 5MB. On the last post, you can usually just take a good clear photo of the label on the bottle or package, being certain to capture the full mark in
Perhaps your most difficult task will be to decide which class(es) your goods or services belong to. Some of you may want to register a trademark for dietary supplements, in which case I will make it easy for you. This is class 005. Also note that you can register the mark in as many classes as it is used; but, generally, your mark, once registered, will only be protected for the class or classes in which you registered it. For example, registration of the mark “Soleil” for supplements in class 005 will generally not protect that mark from being used by others for goods in the classes that cover cosmetics or automotive polishes. So decide carefully in advance the total scope of protection you want and can afford.
- Go online now
Log on to the Internet, do a Google or other search on your state’s trademark website, then go to that site to complete and file your state trademark application. Obviously, this will vary by state, but is usually found in the Secretary of State portion of the state government website. States also allow you to print a form, fill it out, attach or attach proof of your use of your mark, and then mail it to the Secretary of State with a check in payment of the filing fee. Either way, state mark forms are not difficult to complete and take very little time. With state forms, you will find that you can register your trademark quickly and very easily.
Once accepted, the length of your state registration depends on the state, but will generally be five years (CA, NJ, and TN) to 10 years (NY). Before the initial registration period expires, you will need to file a declaration and pay another fee to maintain your trademark registration in force.
- Benefits of state registration
In a nutshell, state trademark registrations are simpler, faster, and cheaper to complete than a federal registration. Easy enough for most people to do on their own, state registrations typically cost from $20 (Tennessee) and $50 (New York and New Jersey) to $70 (California) per classification. You can also save on legal costs by not having a lawyer prepare and file the claim for you. Personally, I find that most attorneys overcharge for what is essentially forms work.
State registrations can also be obtained much faster than federal registrations, with the time between state application and registration being measured in weeks instead of months and years as is the case with applications. federal. When speed is important, you may consider filing a state application, even if you also intend to file for registration of your trademark in the United States. Your registration in one jurisdiction does not in itself exclude the other.
To their credit, each state has made the online application process for trademark registration as easy as possible; but some states may still have a few potholes in the application process simply due to the nature of trademark law and its classification system. If in doubt, do not hesitate to consult a qualified trademark attorney to help you pursue registration and properly protect your trademark. Your good reputation and the brands that go with it are key assets of your business and can add significant value to your business. They deserve to be well protected. WF
References are available and linked on the web version of this article, at www.WholeFoodsMagazine.com